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					Brand Creation: From Conception to Protection

                   Part II:




        Presented by: Daliah Saper
            What is a Trademark?
 A Trademark is a distinctive sign, symbol, or indicator which is used to
  identify the particular source of products or services. Trademarks may also be
  used to distinguish a particular product from other similar or competing
  products.

 Trademarks will typically take the form of a:
     name,
     word,
     phrase,
     logo,
     symbol,
     design,
     image,
     even smell!
     ……..or a combination of these elements.
         Common Law v. Registered
              Trademarks
 Common Law Trademarks – The Symbols                ™represents an unregistered
  trademark and serves as a recognition that the particular trademark has not
  been registered with the United States Patent Office (“USPTO”). It is a
  notification that there exists a public claim to the use of a particular trademark.

     Use - Common Law Trademarks are generally valid solely within the state in which
      they are actively being used in commerce with proof of first usage of the particular
      mark.

     Protection – Common Law Trademarks are generally protectable to the same extent
      of Federally Registered Trademarks under the Lanham Act—but you have to jump
      through more hoops to enforce your mark.
        Common Law v. Registered
           Trademarks Cont.
                        ®
 Federally Registered Trademarks – The symbol        is a notice to the public
  that a particular trademark is federally registered.
    A Federally Registered Trademark is seen as much more valuable than a
      Common Law Trademark.
    Registering – A Federally Registered Trademark usually takes about 1 and
      ½ years to register. Here, the Common Law Trademark will provide
      protection during this interim period.
    Protection – Federally Registered Trademarks are also protected under the
      Lanham Act. Unlike Common Law Trademarks, however, a Federally
      Registered Trademark is much easier and cheaper to protect.
    Incontestability – Another advantage of having a Federally Registered
      Trademark is that after your mark has been registered for 5 years you may
      file for incontestability. A very valuable asset when selling a business.
          Other Types of Intellectual
                  Property
 Intellectual Property – As a general matter, Intellectual Property refers to the
   legal field that involves protection of creations of the mind and may take many
   different forms.

               Trademarks, Copyrights, Patents, and Trade Secrets
 Copyrights – Copyright protection grants exclusive rights of use to the authorship
  of an original work, however, this protection only lasts for a limited period of time.

 Patents – Patent protection grants exclusive rights of use to the invention of or
   discovery of any new and useful process, machine, article of manufacture, or
   composition of matter, or any new and useful improvement thereof. “Anything
   under the sun made by man.”

 Trade Secrets –Trade Secret protection grants exclusive rights of use for any
   formula, practice, process, design, instrument, pattern, or compilation of
   information which is not generally known or reasonably ascertainable, by which a
   business can obtain an economic advantage over competitors or customers.
       Trademark Distinctiveness
 The strength of any particular trademark will depend on the marks capability
  to distinguish itself from that of other goods or services. Generally, the
  strength of a mark is categorized along a spectrum of distinctiveness along five
  terms (from most to least distinctive).
    Fanciful – Marks that have been invented for the sole purpose of acting as a
       trademark.(Kleenex, Xerox).
      Arbitrary – Utilizes a device that has a common meaning but no relation to the
       mark itself (Apple).
      Suggestive – Marks that suggest a particular quality or characteristic of the goods
       and services (Microsoft, Netscape).
      Descriptive – Devices that merely describe the services or goods on which the mark
       is used (Container Store).
      Generic – Devices that actually name a product and are incapable of trademark
       (Modem, E-mail).
  What are the steps to getting a
    trademark registration?
 Conduct a trademark search
 Prepare the Application
 Submit the Application
 Wait for an Examiner to review your file
 Correspond with the Examiner
 If all goes well, you’re on to publication, and then
  hopefully registration.
                      Search Process
 The first step in the registration process is to search the USPTO to see if anyone
  is claiming trademark rights in a particular mark.

     A simple knock out search can be done through the USPTO website
      (www.uspto.gov). Through this website you can search for any and all
      registered and to be registered trademarks.

     Due to the immense number of Federally Registered Trademarks you can
      also hire a search company that will search all possible trademark databases
      and can also be hired to monitor your particular trademark for any future
      infringement.

