what you need to know about trademarks

Trademarks

© 2015 Colorado Startup Lawyer

Introductions

• Name• What you do professionally• Whether you have a trademark

High-level Introduction to IP

• Patents: a grant of property right to an inventor for someone who invents or discovers any new and useful process, machine, manufacture, or composition of matter.

• Copyrights: works of authorship, such as writings, music, and works of art that have been tangibly expressed; think books, movies, software, paintings.

• Trade secrets: formula, pattern, physical device, idea, process or compilation of information keep secret.

• Trademark:

What are trademarks

Definition:The term “trademark” includes any word, name, symbol, or device, or any combination thereof—• (1) used by a person, or• (2) which a person has a bona fide intention to use in commerce and

applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

What can you trademark“trademark” includes any word, name, symbol, or device, or any combination thereof• Words/letters

• Logo (i.e., design)

• Smell – rare

• Sound - ex – IBM chimes; Harley Davidson (unsuccessful)– http://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-examples

• Color

• Packaging

• Product Design

What can you trademark – company’s name?

Short answer: sometimes

When a Trade Name is a Trademark: A trade name is often used in one of two contexts. • 1) The trade name is used for bank accounts or to file business documents or for legal

purposes, such as responding to a lawsuit. • 2) A trade name is used to market goods/services or to otherwise identify the source of

goods/services.• When a trade name is used in the latter scenario, as an identifier of goods/services, then it is

being used in a trademark sense.• A Common Misconception – Registering Your Trade Name With a State Agency Does NOT

Give You a Trademark

Quiz Question

• Are domain names trademark?– A) Yes– B) No– C) Sometimes– D) None of the above

Domain names• Domain names can be trademarks, sometimes.

• As a result – can be sued, sent cease & desist letter, etc.– Example -

• If you have a domain name, best step is to trademark it or a similar variation of it.

A few takeaways• Can have more than one trademark• Trademark portfolio (advertising/branding). Legal and business.

Quiz Question

• How many trademarks does Google have?– A) 2– B) 11– C) 322– D) 37

Google Trademarks - 322• 265.com™ aggregator site• Actívate™ training program• Ad Blitz™ ad voting competition• AdMob™ mobile advertising service• AdSense for Content™ program• AdSense for Domains™ program• AdSense for Search™ program• AdSense™ advertising service• AdWords Editor™ campaign management application• AdWords Express™ service• AdWords™ advertising service• Android Market™ media store• Androidify™ mobile app• Android™ platform• Art, Copy & Code™ marketing project• Barely Political™ channel• Blogger™ web publishing service• Blogspot™ web publishing service• Broadcast Yourself™ service• Chrome™ browser• Chrome OS™ operating system• Chromebook™ notebook computer• Chromebook Pixel™ notebook computer• Chromebox™ computing device• Chromecast™ device• Chromium™ open source project• CitizenTube™ channel• Claim Your Content™ content monitoring tool• Closure™ tools• Content ID™ content monitoring tool• Creative Sandbox™ events• Dalvik™ virtual machine• DART™ programming language• Daydream™ dock mode• DoubleClick Ad Exchange™ program• Doubleclick AdPlanner™ advertising service• DoubleClick Rich Media Dynamic Ads™ advertisements• DoubleClick Rich Media™ advertisements• DoubleClick Studio™ tool• DoubleClick™ advertising service

g+™ logog+1™ logoGlass™ wearable computing deviceGlassware™ web servicesGmail™ webmail serviceGoogle 3D Warehouse™ toolGoogle Ad Manager For Advertisers™ advertising serviceGoogle Ad Network™ advertiser networkGoogle AdSense™ advertising serviceGoogle AdWords™ advertising serviceGoogle AdWords Premier SMB Partner™ programGoogle Agency Land™ portalGoogle Alerts™ email update serviceGoogle Analytics™ serviceGoogle Answers™ research serviceGoogle App Engine™ platformGoogle Apps Connector™ softwareGoogle Apps Device Policy™ mobile appGoogle Apps Directory Sync™ provisioning toolGoogle Apps for Business™ programGoogle Apps for Education™ programGoogle Apps Labs™ programGoogle Apps™ serviceGoogle Authenticator™ mobile appGoogle Blogs™ blog searchGoogle Blog™ search serviceGoogle Books™ serviceGoogle Building Maker™ softwareGoogle Business Photos™ serviceGoogle Business Photos Trusted Photographer™ programGoogle Calendar™ calendaring applicationGoogle Cast™ software development kitGoogle Catalogs™ mobile appGoogle Chat™ instant messaging serviceGoogle Checkout™ payment and billing serviceGoogle Chrome Experiments™ websiteGoogle Chrome Extensions™ plug-insGoogle Chrome Frame™ plug-inGoogle Chrome to Phone™ service

