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Trademark Law Basics

I. Intellectual Property Law Branches and Their Historical Origins

A. Differences branches of Intellectual Property Law

1. Patent law - protects inventions that are novel, useful, and nonobvious by granting its owner the right to exclude others from making, using, or selling the claimed invention.
2. Copyright law - protects authors of creative works such as books, movies, art from any unauthorized copying, reproduction or distribution of their work. Protects only the expression and not the idea of the work.
3. Trademark law - protects the name or mark associated with the product to which they are attached. A trademark is any word, name, symbol, color or sound that is adopted and used by a company to identify its goods and distinguish them from those manufactured or sold by others. Service mark is the same as a trademark but identifies a service and not a product.

a. Examples of trademarks - Nike, Just Do It, Nike Swoosh design
b. Can be a color - Brown for UPS, Orange label for Veuve Clicquot champagne, Pink for Owens Corning insulation materials
c. Can be a sound - MGM's lion roar, NBC chimes

B. Trademark law origins - consumer protection and society advancement.

1. Trademark law begins in 13th century England to protect consumers against counterfeit goods.
2. In 1870's United States and England set up Trademark Departments granting trademark registrations.

C. Consumer Confusion is the test of trademark infringement.

1. Consumer confusion requires similar trademark and similar product.

a. Delta Airlines, Delta Faucet, Delta Dental can all coexist in the marketplace because different products prevent consumer confusion.
b. Concerned only with similar products to your invention.

II. Choosing a Protectable Brand Name for Your Invention

A. The Spectrum of Trademark Distinctiveness

1. Fanciful trademarks - are "coined" terms that had no meaning before being trademarks. Exs: KODAK, STARBUCKS, VERIZON, POLAROID, EXXON
Arbitrary trademarks - are common words used in a unique way so that the word has no relationship to the product. Exs: APPLE and SUN for computers, AMAZON and YAHOO! For Internet sites, GREY GOOSE for vodka.
2. Suggestive trademarks - indirectly allude to a quality of the product. Exs: PLAYBOY for a men's magazine, 7-11 for a store that was open from 7 a.m. to 11 p.m., JAGUAR and MUSTANG for fast cars.
3. Descriptive trademarks - describe the goods or service they market. Exs: REGISTERINGATRADEMARK.COM for an Internet site that registers trademarks, COMPUTERLAND for a computer store, VISION CENTER for an optics store.

a. Determining whether a trademark is suggestive or descriptive is hard to articulate (9th Circuit). Look to whether competitors need to use the term and whether the primary meaning is descriptive.

4. Generic trademarks - where the term describes a whole class of products.
PERSONAL COMPUTER for a personal computer, MILK for milk.

Trademark Test:

COPPERTONE for suntan oil - Suggestive
DUTCH BOY for paints - Arbitrary
GREYHOUND for bus service-Suggestive
PARK N FLY for airport parking lots - Descriptive
BLUE DIAMOND for nuts - Arbitrary
REEBOK for shoes - Fanciful
ROACH MOTEL for insect traps - Suggestive

B. Trademark Registration Issues

1. Registration grants exclusive rights to use that trademark for that product in America. Because trademark law grants such strong rights, there is a high standard to achieve registration.
2. Only fanciful, arbitrary, and suggestive trademarks are considered inherently distinctive and initially entitled to registration.
3. Descriptive trademarks can achieve registration if they achieve "secondary meaning." "Secondary meaning" occurs when customers come to recognize the particular term as having a second meaning, signifying a particular brand. Requires extensive advertising over long period of time. The descriptive trademark FROSTED MINI WHEATS was able to be registered after years of extensive advertising by Kellogg.
4. Tension between marketing ease of descriptive trademark and strong legal protection of a distinctive trademark. Examples of descriptive vs. suggestive trademarks:

Descriptive:               Suggestive:

PDAs Worldwid               Handspring
Internet Marketing Group               Webwisdom
U.S. Gaming Inc.               Atari

III. Striking a balance - a suggestive trademark can achieve registration and is easier to market than a fanciful or arbitrary trademark.