     ITS VERY IMPORTANT TO CONDUCT A TRADEMARK SEARCH
                        Filing Process
 Work with your attorney to prepare the application:.
    Describe your Trademark
    Figure out your “First Use In Commerce”
    Describe products or services on which mark will be used
    Suggest the Classification under which the mark will be used
         Delineating classification type is the basis for determining which fees
          will be assessed to your particular trademark application. Goods and
          services are separated out into about forty different classifications and
          many applicants for trademark will register across classes.
          Intent to Use v. Use Based
                  Trademarks
 Federal trademark rights and protections are ultimately based on actual use in
  commerce.

    Intent to use – Filing an intent to use trademark application allows the
      applicant to file for trademark protection before committing all of the costs
      of marketing and promoting the mark. An applicant who files an intent to
      use application must make actual use of the mark before it can be
      registered.

    Use Based – According to the USPTO an applicant filing a use based
      application must actually already be using the mark in commerce in
      connection with the goods and/or services identified in the application.
        Trademark Examiners
 A trademark examiner is an attorney who is employed
 by a government agency. Typically, trademark
 examiners will be employed by the USPTO. Their
 primary occupation is to determine whether or not the
 trademark of a particular applicant will receive
 registration.

 Trademark examiners receive extensive training from
 the USPTO before they are assigned to the registration
 of any mark.
                         Office Actions
 An office action is an informative letter from the USPTO issued by the
    trademark examining attorney who assigned to a specific trademark
    application. The letter informs the applicant of the legal status of a trademark
    application.
   The four types of office actions are
   Examiners Amendments, (easy things taken care of with a phone call)
   Priority Actions, (procedural things that need to be taken care of )
   Final Office Actions (substantive legal arguments that your attorney needs to
    respond to)
      Non Final Office Action
      Final Office Actions, and
 Suspension Letters.
           Trademark Publication
 After an applicant has gone through the required examination period they may
  now begin the publication for opposition stage of the application process.
    If the Trademark Examiner has found no reason why a trademark should be
     denied registration then the examiner will send notice to the applicant that
     their mark will proceed to publication in the Official Gazette. The Official
     Gazette is a weekly publication put out by the USPTO and includes record
     of all of the trademarks that have been approved for publication.
    After the mark has been placed in the Official Gazette anybody who
     believes that the rights of their mark are being infringed will have 30 days
     from that point to raise a rebuttal (this is a rare event and only happens in
     about 3% of all trademark publications).
    If there are no rebuttals to your mark then Congratulations your mark is
     now officially registered!!!
                  Post Registration
 A registered trademark has the potential to exist forever assuming that the
  trademark registration is kept in proper order. It is possible, however, that an
  owner who does not keep their mark in order will be subject to trademark
  abandonment. In particular, there are two ways in which a trademark may be
  abandoned.
    Non-Use – After a particular period of time, if the mark is not used in
      commerce it may be deemed abandoned.
    Generic – A mark may become generic if it becomes so associated with the
      underlying good that it is used interchangeably with your mark.
            Trademark Protection
 After your trademark has been registered there are several means by which a
  mark owner will wish to protect their mark.
    Registration – As mentioned earlier, after use, trademark registration is
     the first step in protecting your mark and provides the most thorough
     protection for trademarks.
    Maintenance – Trademarks must be maintained through proper use and
     due diligence. This involves keeping your mark active in the stream of
     commerce and ensuring that your mark does not become generic.
    Watching – Many trademark owners list their marks with various
     trademark watching services. These services are particularly helpful when a
     company seeks to expand their enterprise in the USA and abroad.
    Enforcement – Enforcement consists of pursuing adverse users. A
     particularly cheap and effective method of enforcing against an adverse
     user is by having an attorney file a “cease and desist” letter. While litigation
     may prove necessary it should be avoided whenever possible.
Trademark Case Law
         Opus Decor
         She Beads
    Neverly Brothers Band
      Xpedia v. Expedia
  Mastercard v. Checkmaster

				
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