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Ebike Branding WorkshopThursday, September 11, 2014 3:00pm LEVA Educational Seminar

Intellectual Property Basics

Four Types: 1. Patents

2. Copyrights

3. Trademarks

4. Trade Secrets

Patents – inventions and processes.

Copyrights – expression, such as written materials (advertisements/user manuals), music, photos, film

Trademarks - brand names, words, slogans, designs, logos, images

Trade Secrets – valuable commercial information kept secret

 

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One product illustrates them all -

Focus of this Session is on Branding

Agenda: 1.Types of Trademarks

2.Trademark Selection and Clearance

3.Trademark Procurement

4.Policing and Enforcement, including Litigation

5.Business Use of Trademarks – Licensing and Collateral

6.Other Relevant Issues

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Types

Trademarks

Service Marks

Collective Marks

Certification Marks

PURPOSE OF ALL MARKS IS TO INDICATE THE SOURCE OR ORIGIN OF GOODS AND SERVICES

BRANDS ARE WHAT YOUR MARK MEANS TO CONSUMERS – THE EMOTIONAL RELATIONSHIP

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Trademark Selection and Clearance

No. 1 Tip – the strongest most protectable trademarks have no meaning – e.g., GOOGLE/PRODEGO

No. 2 Tip – Remember the “apple” spectrum of distinctiveness

An apple for an apple is generic; no protection (e-bike)

“tom-apple” for tomato apple juice is descriptive and only warrants protection if the mark has acquired a “secondary meaning” as a trademark (electri-cycle)

“Apple-A-Day” for vitamins is suggestive and warrants protection from the start (A2B)

“Apple” for a computer is arbitrary and warrants protection from the start (stealth)

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Trademark Selection and Clearance (cont’d.)

“Appleloppolis” for an electric bike is fanciful and the strongest type of mark. Protection from the start plus the broadest scope of protection. (Volton)

Clearance – searching TM Office Records and Unregistered Usages for prior rights

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Trademark Procurement – Obtaining and Maintaining Registrations

US, UK, Australia are “common law” countries, meaning rights arise from use

Most other countries are “first to file” countries; without a registration, no guarantee use will be uninterrupted by a junior user prior registrant

In US, Application, examination, approval and publication followed by opposition period and, hopefully, registration

Other countries vary in approach ranging from rubber stamping applications to publishing first before examination.

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Trademark rights generally can last forever if marks are being used; however, registrations have to be maintained and renewed.

US requires proof of use to maintain; most foreign countries do not.

Unused marks can be challenged and cancelled by interested parties

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Policing and Enforcement, Including Litigation

A Note of Caution: A Trademark Registration is Not a Magic Piece of Paper

Valuable in that PTO will use it as an obstacle to third party applications for confusingly similar marks; however, will not stop third parties from using marks. That requires trademark owner monitoring and vigilance. Policing and enforcement is expensive and more often than not there are no tangible monetary rewards for doing so. You are protecting your company’s goodwill.

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Policing (watching the marketplace)

Sales force

Trademark Watch Services, including company incorporations, domain name registration and social media name registration

Internet Monitoring Services

Outside Counsel

Paid staff to review Online Auctions

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Enforcement

Test is likelihood of confusion: Will customers seeing the mark think the goods/services originate from the trademark owner when they actually do not?

Factors considered: similarity of marks, similarity of goods and services, strength of mark, similarity in channels of trade, actual confusion, price of goods; consumer sophistication

Approaches

Calls, warning and cease-and-desist letters; or straight to litigation

Specialized and others in the bike industry have been characterized as trademark “bullies”. Sinyard Apology.

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Litigation

Most companies want to avoid at all costs.

Time consuming, expensive and, at end of the day, does not result in monetary recovery.

In US, costs are not awarded to prevailing party, although they are in Europe

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Business Use of Trademarks

Licensing

Can generate royalty income

Requirements:

Written agreement, including term and quality control

Without, court will construe as an assignment

Collateral

Can be used to obtain a loan

Banks record security interests; need to remember to release when note paid

Other issues

Genericide

Domain Names and the new gTLDs, including .BIKE

Social Media Profiles

TM rights in hashtags?

TM Bullying

Public perception

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Questions???

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LEVA Thanks our 2014 Interbike Sponsors!