1 Trademarks 101 Steve Baron March 4, 2003

2 What is a trademark or service mark?  Kodak  Exxon  Coca  Coca Cola  Mc  Mc Donald’s  Starbucks  Walmart  MTV  Victoria’s  Victoria’s Secret  Poloroid  Xerox  Lego  Beanie  Beanie Babies  Kraft  Playboy  Apple  Dell

3 A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

4 A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

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6 Let’s Search for the Marks  chss&state=896lck chss&state=896lck chss&state=896lck.1.1

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11 How do I acquire trademark rights? FFFFrom use of the mark in commerce

12 What is use in commerce?  For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.  For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

13 Mark Must Be “Distinctive”  Fanciful  Arbitrary  Suggestive  Descriptive  Generic

14 Is registration of a mark required?

15 No. You can establish rights in a mark based on legitimate use of the mark in commerce.

16 Why Register?  constructive notice to the public of the registrant's claim of ownership of the mark;  a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;

17 Why Register?  the ability to bring an action concerning the mark in federal court;  the use of the U.S registration as a basis to obtain registration in foreign countries; and  the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

18 Where to Register?  State Registrations Cheaper (Illinois = $15) Cheaper (Illinois = $15) Statewide protection Statewide protection  Federal Registrations More expensive ($335 filing fee per class of goods) More expensive ($335 filing fee per class of goods)

19 When can I use the trademark symbols TM and SM?  Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO.

20 When can I use the trademark symbol ®?  You may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

21 What must an application include? the name of the applicant; the name of the applicant; a name and address for correspondence; a name and address for correspondence; a clear drawing of the mark; a clear drawing of the mark; a listing of the goods or services; and a listing of the goods or services; and the filing fee for at least one class of goods or services. the filing fee for at least one class of goods or services.

22 How do I know if someone else is using a mark I may want to use?  Trademark Searches Private search firms Private search firms Will pick up “common law” usesWill pick up “common law” uses Expensive ($400 - $500) per mark searchedExpensive ($400 - $500) per mark searched

23 How long does a federal trademark last? 10 years 10 years Renewable for successive 10 year periods Renewable for successive 10 year periods After 5 years, with proper filings, mark becomes “incontestable” After 5 years, with proper filings, mark becomes “incontestable”

24 Quote of the Day  “Laws are always useful to persons of property, and hurtful to those who have none.” Jean-Jacques Rousseau, 1761Jean-Jacques Rousseau, 1761

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