Protect Your Brand
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Transcript of Protect Your Brand
Trademarks for the Small Business Owner
What You Need to Know to Protect Your Brands and Avoid Infringement Lawsuits
Every Business Has a Trademark!
• Embody Qualities and Characteristics of Products/Services
• Consumers Use Trademarks to Identify, Compare, and Distinguish Products/Services
• Trademarks Offer Consumers Assurance of Quality and Consistency (whether good or bad)
• MOST VALUABLE ASSETS – Embody Goodwill and Reputation of the Business
Forming a Corporation or LLC Does Not Protect the Name of the Business!
• Forming a Corporation or LLC Provides Limited Liability
• Some Companies Use Their Corporate Names as a Trademark (e.g. McDonald’s and Dell).
• But Some Don’t (e.g. Doctor’s Associates, Inc.)
• Fictitious Name Registrations ≠ Trademark Protection
What is a Trademark?
• Names• Logos• Slogans• Taglines• Characters• Symbols• Colors• Sounds
Used to Identify and Distinguish Products/Services and to Indicate the Source of Products/Services
Examples of Famous Trademarks
How Do You Acquire Trademark Rights?
• Just Use It!
• Acquire “Common Law” Rights Where Trademark is Used
• Trademark Rights Can Last Forever
• Federal Registration with the United States Patent and Trademark Office Acknowledges and Enhances Prior-Acquired Rights
How Strong is Your Trademark?
• Trademarks are Categorized By Their Strength
• Stronger Trademarks = Broader Protection
• Categories of Trademarks:
GenericDescriptive (BANK OF AMERICA, SPORTS ILLUSTRATED)Suggestive (JAGUAR, GREYHOUND, COPPERTONE)Coined and Arbitrary
Why Perform a Trademark Search?
• Because You Don’t Want to Be a Dirty Little Infringer
• Because You Don’t Want to Be Sued for Trademark Infringement
• Because You Don’t Want to Risk Losing the Goodwill and Reputation Associated with Your Trademarks
• Because You Want to Know if Your Trademark is Eligible for Federal Registration
Types of Trademark Searches
• Common Law Trademark SearchReveals Trademarks Being Used But Not Registered
• State Trademark SearchReveals Trademarks Registered at the State Level
• Federal Trademark SearchReveals Trademarks Registered with the United States Patent and
Trademark Office
Recommended for ALL Businesses
The Federal Trademark Search
• Conduct “Knockout” Search Yourself at (www.uspto.gov)
This is NOT a Comprehensive Search!
Obvious Conflict = Use at Your Own Risk
No Obvious Conflicts = Hire a Trademark Attorney to Conduct a Comprehensive Federal Search and Issue Legal Opinion
Positive Search Results = Seek Registration of Trademark
Why Should You Register Your Trademark?
• Obtain Exclusive Rights to Use Trademark Nationwide
• Prevents Registration of Confusingly Similar Trademarks
• Advantages in Trademark Infringement Litigation
• Puts World on Constructive Notice of Your Trademark Rights
• Can Prevent Importation of Infringing Products
• Easier to Obtain Trademark Protection in Foreign Countries
• Obtain Cancellation of Infringing Domain Names
• Ability to use the ®
Overview of Trademark Registration Process
• File Trademark Application (www.uspto.gov/trademarks/teas/index.jsp) In Use or Intent-to-Use
• Trademark Examining Attorney Will Review Application in 3-4 Months Approve for Publication Refuse Registration and Issue an “Office Action” – Response Due Within 6 Months
• Trademark Application is Published for Opposition No Opposition and In Use Trademark Application = Certificate of Registration (Rock On!!) No Opposition and Intent-to-Use Trademark Application = Notice of Allowance Opposition Filed = Need to Be Resolved Before Certificate of Registration or Notice of Allowance is Issued
• Prepare and File Statement of Use (Intent-to-Use Application Only) Maximum of 36 Months (3 Years) from Notice of Allowance Date Must File Extension of Time Every Six Months to Keep Application Alive File Statement of Use = Obtain Certificate of Registration (Rock On!!)
• Renewal of Trademark Registration Between the 5th and 6th Year of Registration Between the 9th and 10th Year of Registration Every Subsequent 10 Years
Protecting Your Brands Online
• Purchase Domain Names That Incorporate Your Primary Trademark(s) (e.g. trademark.com, trademark.org, trademark.net, trademark.xxx)
• Conduct a Google Search Every Few Months
• Perform a Federal Trademark Search (www.uspto.gov) Every Few Months
• Reserve Usernames on Twitter, Facebook, and YouTube that Incorporate Your Primary Trademark(s)
• Consider Hiring a Trademark Monitoring Company
What You Should NOT Do
• Purchase Domain Names That Incorporate Your Competitors’ Trademarks
• Adopt, Use, or Attempt to Register Your Competitors’ Trademarks
• Adopt Clipart as a Trademark
• Attempt to Create a False Association or Affiliation with Another Business
• Delay Protecting and Registering Your Most Valuable Trademarks
• Adopt a Trademark Without Clearing It First
• Send Cease and Desist Notices Without Knowing All the Facts
• Present False or Misleading Information in Your Trademark Application (purposely or accidentally)
• Ignore or Take Lightly Allegations of Trademark Infringement
THANK YOU!