Trademarks & Copyright

Practical Considerations for Small

Business Owners

DC Spotter MeetupDecember 4, 2011

Trademark Basics

A trademark identifies and distinguishes a specific product from others in the marketplace.

Identifies the source of origin of goods or services

Helps guarantee the quality of goods bearing the mark

Creates and maintains a demand for the product

Used as a marketing tool to build a brand

WHAT CAN YOU TRADEMARK? Words, Names, Symbols, Slogans, Designs, Devices, Sounds, Colors, Domains

Amount of protection depends on level of distinctiveness:

Fanciful/Coined (made up word) – e.g. Kodak

Arbitrary (no obvious relation) – e.g. Dove

Suggestive – e.g. Coppertone

Descriptive – e.g. Spray & Wash

Generic - Bleach

WHAT CAN YOU TRADEMARK? Words, Names, Symbols, Slogans, Designs, Devices, Sounds, Colors, Domains

Amount of protection depends on level of distinctiveness:

Fanciful/Coined (made up word) – e.g. Kodak

Arbitrary (no obvious relation) – e.g. Dove

Suggestive – e.g. Coppertone

Descriptive – e.g. Spray & Wash

Generic - Bleach

Obtaining Rights

Common law rights through use in the actual sale or advertising of a service or product

Trademark protection nationwide through federal registration (USPTO) as well as statewide protection (Secretary of State).

USPTO fee is $325-$375 and takes 18-24 months without opposition

Benefits of Federal Registration

Presumption & evidence of ownership and date of use

Access to federal courts and statutory remedies

Use of the

Must file in one of 45 international classifications for goods & services

1B Intent to Use registration also available for trademarks not currently in commercial use

“Eat Mor Chickin”

Chick-fil-A Eat More Kale

Overprotection

Folk Artist began printing t-shirts to laud benefits of local agriculture

Artist files trademark application to protect business from copycats

Chik-fil-A sends cease-and-desist letter claiming likelihood of confusion 5 years earlier

Threats of lawsuits as deterrence

Trademarks not an absolute protection against legal action

Need to defend TM usage to maintain rights

Likelihood of Confusion Analysis (Sleekcraft)

Strength of the mark

Proximity of the goods

Similarity of the marks

Evidence of actual confusion

Marketing channels used

Type of goods and degree of care likely to be exercised by the purchaser

Defendant’s intent in selecting the mark

Likelihood of expansion of the product lines

“Tiger Blood”

Charlie Sheen Tiger’s Blood

Cashing in?

19 live registrations for “Tiger Blood” or variations like “Tiger’s Blood”

2008 1A “Tigers Blood” for Syrups for making soft drinks

2010 1A “Tiger’s Blood” for Tobacco

2011 1A “TigerBlood” for Dietary supplemental drinks (3/6/2011)

11 1B Intent to Use applications, 2 abandoned

Catch phrases can qualify as trade marks

Popularity of catch phrase does not necessarily ensure business success

Low barrier to entry and high enforcement cost reduces business value

Search Words

Key Words

AdWords service where advertisers bid to use keywords that may be proprietary brand names

Object to divert traffic on specifically targeted consumers

No major ruling against Google on a lawsuit regarding trademarked keywords (e.g. Rosetta v. Google)

AdWord keyword may constitute “use” in commerce

Must still prove likelihood of confusion

Google nearly immune