Trademarks 101 A Crash Course in Protecting Your Brand

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					  NEWSLETTER NO. 1 	                                                                                           NOVEMBER 2007




                                                                                    Securing Your Innovations SM


                                           The first in a three-part series
                                           Trademarks 101: A Crash Course in
                                           Protecting Your Brand

                                            As business professionals, we come across     online at www.uspto.gov or by visiting the
                                            trademarks every day. Often, more than        Trademark Public Search Library in
                                            we realize. They’re placed on our cups of     Arlington, VA. Certain information can
                                            coffee, in our morning paper and on our       also be searched at any Patent and
    RECENT NEWS                             computer; familiar images and logos—          Trademark Depository Library, which
                                            trademarks— that we see every day, all        have CD-ROMS containing the database
 Special Master Berenato presided           very well protected.                          of registered and pending marks, though
 over trial in Rochester, NY; Eastman                                                     they don’t contain images of the design
 Kodak v. Agfa-Gevaert, et al.,             But for every well-protected image and        marks.
 6:01-cv-06564-MAT-JWF in May 2007          logo, there are plenty of trademarks that
 (Report and recommendation filed)           are not properly protected. Take the          When evaluating your trademark
                                            small or emerging business owner with a       application, it is important to remember
 BWS conducted 3 week trial in              creative new logo splashed all over his or    that the Trademark Office only searches
 Hartford, Connecticut for Jacobs           her Web site, on stationery and in            registered U.S. trademarks and pending
 Vehicle Equipment Co. v. Pacific Die-       brochures, but overlooking one critical       U.S. trademark applications during the
 sel Brake (Jan. 2007, decision pending)    element: the formal registration of a         examination process, not state
                                            trademark.                                    trademarks, common law trademarks or
 Firm completes favorable settlement                                                      the Internet. No time to conduct the
 for client in Tennessee, Neil Brothers     Trademarks are one of the most common         search on your own? An attorney-assisted
 Ltd. v. World Wide Line (April 2007)       forms of Intellectual Property, typically     registerability search typically costs less
                                            used to protect names, symbols and            than two hundred dollars and includes a
                                            slogans that identify a company as the        search of all outstanding trademarks and
                                            source of a product or service. Yes, you      trademark applications to determine
  GET TO KNOW OUR FIRM                      can establish rights in a mark based on       whether any person or company is using
                                            legitimate use of a mark. However,            the same or a similar trademark. The few
 If you or members of your company
 work on products and ideas that            owning a federal trademark registration       hundred dollars you spend on a formal
 need to be protected, we can help.         provides several important advantages,        search will be worth every cent if the
                                            and the dangers of not securing your          expenditure saves you from having to
 Berenato White & Stavish, LLC invites      brand or corporate identity are obvious.      change a name or a mark down the road.
 interested business owners, general
 counsel, marketing directors and           You wouldn’t skip out on protecting your      What do the different symbols
 individuals to meet with a member of       company with insurance ….why should           mean?
 our team for a free thirty minute                                                        Trademarks are for products. Service
 consultation, where we can                 you skip out on protecting your brand?
                                                                                          marks are for services. The trademark
 determine the best course of action                                                      symbol (TM) is for pending trademark
 for protecting yourself, your brand,       So, where does one start in the
                                                                                          applications and registered State marks
 and your great ideas.                      trademark filing process?
                                                                                          and the service mark symbol (SM) is for
                                            Before adopting a trademark, you should
                                                                                          pending service mark applications and
 To arrange an initial meeting with our     invest in a search of prior registrations
                                                                                          registered State marks. As soon as you
 firm, please contact Nicole Pecora at       and pending trademark applications to
                                                                                          begin using a mark, the TM and SM
 npecora@bwsiplaw.com.                      determine whether any person or
                                                                                          symbols may be added to the logo or
                                            company is using a similar mark. Rights
                                                                                          image in question. When a mark actually
                                            in trademarks are generally based on
                                                                                          becomes registered by the U.S. Patent and
                                            priority of use. Start with a free search


BERENATO, WHITE & STAVISH. LLC: SECURING YOUR INNOVATIONS SM	                                                  www.BWSiplaw.com
  NEWSLETTER NO. 1 	                                                                                               NOVEMBER 2007




