Trademarks Presented by: Jeanne M. Hamburg Norris, McLaughlin & Marcus, P.A. 875 Third Avenue New York, New York (212)

Jeanne M. Hamburg, Esq. Specializing In:  All aspects of copyright and trademark law  both in litigation and in the transactional area

Program What is a trademark Types of marks Comparison: Trademarks, Copyrights, Choosing a mark  Distinctiveness  Confusion  Searching and Clearance Proper Trademark Usage Obtaining Protection  Common law rights  Registration and procedure

What is a trademark? Anything that serves as an “indication of source” Most commonly  a word: Exxon, Mountain Dew, Starbucks, Intel  a logo:

Color marks

Packaging / configuration marks

Selecting a trademark Best choice:  Arbitrary/fanciful – Acrobat® software, Exxon® fuels  Suggestive – gives a hint of what the product is, but is not merely descriptive – Molyvan®, Vancote® Can not be generic or merely descriptive  ‘Super Strong’  Diet Chocolate Fudge Soda

Sound marks

Trademarks versus Copyrights Trademark – “indication of source”  created by use in commerce in connection with a product or service  Registration is optional  Application for registration may be filed at any time  Duration – renewable indefinitely with continued use Copyright – “original expression of an idea”  Protection is automatic from moment of creation  Registration is optional, though is required for litigation  Application may be filed at any time (but preferably within 3 months of publication)  Duration – life of author plus 70 years

Why protect trademarks? Consumer’s perspective:  Reputation for quality  Recognition of product – distinguish from competitors Trademark owner’s perspective:  Provide a competitive advantage  Valuable corporate asset

How are trademark rights created? ‘ Use in commerce ’ – in the U.S., trademark rights can be created by simply using the mark in association with goods or services, such that the public considers the mark to be associated with a single provider. ‘ Registration ’ – evidence of the validity of trademark rights.  registration will not grant unless actual use in commerce has commenced.  registration is recommended, but not required

Selecting a trademark Arbitrary/fanciful – Acrobat® software, Exxon® fuels, Sprite® soft drink Suggestive – gives a hint of what the product is, but is not merely descriptive – Ty-D-Bowl® cleaner, Rollerblades® in-line skates Descriptive with “acquired distinctiveness” American Airlines® Can NOT be generic or merely descriptive  Gummy Bears or Super Strong

Selecting a Trademark Must not be confusingly similar to existing trademarks used on related goods.  Are the marks related Visual appearance, sound-alike?  Are the goods related Trade channels, marketing channels, compare likely purchaser group Other factors – sophistication of purchasing group, selling price, impulse vs. careful purchaser Likelihood of confusion – would consumers believe that the two products come from the same source

Clearing a new mark Searching –  pending trademark applications and granted registrations are searchable in the United States Patent and Trademark Office (  ‘Knock-Out’ search – PTO website best used for finding direct hits Recommend to follow up with outside search (Thomson &Thomson®), which will find phonetically similar marks

Clearing a new mark Searching  ‘ Common law’ marks- third party rights may also exist in non-registered marks. Sources: Google™ search, Lexis®/Nexis®, industry publications, Thomson & Thomson®

Clearing a new mark ‘In Use’ investigation – registered marks may be invalid – confirm current use through Internet or outside investigator. Opinion – experienced trademark counsel can give guidance as to descriptiveness and confusion issues

Proper Trademark Usage Why? – improper use can lead to loss of exclusive rights – mark becomes generic, and everyone can use it Lost - aspirin, cellophane, escalator, thermos, linoleum Saved – Xerox® copiers, Band-Aid® bandages, Rollerblade® in-line skates

Proper Trademark Usage How? DO  Use as an adjective modifying a generic noun: Xerox® copiers  Set apart from other text: Initial capital Xerox® copiers All capsXEROX® copiers Bold, or different font Xerox® copiers

Proper Trademark Usage How? DO NOT  Use as a noun or verb “Give me a xerox” “I am xeroxing that now”  Use in the plural Incorrect - Three xeroxes Correct – Three Xerox copies

® – when to use ® indicates that a trademark is registered in the USPTO. It must not be used unless the mark is registered. It is suggested to use ® where appropriate (gives notice to the public), though it is not required.

TM, SM © - when to use ™  may be used for unregistered marks.  Has no legal effect SM may be used for unregistered ‘service marks’ in place of TM, but there is not really a legal distinction © relates to copyright, not trademark rights.

Loss of rights Genericide Abandonment  Usually 3-5 years of non-use may be grounds for cancellation  Discontinue use with no intention to resume use “Naked licensing” – authorized use by a licensee does not go to benefit of trademark owner if not “controlled and monitored” – can lead to abandonment

Registration – United States If registration is optional, why do it? Procedural advantages  Presumption of validity – do not need to prove protectable right in court – this is a major cost incentive  Constructive notice nationally  Incontestable after 5 years – others can not attack the registration except on narrow grounds of genericness and fraud

Registration - basics Form of mark (word, design, colors) Description of goods and services Classification Fees Basis  Actual use in commerce  Intent to use (must follow up with actual use)  Foreign registration basis (only available to foreign entities) – no use required for registration

File Application Examination Approval and Publication Opposition Period Substantive Formal Prior Conflicting Marks Descriptiveness or Functionality Classification Goods and Services Description Basis (specimens of use) Third parties may oppose based on prior rights or other objections

Opposition Period Registration 6 th Year Affidavit of Use Renewal and Affidavit of Use – every 10 years after registration Notice of Allowance Statement of Use Basis – actual use or foreign registration Basis – intent to use

Resources McCarthy on Trademarks USPTO website  TMEP – Trademark Manual of Examining Procedure  Classification – Manual of Goods and Services  Searching  Status INTA – International Trademark Association website