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!