1. Ideas to Profits, November 7, 2014 The Center for Entrepreneurship, College of DuPage Trademarks Presented By: James L. Poznak Poznak Law Firm Ltd. 2210 Midwest Road, Suite 206 Oak Brook, IL 60523 630-792-9000 (voice) 630-792-2107 (fax) jlp@poznaklaw.com www.poznaklaw.com

2. Poznak Law Firm Ltd Disclaimer: The information and the following presentation made by the Poznak Law Firm Ltd (the “Firm”) regarding that information do not mean that an attendee or recipient of the information has retained the services of the Firm. The Firm is not an attorney for an attendee or recipient unless and until the attendee or recipient engages the Firm by signing or acknowledging a written engagement agreement. Therefore, until an attendee or recipient engages the Firm as their attorney, the Firm is not accountable or responsible for addressing, or failing to address, the legal issues that were, or perhaps should have been, addressed by the information or discussed during the presentation.

3. © 2014 Poznak Law Firm Ltd Poznak Law Firm Ltd

4. What is a Trademark? A trademark is a word, phrase, symbol, or design, or combination of words, phrases, symbols, or designs, attached to goods sold by a business, or to the packaging for the goods, which the business uses to identify itself as the seller of those goods. Example: Exxon, to sell motor fuels. Trademarks can include logos. Sounds can be trademarks if distinctive and unique to the goods. Example: Harley Davidson engine sound not a mark because not distinctive Example: NBC chimes are a mark because distinctive Poznak Law Firm Ltd

5. What is a Service mark? A service mark is a word, phrase, symbol, or design, or combination of words, phrases, symbols, or designs, that a business uses in the sale or advertising of its services to identify itself as the seller of those services. Example: Exxon, to sell credit card services. Service marks can include logos. Poznak Law Firm Ltd

6. “Mark” means a trademark or a service mark. Poznak Law Firm Ltd

7. Does a mark differ from a trade name? Yes. A mark identifies the source of goods or services. A trade name is the name of the business that provides goods or services. Displayed properly, a trade name can serve as a mark and as a business name. Example: - Mark: EasyFlush (to sell plumbing goods or services). - Trade name: EasyFlush Incorporated (the name of the company that sells the plumbing goods or services). Poznak Law Firm Ltd

8. What is the purpose of a mark? A mark can help you distinguish yourself from your competitors because your mark identifies you as the source of your goods or services. Using a mark gives you the right to prohibit your competitors from imitating your mark, thereby giving you a competitive advantage. A mark is the embodiment of your brand, which may be your most valuable business asset. Poznak Law Firm Ltd

9. Two aspects regarding marks: 1.Infringement 2.Acquiring rights Poznak Law Firm Ltd

10. What is Infringement? Infringement is the unauthorized use of a mark that is identical or confusingly similar to a mark already used by someone else. Before you use a mark or a trade name in connection with selling your goods or services, you should research prior uses of that mark or name and prior uses of similar marks and similar names. Otherwise, you might infringe on the prior user’s rights to the mark. If you infringe on a prior user’s rights to a mark, you could be sued for money damages and the prior user might obtain a court order barring your continued use of the mark. Poznak Law Firm Ltd

11. How do I research prior uses of marks and trade names? Unfortunately, there is not only one place to search for prior uses of marks and trade names. Numerous sources should be used to properly research prior uses of marks and trade names, including: Search trademarks on the PTO website. Search trademarks, corporations, and limited partnerships on the Illinois Secretary of State website. A general Internet search. Search resources maintained by the College of DuPage and libraries (such as the Naperville library), which have databases of business listings (such as Hoovers) and databases of news articles (such as Nexis). Hire an attorney who has access to multiple databases to conduct a trademark search. Engage a vendor that provides trademark search services Poznak Law Firm Ltd

12. How can I tell if my use of my mark or trade name might infringe on a prior user’s rights? Also, how can I tell if someone else’s use of a mark or trade name might infringe on my rights to that mark? There are two tests to determine infringement: 1. Whether a subsequent use of a mark or trade name is likely to cause purchasers of the goods or services to become confused or mistaken as to the seller of those goods or services. In other words, due to a subsequent use of a mark or trade name, might purchasers buy the goods or services from the subsequent seller rather than the seller who first used the mark or trade name? 2. Whether a famous mark or trade name is likely to become diluted. In other words, might a subsequent use of a mark reduce the uniqueness of the prior mark or trade name? Poznak Law Firm Ltd