Nexus S™ mobile phoneNexus™ family of marks for mobile devices and peripheralsNik™ photography softwareO3D™ APION2™ technologiesOpen Handset Alliance™ business allianceOpenSocial™ APIOrkut™ online communityPage Speed™ web performance optimizerPagerank™ algorithmPanoramio™ photo-sharing communityPegman™ map iconPicasa Web Albums™ programPicasa™ photo organizing softwarePostini™ email solutionsQuickoffice™ softwareRechargeIT™ Google.org car programSearch Inside Yourself™ curriculumSingleTap™ payment serviceSnapseed™ appSPDY™ protocolStreet View™ imagesTalkbin™ SMS feedback systemTap, Pay, and Save™ serviceThe Web is What You Make of It™ sloganThink _______ with Google™ enterprise centerThreadbanger™ channelTrue Motion™ serviceUniversal Search™ visionVP6™ video codecVP8™ video codecVsauce™ channelWaze™ GPS-based geographical navigation applicationWazi™ serviceWebM Community Cross-License Initiative™What Do You Love?™ searchWidevine™ digital content managerWildfire™ marketing serviceWspółrzędne Google™ location serviceYou Tube Sketchies™ comedy skits

Step 1) Choose a strong trademarkWhether a trademark is strong depends on where it falls within the below spectrum. The categories within the list are ranked in hierarchy:

1. Fanciful/coined – inherently distinctive

ex – kodak; variations - codeak

2. Arbitrary – inherently distinctive

3. Suggestive – inherently distinctive

4. Descriptive – supplemental register

ex – web auction; variations – online auction, auction. com

5. Generic – you get nothing

Step 1) Choose a strong trademarkFanciful/Coined: is made up of a word or words that you will not find in a dictionary (the words are made up solely to serve as trademark).• Examples: Blistex, Kodak, Kleenex, Exxon, Tylenol, Actifed, and Reebok.Arbitrary: Marks that are comprised of common words in an unexpected or random way such that their normal meaning has nothing to do with the nature of the product/service they identify. • Examples: Penguin books, Arrow shirts, Sun computer, Camel cigarettes, and Apple computers.Suggestive: a suggestive trademark uses ordinary words in a clever manner to create a desirable idea or feeling about a product or service, but avoids literally describing any aspect of the product or service. • Examples: Jaguar cars, Dove soap, Greyhound buses, Sunkist beverages, Citibank the bank,

Coppertone lotion and Playboy the magazine.Descriptive: a trademark one that outright and specifically describes a quality, function, characteristic, or ingredient of a product/service. • Examples: Best Buy for retail store services in the field of electronics and appliances, Auction

Web for auction services online, Lite for portable computers describing the computer’s weight; and Quick Lube for fast oil change service, and Lektronic for electronics.

Generic: a generic trademark may be synonymous with the good/service itself (e.g., “pear” is generic for pears), or may describe a broader category to which the particular good or service belongs (e.g., “fruit” is also generic for pears). • Examples: “Convenient Store” for a retail store, “Light Beer” for low-calorie beer ,

Step 2) Conflict Free• Three general areas to search for conflicts:

– 1) Federal - Tess– 2) State – have to search each state individually.– 3) Common law – databases, the internet, lists with the public library, etc.