Trademark Office (USPTO), usually after        "descriptive", has acquired "secondary         ABOUT THE AUTHOR
9-12 months, then the ® symbol is used        meaning", and whether the mark is too          Matthew Stavish is a managing
for both trademarks and service marks.        similar to another mark and therefore          partner at Berenato, White & Stavish
                                              likely to lead to a "likelihood of confu-      law firm in Bethesda MD. He can be
What is involved in filing, and how            sion" in the marketplace. Once the             reached at 301-896-0600 or
much will it cost?                            examining attorney approves a mark, it is      mstavish@bwsiplaw.com
                                                                                            Matt Stavish is a managing partner at
There are two types of applications for       published in The Official Gazette, a USPTO
                                                                                            Berenato, White & Stavish Law firm in
registering a mark on the Principal           publication.
                                                                                              ABOUT THE FIRM
                                                                                            Bethesda Maryland . He can be reached
Register: a "use application" and an
"intent-to-use application". Use applica-     Upon publication, any third party                301-896-0600 &
                                                                                            atBerenato, Whiteor Stavish represents
                                                                                              many leading national and international
                                                                                            mstavish@bwsiplaw.com
tions are for marks that have already been    believing they will be damaged by the
                                                                                              businesses, institutions and govern-
used in interstate commerce and intent-       mark has 30 days to file an "opposition"         ment entities. With offices in Bethesda
to-use applications are filed when there is    with the USPTO. The opposition is a             and Northern Virginia—and with the
intent to use the mark in commerce at         formal procedure conducted before the           United States Patent and Trademark
some future date. An intent-to-use            Trademark Trial and Appeals Board of            Office more about away—the firm
                                                                                            To learn only minutestrademarks, and the
application permits the trademark owner       the USPTO; it is most often a "paper            can quickly and easily respond to key
                                                                                            trademark filing process, please contact
to reserve a particular mark while the        trial" where each party files documents          patent and trademark issues that affect
                                                                                            Berenato White & Stavish at 301-896-
owner prepares to launch a product or         relating to the mark that is in conflict. At     their clients’ business.
                                                                                            0600 or visit them online at
service in interstate commerce.               the close of the opposition procedure, a
                                                                                            www.bwsiplaw.com
                                              ruling is handed down that either permits       Boasting some of the country’s top
The application form requires an identifi-     or denies the registration of the mark; a       names in patent law, Berenato, White
cation of the mark, a description of the      decision that is also appealable. Only          & Stavish is nationally recognized for
products or services that use or intend to    about 3% of trademark applications              its depth of knowledge and vast
                                                                                              experience, specifically in all areas of
use the mark, date of first use (for use       result in the filing of an opposition.
registrations), a drawing of the mark that
                                                                                              technology. a registered patent Attorney and
                                                                                             Joe Berenato is For the past 17 years, the
                                                                                              firm has proudly maintained the same
conforms to the USPTO's specifications,        If a mark is not opposed during the           patner at Berenato White and Stavish, LLC.
                                                                                              address in Bethesda and maintains its
and, for use registrations, samples of the    30-day opposition period, or if the           To learn more, email him at a "hands-on"
                                                                                              promise to employ
mark as it has actually been used in          applicant prevails in the opposition, the     jberenato@bwsiplaw.com
                                                                                              approach to all cases, offering a
commerce.                                     USPTO will move forward with the                personal touch to each client
                                              registration. It usually takes 2-3 months       relationship.
Registration requires a filing fee for each    from the end of the opposition period for
class of goods or service for which the       registration to be finalized, at which point    The collective strength of Berenato,
trademark owner wants to register the         the trademark owner receives a                 White & Stavish allows the firm to
mark. Many trademark owners register          Certificate of Registration for the mark        service large national and international
their marks in multiple classes depending     and may begin using the trademark              corporations, as well as law firms and
upon the breadth of their product line        registration symbol, ® with their              patent agents in need of intellectual
and the services they provide. The            products/services.                             property expertise.
current filing fees for a trademark
application range from $275 to $375 per       In short, the process for federal              If you are in need of an Intellectual
class of goods or services.                   registration of a trademark typically takes    Property attorney, contact us at
                                                                                             301-896-0600 to learn how we
                                              between 9 and 12 months. The costs
                                                                                             may be able to assist with your patent,
Once an application is filed, it is assigned   are typically a few thousand dollars
                                                                                             trademark and copyright issues.
to a Patent and Trademark Office               depending on the resistance encountered
examining attorney who reviews the            at the Trademark Office. If you are
                                                                                             Berenato, White & Stavish, LLC
application. The examining attorney           investing money to build brand recogni-        6550 Rock Spring Dr., Suite 240
pays particular interest to the description   tion, a federal trademark registration         Bethesda, MD, 20817
of goods, the type of mark and whether        should be an essential part of your            301-896-0600
the mark is "inherently distinctive",         business plan and budget.                      www.BWSiplaw.com


BERENATO, WHITE & STAVISH. LLC: SECURING YOUR INNOVATIONS SM	                                                       www.BWSiplaw.com