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Basic Facts about Trademarks (Federally Registered Trademark vs. State…
Basic Facts about Trademarks
Trademark definition
word, slogan, symbol, design, combination of these
Also: sound, color, smell
Trademark v. patent v. copyrights
Trademark: brand for goods & services
uspto.gov
Patent: protect inventions
uspto.gov
Copyright: original artistic (tv commerical) & literary works
copyright.gov
What is not a trademark?
domain name
Biz name (DBA)
Federally Registered Trademark vs. State Registered
legal presumption that owner of mark
right to bring legal action concerning mark in federal court
legal presumption of exclusive right to use mark
use the federal registration circled symbol R
Record registration with US Customs & Border Protection
prevent imporation of inffringement or counterfeit foreign food
puts public on notice of ownership of mark
listed on USPTO database
use registration as basis for foreign filing
Steps to registering a trademark
Strengths of a trademark: from weak to strong
(2) Descriptive: directly describe something about the goods/services
ie: CREAMY for yogurt. the ultimate bike rack for a bike rack
typically not trademarkable, unless proved the mark's been long used
(3) suggestive
suggest quality of goods/services
ie: QUICK N/ NEAT for pie crust. GLACE A DAY for calendars
(1) Generic: common, everyday names for goods & services WEAKEST
WEAKEST or not trademarkable at all
ie: BICYCLE for "bicycles or "MILK for "a dairy-based beverage"
(4) fanciful and arbitrary STRONGEST
fanciful mark: invented words
ie: XEROX
Arbitrary marks: actual words but no association with goods/services
ie: APPLE for phones
trademark selection considerations
strenght of mark
likelihood of confusion
surname
geographically descriptive
deceptive, disparaging, offensive
misspelling of descriptive/generic wording
title of a book or movie
reasons for refusal
likelihood of confusion
reason #1 marks are similar
look alike, sound alike, have similar meaning, create similar commercial impression
ie: X-SEED and EXCEED
reason#2: goods/services are related
identical marks could co-exist if products/services are unrelated
Trademark clearance search
Federal free search system: Trademark Electronic Search System (TESS)
state trademark databases
biz name databases
internet search: articles, websites, etc
trademark selection
not every mark registers: applications need to comply with federal laws. Otherwise, will receive a refusal letter
even registered mark could be challenged
What's legal implications of trademark infringements
if convicted, have to destroy (1) inventories
(2) MKTing materials
(3) pay for monetary damages, etc
Common Law Trademark Rights (CLTR)
Definition
That trademark rights that are developed through use ar not governed by statue. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law
geographic limitation of CLTR
CLTR are limited to the geographic area in which the mark is used.
EXAMPLE: if a coffee blend is sold under the name BLASTER in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market a different blend in New York under the same name (assuming they had no knowledge of the California company), then there would be no trademark infringement. However, if the New York company attempted to sell their coffee blend nation-wide, they would discover that the California company's common law rights to the mark would prevent them from entering the California market