Webinar PresentationTrademarks and Trade Dress

The BasicsJune 29, 2010

2WilmerHale

Types of Intellectual Property

Copyright

Patent

Trademark

Trade secret

Right of publicity

Technology transfer contracts, know-how,customer lists, distribution and logisticssystems, etc.

3WilmerHale

What Is a Trademark?

Just as your own name identifies anddistinguishes you, a trademark: Indicates the source or origin of goods or

services Assures consumers of the quality of goods

bearing the mark Creates business goodwill and brand

awareness

4WilmerHale

What Is a Trademark?

A Word

A Logo

A Device

A Slogan

A Package Design

A Personal Name

A Sound

A Scent

A Color

A Shape

A Building

A Numeral

5WilmerHale

What is a Trademark?

Word

Symbol

Slogan JUST DO IT.

Product or packaging design thatidentifies a specific product anddistinguishes it from others in themarketplace

6WilmerHale

Nontraditional Trademarks

Sound

Color

Fragrance

Design of a businessestablishment

7WilmerHale

Goods vs. Services “Trademarks” refer to goods and “service marks” refer

to services

A service mark is any word, name, symbol, device, orany combination, used, or intended to be used, incommerce, to identify and distinguish the services ofone provider from services provided by others, and toindicate the source of the services

8WilmerHale

Other Kinds of Marks

Collective mark

Certification mark

9WilmerHale

Trade Dress

Trade dress is a distinctive, nonfunctionalfeature, which distinguishes a merchant's ormanufacturer's goods or services from those ofanother

Involves the "total image" and can include thecoloring, shape and or the overall packaging ofproducts

10WilmerHale

Trade Dress vs. Trademark Trademarks typically involve a set of words or a

logo

Trade dress includes features such as: size, shape,color or color combinations, or graphics

Trade dress examples include:

– packaging for Wonder Bread– Healthy Choice tray configuration– Happy Meal box– color scheme and shape of IHOP restaurant

11WilmerHale

Trade Dress protection To establish a superior right your trade dress must

indicate or be distinctive towards your business orproduct

Accomplished by showing that the publicassociates your trade dress with a particularsource

12WilmerHale

Which of the Following AreTrademarks?

Thermos

Corn flakes

Saran wrap

Saltine

Krazy glue

Windcheater

Esky

Shredded wheat

Frigidaire

Surround sound

Rollerblade

Frappuccino

Tabasco

13WilmerHale

The Following Marked with ™ or ®Are Trademarks

Thermos® insulateddrink container

Corn flakes

Saran™ wrap

Saltine

Krazy Glue® adhesive

Windcheater® outergarments

Esky® cooler

Shredded wheat

Frigidaire® Refrigerator

Surround sound

Rollerblade® in-lineskates

Frappuccino® coffeedrink

Tabasco® sauce

14WilmerHale

Selecting a Mark

Distinctiveness Spectrum

The more distinctive the mark, the greater its level of legal protectability.

15WilmerHale

Descriptive vs. Suggestive

Suggestive marks are automatically protectableand registrable

Descriptive marks may be protected andregistered only upon a showing of secondarymeaning (acquired distinctiveness)

16WilmerHale

What Is a Company Name, TradeName, or Business Name?

It is the name used by a company in its businessactivities

A trade name cannot be registered as atrademark unless it also functions as atrademark

E.g., Apple Computer, Inc. owns Apple® computers

17WilmerHale

Trademark Availability

A trademark is not available if:

The mark or a confusingly similar mark isalready federally registered or is the subject ofa pending federal registration (assuming thatthe application is ultimately accepted); or

The mark or a confusingly similar mark isalready being used in the same market inconnection with similar goods or services.

18WilmerHale

Trademark Searches

Preliminary USPTO TESS (TrademarkElectronic Search System)www.uspto.gov/trademarks/index.jsp

International search

Country-specific search–Trademark registers (federal and state)–Common-law uses–Internet, domain names–Corporate names

19WilmerHale

How Are Trademark Rights Obtained?

Rights are obtained either:

By registration; or

By use

Note: Corporate registration is not trademarkuse

20WilmerHale

Trademark Registration

Registrability Meets the legal requirements—that is, it is not

generic, not immoral, etc. Marks will not register until there is proof of

use

Availability Does not conflict with prior registrations

Application Procedure State registration (secretary of state) OR

federal registration (USPTO)

21WilmerHale

Why Register - Federal

Right to use the mark in all 50 states

Notice of registration: ®

Provides notice to 3rd parties conductingsearches

Right to bring suit in Federal Court

Right to importation remedies

– Deposit copies of the registration with the UnitedStates Customs Service to prevent importation ofgoods bearing an infringing mark

22WilmerHale

Federal Registration

Online form atwww.uspto.gov/trademarks/index.jsp

Filing Basis

– Use

– Intent to Use

– Identification of goods or services – must be specificenough to identify the nature of the goods or services

– International Class System – match to goods and/orservices

23WilmerHale

Application Prosecution at USPTO

24WilmerHale

State Registration Requires filing in state of interest

– Versus federal registration filed in USPTO to obtaincoverage across all states

Different states have different requirements

– http://www.uspto.gov/web/menu/statetmoffices.html

There is no D.C. trademark law

– Use federal registration for D.C.

