trademark asset protection

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Trademark Registration for Asset Protection

Katherine SunstromAttorney at Law

ksunstrom@sunstromlaw.com

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What is a trademark?

• A distinctive word, phrase, sign or indicator used by a legal entity to set its products or services apart from others in the mind of the consumer.

• Examples that can be entitled to trademark protection: words, symbols, logos, pictures, smells, sounds, and (arguably) taste and textures.

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What is the purpose of a trademark?

• As stated above, to set yourself and your goods or services apart from others.

• As Tracey has said before, you want to occupy a larger space in the brains of your audience so that they recall you and your goodwill faster and more accurately.– Should be a part of your branding strategy.– Effective branding almost always results in

trademark rights- huzzah!

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How do you get common law trademark protection? What do you get?

• First user.• Consistent use in commerce in conjunction with

goods and services.• Interstate versus Intrastate. • Distinctiveness (more on this later).

• Right to exclude others from confusingly similar use.• Geographic rights.• Target market, channels of trade rights.

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Federal Registration, why do I want one?

• Prevent others from encroaching on your goodwill.• Nation-wide Priority User

– Prevent others from using and registering similar marks

– After 5 years of consistent use; becomes incontestable– Statutory remedies

• Notification- – Constructive notice of your exclusive rights– ® next to your trademark=legitimacy– Deterrent to infringers: “Beware of Dog”

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Federal Registration, why do I want one?

• Becomes a valuable asset for your company– Makes the intangible asset of your company’s

goodwill more concrete.– Can increase your ability to quantify that asset. Can

use comparables.– Allows you to transfer that goodwill via sale or

license for $$.• Domain name protection and internet

advertising. you have almost nothing without a registration.

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Registration Process

1. Availability Search and Opinion Letter– Prevent infringement upon other’s marks– Future defense against “willfulness.”– Deterrent against litigation.

2. Application to the USPTO– Examination– Exchange with Examiners– Registration issues

3. Management of your asset.– Contracts and licenses– Policing your mark– Trademark notices– Periodic filings to keep registration

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Locking up and strengthening Goodwill

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Distinctiveness- a sliding scale

• Fanciful (Kodak)• Arbitrary (FrogDog)• Suggestive (Always Get Texas)• Descriptive (Park N Fly)• Generic (Bar)

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Arbitrary

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Arbitrary

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Suggestive

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Unusual Trademark Registrations

• Sound: – NBC Chimes– Spoken letters “AT&T”– THX “Deep note”– Harley Davidson engine roar- DENIED

• Scent: – Plumeria scent for embroidery thread– Chanel No. 5- DENIED

• Tactile: the word UNDERBERG in braille.• Taste: No known registration but case law suggests it is

possible if strongly distinctive. Orange flavor for cough syrup: rejected.

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Questions?

Katherine L. SunstromAttorney at Law1501-A W. 18th Street #18Houston, Texas 77008713.502.3049ksunstrom@sunstromlaw.com

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CreditsObama photo by Stijen Vogels on flickr and licensed under the Creative

Commons license found at: http://creativecommons.org/licenses/by-nc-sa/2.0/deed.en

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