13. What are the factors to determine the likelihood of confusion? The similarity or dissimilarity of the salient part of the marks or trade names in their entireties as to appearance, sound, connotation and commercial impression. Example of similar sounding marks: Excel, XL, Ecksell Example of words having the same meaning: Lupo is Italian for Wolf Example of words having a similar general meaning: City Woman and City Girl Example of salient: Lettuce, in the mark “Lettuce Entertain You” vs. “Lettuce Mix”, for restaurant and food catering The similarity between the goods or services. Example: Hats are usually deemed similar to pants and shirts. Example: Inland, to sell real estate, differs from Inland to sell steel. The market areas in which the goods or services are sold The number and nature of similar marks used to sell similar goods or services. Examples of (in)famous trademark fights: Apple Records vs. Apple Computer (i.e., the Beatles vs. Steve Jobs). Lexis vs. Lexus (Mead Data Central vs. Toyota). Poznak Law Firm Ltd

14. When you research prior uses of a mark or trade name, remember that the likelihood of confusion is the test to determine the infringement of marks that are not famous. Therefore, your search should include the following: 1. Search for marks and trade names that are spelled differently from your mark or trade name, but when said aloud sound similar to your mark or trade name. 2. Determine the similarity between your goods or services and those sold by prior users of the mark and the geographic markets served by you and the prior user. 3. Determine whether many others are already using your mark, trade name, or similar marks or trade names to sell goods and services similar or different from yours. Poznak Law Firm Ltd

15. What are the factors to determine whether a mark or trade name is famous? The distinctiveness of the mark or trade name, the extent to which purchasers of the goods or services recognize the mark, and the duration and extent of the promotion and use of the mark or trade name. Poznak Law Firm Ltd

16. How do I acquire rights to a mark? You acquire the rights to a mark by using it in connection with selling your goods or your services. To acquire the rights to a trademark for your goods, you must attach the mark onto your goods, onto the packaging for your goods, or onto displays associated with your goods. - Beware of ornamental or decorative use, such as printing the mark on clothing. To acquire the rights to a service mark, you must use or display the mark to advertise your services, such as on your website or your marketing brochures. Poznak Law Firm Ltd

17. Am I required to register my mark? No, you do not acquire rights to a mark by registering it. However, you can register your mark with the Illinois Secretary of State or with the United States Patent and Trademark Office (“PTO”). Poznak Law Firm Ltd

18. Can I register my mark with the Illinois Secretary of State before I have used it? No. You must use the mark for a bona fide sale in Illinois before you can register the mark. Poznak Law Firm Ltd

19. Can I register my mark with the PTO before I have used it? Yes. You can register the mark if you have a bona fide intent to use the mark for sales of your goods or services in at least one state other than Illinois. Poznak Law Firm Ltd

20. Can I register may trade name? No. Business names cannot be registered as marks. But, as mentioned above, displayed properly, your trade name can also be your mark. Example. A website home page displaying EasyFlush as a mark and as a trade name: Poznak Law Firm Ltd EasyFlush ® “The finest plumbing goods and services” *** (home page verbiage) **** EasyFlush Incorporated 123 Success Lane Richville, IL 00000-0000 000-000-0000

21. Can I register my business’s website as a trademark? No. The PTO considers that an Internet domain name is like a street address. However, an Internet domain name can be a mark if it is also used like a mark. Therefore, using an Internet domain name can infringe on someone else’s mark. Example: www.easyflush.com Poznak Law Firm Ltd

22. Why should I register my mark? Registration provides these benefits: Notice to the public, including your customers, clients, and competitors, that you claim ownership of the mark and the exclusive right to use the mark in connection with your goods or services, in your state (IL) or nationwide (PTO). Presumed ownership of the mark. Presumed exclusive right to use the mark in your state (IL) or nationwide (PTO). The mark is presumed non-generic (PTO, after 5 years). The ability to bring a lawsuit in federal court (PTO). The ability to file a PTO registration with the U.S. Customs Service to prevent importation of foreign goods that imitate your mark. The ability to use a PTO registration as a basis to register your mark in foreign countries. Poznak Law Firm Ltd

23. Are there universal symbols that should I use in connection with my mark? Yes. After (but only after) you register your mark with the PTO, you are authorized to place the ® symbol beside your mark, and you should do so. Whether or not you register your mark with the Illinois Secretary of State, you may, and you should, place the TM symbol beside your mark in connection with your sale of goods and the SM symbol beside your mark in connection with your sale of services. Poznak Law Firm Ltd

