What Is a Trademark?

Other Forms of Intellectual Property (We’ll Get to Trademarks on the Next Slide)• Copyright protects original works of authorship, including literary,

dramatic, musical, and artistic works. Copyright law protects the form of expression - the underlying ideas are not copyrightable.

• A Patent for an invention is the grant of a property right to the inventor.

• A Trade Secret is a piece of information, not generally known or reasonably ascertainable, that gives a business an economic advantage over its competitors.

OK, So What’s a Trademark?

• A Trademark is anything that identifies and distinguishes the source of the goods or services of one party from those of others.

• Most trademarks are comprised of words, images, or a combination of the two, but anything that can identify the source of goods or services can be a trademark.

• The core purpose of trademark law is to allow consumers to have confidence in the accuracy of labels and other information that tells them where goods or services come from. This allows the market to build trust in the consistent quality of brands.

Types of Trademarks: Word Marks• Word marks are perhaps the most common type of trademark.

• Word marks can be made up of anything from a single letter or numeral to a long sequence of words.

• Business Names: FORD, MICROSOFT, MCDONALD’S

• Brand Names: MUSTANG, WINDOWS, BIG MAC

• Slogans: “JUST DO IT.”

• Tip: Word marks are typically expressed in ALL CAPS.

Types of Trademarks: Design Marks• Design marks can be logos, character designs, or any other type of

image that identifies the source of goods or services.

• Some design marks also include text, numerals, or other characters.

Types of Trademarks:Nontraditional Trademarks• Nontraditional trademarks can be colors, sounds, or anything else that is a

source identifier.

• Color trademarks include UPS’ brown, Tiffany’s blue, and T-Mobile’s magenta – note that the protection for those colors extends only to similar goods and services; they do not “own” the colors in any other context.

• Sound trademarks include Yahoo’s “Yodel,” NBC’s “Chimes,” and THX’s “Deep Note.”

• The mark must not be a functional feature of the good or service. Sometimes it is difficult to prove non-functionality. For more information on the issue of “functionality,” go to: http://lizerbramlaw.com/blog/2012/05/16/hershey-bars-and-functional-trademarks/

Trade Dress• Trade Dress protection attaches to the overall look and feel of a business or product.

• Common examples of trade dress include the distinctive appearance of certain chain restaurants (McDonald’s) or retail stores (Apple stores). Trade dress can also refer to a product’s distinctive packaging (although it must be non-functional), or unique elements associated with the product’s design.

• A claim of trade dress infringement requires the following elements to be proven:• The trade dress is non-functional – competitors do not need to use the trade dress in

order to compete effectively.• The trade dress is either inherently distinctive or has acquired distinctiveness over time.• The alleged infringement creates a likelihood of confusion on the part of customers.

What’s the Difference Between a Trademark and a Service Mark?• In some cases, the term “service mark” is used to identify and

distinguish the source of a service rather than a product.

• However, the terms “service mark” and “trademark” are often used interchangeably.

• When in doubt, simply use the word “trademark” when referring to a product or service.

How are Trademark Rights Acquired?• Trademark rights are acquired through use of the

mark in commerce.

• If you use a mark in commerce to identify your goods or services, you may acquire common law rights in that mark even if you never register the mark with any state or Federal agency.

• However, without registration, those rights may be difficult to prove, or may be limited geographically or in other ways.

Trademark Registration• In the United States, the owner of a trademark used

in interstate commerce has the opportunity to register the mark with the United States Patent and Trademark Office (USPTO).

• Owning a federal trademark registration provides several advantages, including creating a legal record of ownership and the date of filing, providing the opportunity to protect your rights in Federal court, and the opportunity to pursue to substantial money damages in the case of infringement.

• Although most contemporary trademark registrations are Federal, there are also State trademark offices that are useful in some circumstances.

The ® and ™ Symbols

• ™ is the common law trademark symbol. It can be attached to any mark where the owner is claiming trademark rights in good faith.

• ® may only be used when the USPTO has issued an active Certificate of Registration.

• Use of ® without a registration is fraud under Federal law.

How Long Do Trademark Rights Last?• Once a trademark has been used in commerce, as long as the owner

continues to use it, the legal rights can last forever.

• Some trademarks have been in continuous use for hundreds of years.

• Trademark rights can be lost or “abandoned” when they are not used in commerce for a period of time. The common rule of thumb is that abandonment occurs after three years of nonuse – however, there are exceptions. Never assume that a mark has been abandoned (and is therefore free to use) without conducting thorough due diligence.

Prepared and Presented By:

David Lizerbram

David Lizerbram & Associates®

www.LizerbramLaw.com

Twitter: @DavidLizerbram

Direct Phone: (619) 517-2272

3180 University Avenue, Suite 260San Diego, California 92104

Final Note: This Presentation is Not Legal Advice

I am not your attorney. Nothing in this presentation should be taken as legal advice. This is simply general information that may be helpful. Consult an attorney if you have any specific questions or concerns.