A. Brainstorming to create a suggestive brand name.

1. Choose a related term from another area such as a different culture, mythology, field of study, etc.

Examples from Greek Mythology for suggestive trademarks:

MERCURY SOFTWARE - for software that speeds communication.
PHOENIX VENTURES - for an investing firm that focuses upon investing in failing companies and reviving these companies.
POISDEON ADVENTURE - for a water slide and ride theme park.
ARETE COACHING - for life coaches ("arete" is the Greek word for "overall excellence").
DIONYSIUS - for a dance club with a wine bar.

2. Use a term that connotes many of the ideas or principles of your company. Example: LEAPFROG for the educational toy manufacturer. LEAPFROG simultaneously conveys two related messages: 1) that LEAPFROG, which is a famous children's game, is entertaining and geared for children; and 2) that utilizing LEAPFROG products will allow your child to "leap ahead" in learning.

3. Truncate or use an acronym rather than a descriptive term. Truncate Exs: ALLEVE for alleviate. Acronym Exs: IBM, UPS

4. Utilize a foreign term that expresses the connotations you want to convey. BON VOYAGE for a travel agency. BON MOT (meaning the perfect word) for an editor. Note that foreign terms are literally translated so this term must be suggestive and not descriptive of your product.

5. Invent a brand name. Utilize the same genius that created your invention for creating your new brand name. Throw a naming party!

IV. Clearing Your Trademark

A. Are you first?

1. Trademark rights are granted to the first to use the trademark and/or first to file a trademark application.
2. Need to search relevant databases to see if similar trademarks marketing a similar product or service exist.
Databases include: Federal trademark database, all 50 states' trademark databases, business directories, Google, domain name registries, etc.
3. You cannot "clear" a mark because you need a trademark lawyer to do this. But you can eliminate some choices.

B. Create several possible product names due to potential infringement issues.

1. Much harder than registering Internet domain name or corporate name.

a. Conflicting trademark does not need to be identical, just similar.
b. Examples of conflicts for trademarks that were not similar include CYCLONE and TORNADO for chain-link fencing, BECK'S BEER and EX BIER for beer, PLAY-DOH and FUNDOUGH for clay.

V. Trademark Costs, Application Timeline and Proper Usage

A. Trademark protection is much cheaper than patent protection.

1. Rough estimate of slightly under $1,000 in legal fees for trademark search and application filing plus government filing fee of $335.
2. Likelihood of achieving registration and not incurring more legal fees as application matures to registration higher when you order a search.

B. Trademark Application Timeline

1. 4-6 months before Trademark Office responds.
2. Generally over one year before registration is granted.

a. Important date is date of filing and dates of use so begin trademark application process ASAP.

C. Proper Trademark Usage

1. Always use Trademark as an adjective modifying a noun.
Exs: LEGO toy blocks, AMSTEL beer

a. Never use a trademark as a verb: not XEROXING a copy but photocopying on a XEROX copier, not ROLLERBLADING, but in-line skating with ROLLERBLADE in-line skates
b. Never use a trademark as a noun: Ride the ESCALATOR, take an ASPIRIN

1. "Genercide" happened to THERMOS, CELLOPHANE, TRAMPOLINE
2. ® vs. TM and SM

a. TM or SM can be used at any time, merely your determination that this is a protectable trademark or service mark. Potential risk of trademark infringement when you use your trademark and include a TM or SM symbol, so "clear" the mark before using these symbols.
b. ® can only be used once the mark has achieved a United States trademark registration.

VII. Other Issues - Dilution and Internet Domain Names

A. Trademark Dilution - lessening of the capacity of a famous mark to identify product. Exs: COCA-COLA Jeans, ROLLS ROYCE software

1. Victoria's Secret vs. Victor's Little Secret - need proof of actual dilution before a dilution claim can be successfully brought.

B. Internet Domain Names - can create trademark rights and liability.

1. Uniform Domain Name Dispute Policy - marks the end of cybersquatting for quick and cheap ($1500 filing fee and low legal fees) resolution to domain name disputes.

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