TrademarksWhat, When, Where, and Why

About Your Speaker

Andrew L. Eisenberg

- Partner - Lee & Hayes, PLLC

- Former General Counsel – Audiotoinq, Inc.

- Registered Patent Attorney with the USPTO

- Named Inventor on 3 Issued Patents

- University of Michigan – B.S.E

- University of Notre Dame – J.D.

@andreweisenberg

P 512.456.5140 | C 248.895.584011501 Alterra Parkway, Suite 450 | Austin, Texas 78758

Why IP is Important

S&P 500 S&P 500

1970

Intangible

Today

Intangible

Tangible

Tangible

– Identifier in Commerce

– Characters, Symbols,

Words, Phrases, Slogans,

Images, Design Elements,

Sounds, Scents, Shapes

What is a Trademark

-Trademark Search - (USPTO.gov)- Google

- Domain Name

- Form the Entity - (Corporation, LLC, Partnership, …)

- Graphic Designs

Before Filing

– Trademark

– Service Mark

– Registered Mark

Types

TM

SM

®

- Word Mark

- Stylized Design

- Trade Dress

Categories

Scope

- Geographic

- Types of Goods or Services

- Intent to Use or Use

- Description of the Mark

- Classification (45 IC)- 1-34 Goods- 35-45 Services

- Specimen(s)

- Description of Goods

Your Application

Use – Timing

- Day 1 - File Use Application

- 4-8 Months - Rejection or Allowance- 3-6 Months Per Rejection

- 1 Month- Publication in Official Gazette

- 30 Day - Opposition Period

- 1 Month - Issuance

Intent to Use – Timing

- Day 1

- File Intent to Use Application

- 6 Months

- File Statement of Use

- (e.g., Specimens)

- File Extension

- 5 Available

- 6 Months Each

- Continued Use- Between 5th and 6th

- Section 9 Renewal (Every 10 years)- Continued Use- Fee

- Duty to Enforce

- Generic Mark

Maintaining the Mark

- Scope

- Confusingly Similar

- Cease and Desist Letters

Enforcement

- Company Name and Logo

- Product Names

- Branding

- Packaging / Product

What to Trademark

Traditional Example

V.

Other Examples and Uses

Title: Intellectual Property and Startups – Gold or Fool’s GoldDate and Location: July 2015 – Bellagio Las VegasSummary: Andrew will discuss the pros and cons of planning, obtaining, and maintaining intellectual property as it relates to both high and low tech startups. We will also discuss the benefits and tradeoffs associated with allocating hard earned investment dollars towards IP opposed to other growing business needs. During the conversation, Andrew will propose several models for structuring a startup's intellectual property and lead a discussion relating the different models to different industries.

Title: Trademarks Mentor Session Date and Location: March 14 5:00pm – Courtyard Marriott Brazos I 300 E 4th St.Summary: Mentor Sessions enable less-established new professionals to gain seven minutes of direct one-on-one career-related council from a more established / more experienced new professional.

Title: Who REALLY Is Your CustomerDate and Location: February 17 5:30pm – 7600 Brunet Rd # 130 Austin TX 78757Summary: The presentation is by Ron Stone, marketing consultant and Chief Marketing Office at Exterminate Cancer. Rob will lead a discussion to address how an effective business model nurtures customer relationships to growrevenue opportunities. Are you a commodity or strategic partner? There is a need for managing a consistent buying process for the target customers. How do you manage initial adoption and grow ideas into broad acceptance with customer value and your meaningful revenue stream?

Questions?