Understanding Trademarks A Global Perspective

Types of Intellectual Property Copyright Patent Industrial Design Utility Model Trademark Trade Name Trade Dress Trade Secret Right of Publicity Technology transfer contracts, know-how, customer lists, distribution and logistics systems, topography/ circuit layout, plant breeders’ rights, etc.

What Is a Trademark? –Word –Symbol –Slogan JUST DO IT. –Product or packaging design that identifies the source of a specific product or service and distinguishes it from others in the marketplace.

Trademarks and Service Marks Service mark examples

Nontraditional Marks Sound Color Fragrance Design of a business establishment Motion

Other Kinds of Marks Collective mark Certification mark

Trademark vs. Trade/Business Name Trade/Business Name: identifies a company or business. – Example: The Coca-Cola Company Trademark: identifies the goods or services of that company. – Example:

Functions of a Trademark Indicates the source or origin of goods or services. Assures consumers of the quality of goods bearing the mark. Creates business goodwill and brand awareness.

Process of Securing a Trademark Select Clear Protect

Selecting a Mark The more distinctive the mark, the greater its level of legal protectability. Generic marks are not capable of trademark protection. Descriptive marks are capable of protection only with a showing of secondary meaning. Distinctiveness Spectrum

Trademark Searches International screening search Country-specific search –Trademark registers – classes/categories –Corporate names –Internet uses and domain names –Other directories/dictionaries Local expertise

Obtaining Trademark Rights Rights are territorial – may be registered through: Single trademark office Regional trademark systems Madrid (“International Registration”) system

Obtaining Trademark Rights (cont’d) Rights are obtained: - By registration; or - By use (common law rights)

Trademark Registration Registrability -Meets the legal requirements – that is, not generic, not immoral, etc. Availability -Is not identical or confusingly similar to a prior-registered mark or a mark that is the subject of a pending application (assuming that the application is ultimately accepted). -Is not being used in the same market as an identical or confusingly similar mark in connection with similar goods or services. Application Procedure -With the national trademark office. -United States: state registration (with the secretary of state) or federal registration (with the USPTO).

Notice of Registration ® ______ is a trademark/service mark of _______ TM SM

Loss of Rights Improper use Failure to police Genericide Failure to renew Non-use Cancellation Improper assignment or licensing

Loss of Rights Registered rights Common law rights Failure to renew Non-use Failure to police Cancellation “Use it or lose it”

Proper Use — Avoiding Genericide Once a trademark, not always a trademark Important to police third parties’ unauthorized and/or improper use escalator dry ice cellophane aspirin linoleum

Proper Use — Avoiding Genericide Use the ® symbol where appropriate Distinguish from surrounding text by using: Quotation marks – “Mercedes-Benz” cars Larger-sized print – Mercedes-Benz cars All capital letters – MERCEDES-BENZ cars Initial capitals – Mercedes-Benz cars Mercedes-BenzDistinctive print – Mercedes-Benz cars Color – Mercedes-Benz cars Use the TM/SM symbol where appropriate

Proper Use — Avoiding Genericide Use the mark followed by a noun. Incorrect: A KLEENEX Correct: A KLEENEX tissue Do not pluralize a mark. Incorrect: Two DELLS Correct: Two DELL computers Do not make a mark possessive. Incorrect: POST-IT’s quality Correct: POST-IT note pads’ quality Do not use a mark as a verb. Incorrect: Xerox a document Correct: Photocopy a document on a XEROX copier Use consistent, proper spelling. Incorrect: H and M Correct: H&M

Policing and Protecting Trademarks Subscribe to watch services Internet searches Internal “eyes and ears”

Summary Just one of several types of IP Not necessarily a trade / business name Rights obtained via registration/use Select a strong trademark Search Register Properly use, police and protect