Trademarks - The Basics

WilmerHale Brown Bag Lunch Series: Trademarks – The Basics

March 28, 2012

Attorney Advertising

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What Is a Company Name, Trade Name, or Business Name?

It is the name used by a company in its business activities

A trade name cannot be registered as a trademark unless it also functions as a trademark

E.g., Apple Computer, Inc. owns Apple® computers

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Domain Name Registration (URL)

Registrar does not clear use of name

Use of domain name is not trademark use

Should independently search to avoid third party action


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What Is a Trademark?

Just as your own name identifies and distinguishes you, a trademark: Indicates the source or origin of goods or

services Assures consumers of the quality of goods

bearing the mark Creates business goodwill and brand

awareness


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What Is a Trademark?

Word

Symbol

Slogan JUST DO IT.

Product or packaging design that identifies a specific product and distinguishes it from others in the marketplace


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Selecting a Mark

Generic Descriptive Suggestive Arbitrary Fanciful

less distinctive more distinctive

CARPET CLEANING COMPANY

The more distinctive the mark, the greater its level of legal protectability


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Descriptive vs. Suggestive

Suggestive marks are automatically protectable and registrable

Descriptive marks may be protected and registered only upon a showing of secondary meaning (acquired distinctiveness)


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Trademark Availability

A trademark is not available if:

The mark or confusingly similar mark is already federally registered or is the subject of a pending federal registration (assuming that the application is ultimately accepted); or

The mark or confusingly similar mark is already being used in the same market in connection with similar goods or services.


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Trademark Searches

Preliminary USPTO TESS (Trademark Electronic Search System) www.uspto.gov/trademarks/index.jsp

International search

Country-specific search – Trademark registers (federal and state)

– Common-law uses

– Internet, domain names

– Corporate names


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How Are Trademark Rights Obtained?

Rights are obtained either:

By registration; or

By use

Note: Corporate registration is not trademark use


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Why Register – Federal

Right to use the mark in all 50 sates

Notice of registration: ®

Provides notice to 3rd parties conducting searches

Right to bring suit in Federal Court

Right to importation remedies – Deposit copies of the registration with the United States

Customs Service to prevent importation of goods bearing an infringing mark


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Federal Registration

Online form at www.uspto.gov/trademarks/index.jsp

Filing Basis – Use

– Intent to Use

– Identification of goods or services – must be specific enough to identify the nature of the goods or services

– International Class System – match to goods and/or services


Wilmer Cutler Pickering Hale and Dorr LLP is a Delaware limited liability partnership. WilmerHale principal law offices: 60 State Street, Boston, Massachusetts 02109, +1 617 526 6000; 1875 Pennsylvania Avenue, NW, Washington, DC 20006, +1 202 663 6000. Our United Kingdom offices are operated under a separate Delaware limited liability partnership of solicitors and registered foreign lawyers authorized and regulated by the Solicitors Regulation Authority (SRA No. 287488). Our professional rules can be found at www.sra.org.uk/solicitors/code-of-conduct.page. A list of partners and their professional qualifications is available for inspection at our UK offices. In Beijing, we are registered to operate as a Foreign Law Firm Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP

Trademarks - The Basics

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