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TRADEMARK 101Presented by Travis Burch, Burch Dallmann LLP

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TRADEMARK 101The Why

The What

The When

The How Much & So What

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Prevent others from using confusingly similarmark

Presumption that the registered mark is valid

No good faith defense to subsequent users orconfusingly similar mark

Registration cannot be challenged after 5 yrsupon filing an affidavit of use

Can exist forever provided continuous use

$$$$$$$$$

Benefits of Federal Registration

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$275.00One class of goods and services

1

Spend a little more up front to minimize morelater – i.e., knock out search and due diligence

2

$2,500 - $3,000Attorneys’ fees including “knock out” search

3

More if Office Action triggered or oppositionproceedings

4

How Much $

uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

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1 3 5

2 4

Do you want a cease and desist

lettersent on the heels

of your launch

Before launch and marketingmaterials

WHEN

Spend time with branding team

NEXT …

The organic branding should

drivethe legal, not

other way around

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SERVICE MARKany word, name,

symbol, or device, or any combination

thereof used to identify and

distinguish one’s services from

another’s

TRADEMARKany word, name, symbol, or device, or anycombination thereof used to identify and distinguishone’s goods from another’s

COLLECTIVE MARKeither of the above

as applied to members of a cooperative or

association

CERTIFICATION MARKeither of the above as applied to a quality, material, mode of manufacture etc.

WHAT IS A TRADEMARK

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1 GENERIC/MERELY DESCRIPTIVE

2

3 FIRST OR LAST NAMES

Xerox, or ScreenwipesOnly conveys what the

goods are, or some obvious quality or

characteristic

TYPES OF MARKS TO AVOID

GEOGRAPHIC DESCRIPTIONS

Irvine Semiconductors, Orange County Oatmeal

CookiesSmith’s Pizza

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Analysis used by USPTO to determine whether your mark is too close to an existingconfusingly similar mark

DuPont Factors – Is there a likelihood of consumer confusion?

ANALYZING SEARCH RESULTS

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Similarity of overall commercial impression – total look, feel & sound

Similarity of the nature of the goods

Similarity of the established and likely to continuetrade channels

Level of ordinary consumer attention – impulse buy or discriminating buyer

Nature and extent of any actual confusion

DUPONT FACTORS

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Once you get your mark, you must pay the maintenance fees & requisite filings to maintain the mark

Begin Policing the Mark – enforceunauthorized use and check publication of mark applications in the USPTO

SO NOW WHAT

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TRADEMARK 101Presented by Travis BurchBurch Dallmann LLPVisit us at BurchDallmann.com

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