Trading Up Searching U S Trademarks Presented at WVLA Annual by legalstuff2

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									Trading Up:
 Searching
   U.S.
Trademarks
      Presented at
 WVLA Annual Conference
    Huntington, WV

      2 October 2006

 Marian G. Armour-Gemmen
     Evansdale Library
  West Virginia University
           Trademarks @
          Evansdale Library

Evansdale Library at WVU is the only U.S.
Patent and Trademark Depository Library in
the state of West Virginia.

We have DVDs, called USAMark which
contain copies of Trademarks.

We have paper copies of the Official gazette of
the United States Patent and Trademark
Office. Trademarks.

Provide reference assistance throughout the
state.
      Trademark         ®™   SM




• A word, name, symbol, or device
  that is used in trade with goods to
  indicate the source of goods and to
  distinguish them from the goods of
  others.
• A service mark is the same as the
  trademark except that it identifies
  and distinguishes the source of
  service rather than a product.
  Trademark                 ®™   SM
                                      (cont.)


• Examples
  – Trademarks
     • “mac” (Apple
       Computer)
     • “intel inside”
  – Service Marks
     • FedEx (package
       delivery service)
     • Blockbuster (video
       rental service)
  Additional Types of Marks

• Certification Marks—certain
  qualities associated with mark
  (Good Housekeeping Seal of
  Approval)
• Collective Marks—signifies
  membership in an organization
  (FTD florist)
What makes up a mark?

•   Word
•   Phrase
•   Packaging
•   Design
•   Symbol
•   Color, Sound, Smell
       Strong Marks

• For a discussion of what makes a
  strong mark see Trademark.Legal
  Care for your Business & Product
  Name, pp. 9/2-9/18.
• Important terms
  – Distinctive Marks
  – Nondistinctive Marks
  – Generic Labels
  – Composite Terms and Slogans
  Components of a Trademark

• Type of Good or Service sold
  under the proposed Trademark

• Symbol, or word or phrase used
           Reasons for Trademark
            Registration Refusal
Not all words, names, symbols or devices function as trademarks.
  For example, matter which is merely the generic name of the
  goods on which it is used cannot be registered.

The grounds for refusal under Section 2 of the Trademark Act (15
  U.S.C. §1052) may be summarized as:

1. the proposed mark consists of or comprises immoral,
   deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely suggest a
   connection with persons (living or dead), institutions, beliefs, or
   national symbols, or bring them into contempt or disrepute;
3. the proposed mark consists of or comprises the flag or coat of
   arms, or other insignia of the United States, or of any State or
   municipality, or of any foreign nation;
         Reasons for Trademark
        Registration Refusal (cont.)
4. the proposed mark consists of or comprises a name, portrait or
   signature identifying a particular living individual, except by that
   individual's written consent; or the name, signature, or portrait
   of a deceased President of the United States during the life of
   his widow, if any, except by the written consent of the widow;
5. the proposed mark so resembles a mark already registered in
   the Patent and Trademark Office (PTO) that use of the mark
   on applicant's goods or services are likely to cause confusion,
   mistake, or deception;
6. the proposed mark is merely descriptive or deceptively
   misdescriptive of applicant's goods or services;
7. the proposed mark is primarily geographically descriptive or
   deceptively geographically misdescriptive of applicant's goods
   or services;
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional.
 What are the benefits of federal
    trademark registration?
1. Constructive notice nationwide of the
   trademark owner's claim.
2. Evidence of ownership of the trademark.

3. Jurisdiction of federal courts may be invoked.

4. Registration can be used as a basis for
   obtaining registration in foreign countries.

5. Registration may be filed with U.S. Customs
   Service to prevent importation of infringing
   foreign goods.
      Some Steps in Filing
         Trademark

•   Search for use in commerce
•   Use in commerce
•   Register at USPTO
•   Published for Opposition
•   Pay renewal fees
              Registering Trademark

          • Paper
               – Commissioner for Trademarks
                 P.O. Box 1451
                 Alexandria, VA 22313-1451
               – 1-800-786-9199
Strongly  •   Register online using the Trademark
Recommended
              Electronic Application System (TEAS)




          • http://www.uspto.gov/teas/index.html
       Requirements for
    Registering a Trademark

• Name Of The Applicant
• Name And Address For Correspondence
• Depiction Of The Mark ("The Drawing")
• Goods And/Or Services
• Application Filing Fee
• Basis for filing
   – “Use in Commerce"
   – "Intent to Use"
• Specimen
• Signature
                               Fees

http://www.uspto.gov/web/offices/ac/qs/ope/fee2006september15.htm


Cost
PER
Class


                                                     Towards
                                                     bottom of
                                                     page
      How long does a
   trademark registration
           last?