– D.C.’s trade name registry can be found at:http://brc.dc.gov/planning/requirements/tradename.asp

25WilmerHale

State Registration

Virginia – Trademark Application

Applicant’s name

Kind of mark (trademark or service)

Date mark first used

Specimen of mark must be attached

http://www.scc.virginia.gov/publicforms/304/tmapp.pdf

26WilmerHale

State vs. Federal Registration Federal registration offers more benefits

– However, federal registration is more extensive, rigorous andtime-consuming

State registration may be a viable alternative ifcompany:

– can't afford federal trademark protection; and

– operates solely within one state and has no plans forexpansion

With growth of Internet and rise in nationwidecommerce, many businesses find they are better offwith federal, as opposed to state registration

27WilmerHale

Foreign Country Registration?

Protects your client’s ability to do business inthat country

In many countries, the first to file and registerowns the rights in the mark

28WilmerHale

Common Law Rights Common law rights arise from actual use of a

mark, not filing an application

– A trademark can be protected by state, federal andcommon law simultaneously

Common law rights bound by geographic areain which product or service is marketed

Protection generally begins only after productor service is available for sale

– Rights can be lost if someone begins commercialsales first

29WilmerHale

Common Law Rights vs. Registration Registration - valid in whole country or state

Registration - priority based on date ofapplication

Registration - “Intent to Use” applicationallows applying for a mark before using it

Registration - gives trademark owners abilityto expand at their own pace

Common law – free and does not requiresubmitting an application

30WilmerHale

Proper Use Use the ™ and ® symbols where appropriate

Always distinguish from surrounding text byusing:– Quotation marks – “Jeep”– Larger-sized print – Jeep– All capital letters – JEEP– Initial capitals – Jeep– Distinctive print – Jeep– Color – Jeep

Develop use standards

31WilmerHale

Loss of Rights

Genericide

Improper assignment

Failure to comply withregistered userrequirements whererequired (statementsof use, renewals, etc.)

Non-use

Improper licensing

Failure to police

Cancellation

32WilmerHale

Avoiding Genericide

Aspirin

Catseye

Cellophane

Dry ice

Escalator

Freeware

Hoover

Kerosene

Trademark rights can be lost

Lanolin

Laundromat

Linoleum

Mimeograph

Pilates

Thermos

Touch-tone

Trampoline

Videotape

Webster's Dictionary

Yo-Yo

Zipper

Generic andno longer

enforceablein U.S.

33WilmerHale

Proper Use — Avoiding Genericide Chrysler subtlety instructs people to use one

of its most valuable trademarks properly:

“Jeep is a registered trademark. Good thing.No telling what kind of jacked-up stationwagons they’d be trying to pass off as Jeepvehicles otherwise. … When headingstraight out into the unknown, it’s good toknow you’re going there in a vehicle that’sbeen heading down that muddy road fromthe beginning. That’s Jeep 4x4. And that’s aheritage no ‘SUV’ can ever stake claim to.”

34WilmerHale

Proper Use – Avoiding Genericide

Always use the mark followed by a noun:e.g., KLEENEX tissue, Q-TIP cotton swabs

Never pluralCorrect: Two DELL computers

Never possessiveCorrect: POST-IT note pads’ quality

Never a verbCorrect: Photocopy a document on a

XEROX copier

35WilmerHale

Friendly Letter

If members of the media misuse the trademarkas a generic term, consider sending a friendlyletter explaining how they misused your markand asking them to use your trademark correctly.

36WilmerHale

Maintaining a Trademark Registration

Continued Use

Renewals

Policing– Third parties’ unauthorized use– Improper use

37WilmerHale

Enforcing a Trademark

Publicly declare your claim of ownership in thetrademark: While registration process is stillpending, put your trademark on all products and/orliterature, and follow the trademark with the TMsuperscript. After the trademark is actuallyregistered, replace the TM superscript with the ®symbol.

Be on the lookout for infringing trademarks: acompetitor’s trademark used on competing goodsor services; a competitor’s trademark that causesconsumer confusion; or a similar trademark usedin the same part of the country or through thesame distribution channels.

38WilmerHale

Enforcing a Trademark If your trademark is infringed, assert your

ownership rights: Send the infringer a “cease anddesist” letter. Attempt to negotiate or mediate thedispute. If necessary, file an infringement lawsuitand seek temporary injunctive relief as well asdamages.

If you have evidence that someone registeredyour mark as an Internet domain name to preventyou from using it for the same purpose, or for thepurpose of selling the domain name back to you,you can file a lawsuit to capture the domain namefor yourself and possibly collect damages. Youcan also, alternatively, seek arbitration under theICANN dispute resolution policy.

