Trademarks 101

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Trademarks 101

• Steve Baron
• March 4, 2003

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What is a trademark or service mark?

• Kodak
• Exxon
• Coca Cola
• Mc Donalds
• Starbucks
• Walmart
• MTV
• Victorias Secret

• Poloroid
• Xerox
• Lego
• Beanie Babies
• Kraft
• Playboy
• Apple
• Dell

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A trademark is a word, phrase, symbol or design,
or a combination of words, phrases, symbols or
designs, that identifies and distinguishes the
source of the goods of one party from those of
others.
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A service mark is the same as a trademark, except
that it identifies and distinguishes the source
of a service rather than a product.
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Lets Search for the Marks

• http//tess2.uspto.gov/bin/gate.exe?fsearchsssta
  te896lck.1.1

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How do I acquire trademark rights?

• From use of the mark in commerce

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What is use in commerce?

• For goods the mark must appear on the goods, the
  container for the goods, or displays associated
  with the goods, and the goods must be sold or
  transported in commerce.
• For services the mark must be used or displayed
  in the sale or advertising of the services, and
  the services must be rendered in commerce.

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Mark Must Be Distinctive

• Fanciful
• Arbitrary
• Suggestive
• Descriptive
• Generic

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• Is registration of a mark required?

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No. You can establish rights in a mark based on
legitimate use of the mark in commerce.
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Why Register?

• constructive notice to the public of the
  registrant's claim of ownership of the mark
• a legal presumption of the registrant's ownership
  of the mark and the registrant's exclusive right
  to use the mark nationwide on or in connection
  with the goods and/or services listed in the
  registration

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Why Register?

• the ability to bring an action concerning the
  mark in federal court
• the use of the U.S registration as a basis to
  obtain registration in foreign countries and
• the ability to file the U.S. registration with
  the U.S. Customs Service to prevent importation
  of infringing foreign goods.

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Where to Register?

• State Registrations
• Cheaper (Illinois 15)
• Statewide protection
• Federal Registrations
• More expensive (335 filing fee per class of
  goods)

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When can I use the trademark symbols TM and SM?

• Any time you claim rights in a mark, you may use
  the "TM" (trademark) or "SM" (service mark)
  designation to alert the public to your claim,
  regardless of whether you have filed an
  application with the USPTO.

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When can I use the trademark symbol ?

• You may use the federal registration symbol ""
  only after the USPTO actually registers a mark,
  and not while an application is pending. Also,
  you may use the registration symbol with the mark
  only on or in connection with the goods and/or
  services listed in the federal trademark
  registration.

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What must an application include?

• the name of the applicant
• a name and address for correspondence
• a clear drawing of the mark
• a listing of the goods or services and
• the filing fee for at least one class of goods or
  services.

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How do I know if someone else is using a mark I
may want to use?

• Trademark Searches
• www.uspto.gov
• Private search firms
• Will pick up common law uses
• Expensive (400 - 500) per mark searched

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How long does a federal trademark last?

• 10 years
• Renewable for successive 10 year periods
• After 5 years, with proper filings, mark becomes
  incontestable

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Quote of the Day

• Laws are always useful to persons of property,
  and hurtful to those who have none.
• Jean-Jacques Rousseau, 1761

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