24. Are there any marks that cannot be registered or that are not eligible for my exclusive use? Yes. Marks that are generic or descriptive of the goods or services for which you are using the mark cannot be registered, and you cannot prevent your competitors from using those types of marks. Poznak Law Firm Ltd

25. What is a generic mark? A generic mark is a mark that names your goods or services. Examples: - Pizza, to sell pizza. - Plumber, to sell plumbing services. Poznak Law Firm Ltd

26. What is a descriptive mark”? A descriptive mark is a mark that describes all or any part of your goods or services, including one or more of its attributes. Examples: - College Humor to sell compilations of college jokes. - Creamy to sell yogurt. Poznak Law Firm Ltd

27. What types of marks are eligible for my exclusive use and can be registered? Marks that are fanciful, arbitrary, or suggestive are eligible for exclusive use and registration. Descriptive marks that have acquired distinctiveness are also eligible. You must prove that, through your use of the mark, purchasers associate your mark with your goods or services. Poznak Law Firm Ltd

28. What is a fanciful mark? A fanciful mark is a mark made-up for sole purpose of selling particular goods or services. In other words, the mark has no meaning except in connection with your goods or services. Examples: - Exxon - Kodak Poznak Law Firm Ltd

29. What is an arbitrary mark? An arbitrary mark is a mark that has a common meaning, but not in connection with your goods or services before you used the mark to sell those goods or services. Examples: - Apple, except for sales of the fruit - Salty, except for sales of products emphasizing that characteristic Poznak Law Firm Ltd

30. What is a suggestive mark? A suggestive mark indicates, but does not describe, the nature or quality of goods or services, so that buyers must use their imaginations to identify the characteristic. Whether your mark is suggestive or descriptive can be uncertain. Examples of suggestive marks: - Speedi Bake, to sell frozen dough - NoBurst, to sell liquid antifreeze - Coppertone, to sell tanning lotion. Another example of a descriptive mark: - Apple Pie to sell potpourri. Poznak Law Firm Ltd

31. The hierarchy of marks, from strongest (i.e., most distinctive) to weakest (i.e., least distinctive): Arbitrary Fanciful Suggestive Descriptive Generic Poznak Law Firm Ltd

32. Are there any other types of marks that I can not register? Yes. Marks that are primarily of geographic significance, laudatory, primarily a surname or identify a living person, scandalous, immoral, disparaging, deceptive, or a foreign word that, when translated, is generic or descriptive or your goods or services. Whether your mark fall under these restrictions can be uncertain. Examples: - Acapulco Gold, to sell tequila, is not immoral although it is also a type of marijuana. - Colorado, to sell goods or services located in Colorado, or implying a connection with Colorado - Jones is primarily surname, while Cotton is not primarily a surname. Poznak Law Firm Ltd

33. Are fanciful marks easier to search and protect from infringement than arbitrary or suggestive marks? Generally, yes. Fanciful marks are more easily searched and protected by claims of dilution or likelihood of confusion because fanciful marks are unique. Poznak Law Firm Ltd

34. How do I register my mark? You register your mark by submitting an application to the Illinois Secretary of State or to the PTO. Your application must correctly identify the class(e) of your goods or services. Your application must correctly and thoroughly describe your goods or services. Your application must have include a of your mark. Illinois: - A specimen for goods is photocopy of an actual product or package label. - A specimen for services is a photocopy of the materials that contain your mark and describe your services, such as a website screen shot or an actual marketing brochure. PTO: - A specimen for goods is a digital image of an actual product or package label. - A specimen for services is a digital image is a copy of the materials that contain your mark and describe your services, such as a website screen shot or a marketing brochure. You may be required to respond to queries from the PTO. Poznak Law Firm Ltd

35. Am I required to maintain my registration? Yes. PTO: Between the fifth and sixth year after registration, and between the ninth and tenth year of registration, and thereafter within one year of every successive ten year period. Illinois: Every five years. Poznak Law Firm Ltd

36. Can I lose the rights to my mark? Yes. There are several ways you can lose the rights to your mark: If you stop using your mark. If you materially change your mark. If you use your mark as a verb, rather than as an adjective. Example as a verb: “Google your proposed trademark to find prior uses.” Example as an adjective: “Use the search engine Google to find prior uses of your proposed trademark.” If you ignore the unlicensed use of your mark by others in your industry, your mark may become generic. Examples of former trademarks that are now generic: escalator, aspirin. If you license the use of your mark by others without quality or nature of the others’ goods or services (called “naked licensing”). Poznak Law Firm Ltd

37. Conclusion: Best to use arbitrary marks. Research the mark before using it. Poznak Law Firm Ltd