• Likelihood of confusion test – It is BROAD!!! UR Awesome; YOUR AWESOME; ewer Awesome; yoor

Awesome; yore Awesome; You are AHHsome– Double edge sword.– Depending on the circuit, 7-13 factors; In the federal circuit, the DuPont Factors.

• 1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

– Ex: 2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

• 3) The similarity or dissimilarity of established, likely-to-continue trade channels.

Quiz Question

• Is there a conflict between “Maternally Yours” and “Your Maternity Shop?”– A) Yes– B) No

Step 2) Conflict Free

• Examples of conflicts:– Magnavox and Multivox,– Simoniz and Permanize, – Platinum Puff and Platinum Plus, – Zirco and Cozirc,– Maternally Yours and Your Maternity Shop,– Mr. Clean and Mr. Rust and Mr. Stain,– Thirty Forty Fifty and 60 40 20,– Pledge and Promise.

Video

https://www.youtube.com/watch?v=BiVrBbWZQdQ



Benefits of having a federally registered trademark

• 1) Greater Protection• 2) Greater Deterrence• 3) Greater Remedies


• Greater Protection– The trademark owner receives exclusive nationwide ownership of the mark;– Registration decreases the likelihood of another party claiming that your

trademark infringes upon their trademark;– Registration provides official notice to others that a trademark is already

taken; consequently, a company that later adopts a confusingly similar trademark can not claim ignorance of the mark;

– The trademark owner obtains the future right to make the mark "incontestable," which provides conclusive evidence regarding the validity of the mark and of the registrant's exclusive right to use the mark;

– A United States Registration can be used as a basis for obtaining registration in foreign countries;

– Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.


• Greater Deterrence– You obtain the right to put ® after your trademark, thereby alerting

others to your registration and preventing the defense of innocent infringement;

– Your trademark will appear in trademark searches, likely discouraging others from proceeding with the registration of the same or similar mark; and

– The USPTO will refuse registration to any trademarks it deems confusingly similar to your trademark.


• Greater Remedies– Registration grants the trademark owner the right obtain more

damages if law suit is filed,– The trademark owner receives the presumption of being the valid

owner of the mark,– A registration increases the likelihood of the successful filing of a

dispute resolution policy for an infringing Internet domain name; and– The trademark owner has an automatic right to sue in federal court.

When to get a trademark

When to get a Trademark

• When - Now! Even if you are not using it yet.– Two types of applications – in use and intent to use.

• Why Now– 1) To avoid undoing what you have already done.

Example – client develops logo, domain names, business cards, facebook, actual product, branding efforts, t-shirts.

– 2) Your filing date will serve as the date of your first use of the mark; At which time, others are granted constructive notice.

Quiz Question

• When can you use – A) Whenever– B) When you file a trademark application with your state– C) When you file a trademark application with the USPTO– D) When you receive a registered trademark certificate– E) None of the above– F) All of the above

How to Use

• Notation/Symbols: SM, TM and ®

How to Use

• Distinguish your trademark– 1) changing the size of the font, 2) changing the type of font,

3) underlining, 4) CAPITALIZING, 5) italicizing, 6) changing the color, 7) using “quotes” or ‘apostrophes,’ and 8) doing two or more of the previously listed methods simultaneously, such as CAPITALIZING AND UNDERLINING.

• Attach/Affix your trademark to your goods/services• Refrain from “naked” licensing (i.e., letting others freely

use your trademark),• Make sure your trademark does not become generic, and• Use your trademark consistently.

Protect Your trademark

It is up to you to protect your market. Aside for the trademarks that are filed with the USPTO, you have to monitor infringement/conflict.

Trademark Protection Methods

• Trademark monitoring services:– Corsearch – Wolter Kluwer Company– Markify – Compumark – Thomson Reuters– Yourself – your own monitoring

• Which one you choose depends on size of your business, number of trademarks you own, budget, and other factors.

If you find an infringer

What to do:

– Factors to weigh: extent of infringement; who is the infringer (their size, budget for legal expenses, where are they located – in same state, internationally), strength of your trademark.

– Cease & Desist Letter typical first step.– Action – the sooner the better.

THANK YOU!

Thank you for coming. Please let me know if you have any questions.