39WilmerHale

Consult Your Trademark Counsel

If a competitor misuses the trademark as ageneric term, consult your trademark counselabout whether and how to object to the misuse.

40WilmerHale

QUESTIONS?

We have everything you need to successfully include the United Way of Long Island logo in your marketing and advertisingmaterials: on disk logo files, detailed usage guidelines and examples of incorrect usage. Because proper and consistentuse of logos ensures that the United Way of Long Island’s corporate identity remains intact, we recommend that youcarefully review the usage guidelines before using the logo.

Corporate Identity Standards

General

The most fundamental visual element of a brand identity is its brandmark. the new United Way of Long Island brand-mark signals a change for a new approach to the future while preserving the heritage of our past. The evolution of ourbrandmark is most dramatic in its new configuration. The symbol is now joined together with the United Way namein a permanent, bold alliance. Its holding device is a simple rectangular shape that is unifying and inviolable.

The ordinal components of our traditional brandmark—the rainbow of hope, the hand of support and the person as asymbol of humanity—have been maintained because they are still effective in communicating important United Waybrand characteristics—caring, inspiring, trustworthy and approachable. The changes to these key elements are intendedto express new brand characteristics—innovative, dynamic and results-oriented—characteristics that we need to help usachieve our community impact mission.

Use only United Way of Long Island’s approved colors and artwork. See the specific guidelines in the ColorSpecification section.

Use correct positioning for United Way logo and do not seperate the brandmark from the Long Island name. Seespecific guidelines for the logo in the Incorrect Usage section.

Never use United Way of Long Island’s logo to represent the words in text, whether it appears in a headline or body copy.

When used online, each United Way of Long Island’s logo must be an active link to http://www.unitedwayli.org

Important

Remember to submit advertising and marketing collateral materials using the United Way of Long Islands logoto United Way of Long Island’s Marketing & Communications Department for its review and written approvalbefore release or publication. Contact Marlee Miller at 631.940.3709 or mmiller@unitedwayli.org

Corporate Identity Standards

The shape, color and configuration of United Way of Long Island’s logo and logotype should never be altered in anyway. Although the examples below do not represent every misuse, they illustrate some common misuses that must beavoided when reproducing United Way of Long Island’s logo and logotype. To ensure correct reproduction of the logoand logotype, begin by reviewing these basic guidelines. Then choose the appropriate logo and logotype from theapproved digital artwork.

Do not alter the United Way of Long Island logo in any way. Do not combine United Way’s logo with other words or graphics to create new logos. Do not show words separate from brandmark.Do not use United Way’s logo as part of a word or slogan

Incorrect Usage

Do not place United Way of Long Island’s logo on an angle; it must be square with the edges of the document or object.

Do not stretch United Way of Long Island’s logo in any one direction, logo must stay the same proportions as provided.

United Way of Long Island’s logo is an important part of our corporate image. By using it properly and consis-tently, you ensure that our strong corporate identity remains intact.

United Way of Long Island

United Way of Long Island

Corporate Identity Standards

United Way of Long Island’s Primary Color Palette

PMS 287

PMS 179

PMS 143

PMS 659

Process Black

Color SpecificationRGB Values

CMYK Values

Blue PMS 287Red PMS 179Yellow Gold PMS 143LLight Blue PMS 659Process Black

When reproducing United Way of Long Island’s logo and logo type in RGB, the following values should be used.

When reproducing United Way of Long Island’s logo and logo type in CMYK, the following values should be used.

R162542551240

G22351501290

B1271001870

Blue PMS 287Red PMS 179Yellow Gold PMS 143LLight Blue PMS 659Process Black

C10000550

M748934400

Y0898600

K00000

Corporate Identity Standards

4 color logo vertical

1 color pms blue vertical

Black & White vertical

4 color logo horizontal

1 color pms blue horizontal

Black & White horizontal

The United Way of long Island logos below are the only accepted and approved logo types available for your use.

United Way of Long Island’s logo is comprised of the two elements illustrated below: The United Way of Long Islandlogo and the United Way of Long Island logotype. The configuration of these two elements have been carefullyconstructed. The size relationship of the elements, the positioning and letter spacing should not be modified.Reproduction should be made only from approved reproduction material's available from United Way of Long Island.

Corporate Identity Standards

United Way of Long Island Fonts

Meta Book RomanMeta Book Italic

Meta BoldMeta Bold Italic

Arial RegularArial Italic

AArriiaall BBoollddAArriiaall BBoolldd IIttaalliicc

Times New Roman RegularTimes New Roman Italic

Times New Roman BoldTimes New Roman Bold Italic

A fourth display font may be used with the approval of United Way of Long Island.

United Way of Long Island Tagline

United Way of Long Island’s Tagline is to be used in one of the two versions below. It is not to be edited or changedin any manner.

Change lives where you live. Give to United Way of Long Island.

Change lives where you live. Give to United Way of Long Island

Option 1

Option 2