• An Affidavit of Use ("Section 8 Affidavit") must
  be filed: (1) between the fifth and sixth year
  following registration, and (2) within the year
  before the end of every ten-year period after
  the date of registration.
• Renewal application must be filed within the
  year before the expiration
• PRIOR to November 16, 1989 have a 20-year
  term
• Registrations granted on or after November
  16, 1989 have a 10-year term.
Accessing Trademarks Online
   http://www.uspto.gov
 Main Trademark Page
http://www.uspto.gov/main/trademarks.htm
Acceptable Identification
 of Goods and Services
        Manual
   Trademark Acceptable
   Identification of Goods
    and Services Manual
• http://tess2.uspto.gov/netahtml/tidm.html
     International Schedule of
              Classes
•   http://www.uspto.gov/web/offices/tac/doc/basic/international.htm
   Trademark Manual of
Examining Procedure (TMEP)
Trademark Manual of Examining
         Procedure (TMEP)
http://tess2.uspto.gov/tmdb/tmep/
•   Review Chapter 1400 for the appropriate class scope notes in
    order to confirm the terms and classes you have chosen.
•   For example, Class 8 (Hand Tools) includes cutlery but not
    surgical knives, which are in Class 10 (Medical Apparatus), or
    fencing weapons, which are found in Class 28 (Toys and
    Sporting Goods).
Design Code Manual
              Design Code Manual
           http://tess2.uspto.gov/tmdb/dscm/index.htm




Try
Keyword,
Browse,
or Alpha
     Design Code Manual
  http://tess2.uspto.gov/tmdb/dscm/index.htm


• Design Elements have a three level numerical
  designations:

                   Example: Clown Design
     Category        02 (humans)

     Division         01 (men)

     Section          17 (clowns)

                   02.01.17
         Trademark Electronic
         Search System (TESS)



Search
Trademark Electronic
Search System (TESS)
     Trademark Electronic
     Search System (TESS)

Search Tips:
•   Main Truncation tools: * and $
•   * can used in front and behind
    •Often search in [bi,ti]
•   Hyphens seen as spaces
         TARR Trademark
         Status Database



Search
TARR Trademark Status Database
      http://tarr.uspto.gov/
         Trademark Document
            Retrieval (TDR)




Search
Trademark Document
   Retrieval (TDR)
Trademark Question 1


“What company or
 individual owns the
 trademark Got Milk? ®”
         Trademark Question 1



Search




 TQ1
Trademark Question 1
Trademark Question 1
Trademark Question 1
Trademark Question 2



When was the flying WV for
 West Virginia University
 first registered?
Trademark Question 2
Trademark Question 2
Trademark Question 2
Trademark Question 2
Trademark Question 2
 Trademark Question 3



What trademarks are assigned
 to the American Library
 Association?
Trademark Question 3
Trademark Question 3
Trademark Question 3
  Trademark Question 4

What goods and
 services are
 assigned to the
 Trademark using the
 following design?
Trademark Question 4
Trademark Question 4
Trademark Question 4
Trademark Question 4
Trademark Question 4
 Trademark Question 5

• How can I listen to a
  soundmark?
 Trademark Question 5

• How can I listen to a soundmark?
Trademark Question 5
   Trademark Question 5




http://www.uspto.gov/go/kids/kidsound.html
      Trademark Question 5

Search for non-traditional marks
   •structured search of trademarks
   •Mark Drawing Code = 6.
Categories
       Scent           Sound
       Taste/Flavor    Touch
       Color           Shapes
Non-traditional Trademarks must meet three tests
       Non-function
       Acquired Distinctiveness
       Likelihood of Confusion or Dilution
        Questions?

Marian Armour-Gemmen
Patent and Trademark Reference
  Librarian
marmour@wvu.edu
293-4696 x5106


              Reg. 75934538
              TIME WARNER ENTERTAINMENT -
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