trademarks: practical considerations for small business owners
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Trademarks & Copyright
Practical Considerations for Small
Business Owners
DC Spotter MeetupDecember 4, 2011
Trademark Basics
A trademark identifies and distinguishes a specific product from others in the marketplace.
Identifies the source of origin of goods or services
Helps guarantee the quality of goods bearing the mark
Creates and maintains a demand for the product
Used as a marketing tool to build a brand
WHAT CAN YOU TRADEMARK? Words, Names, Symbols, Slogans, Designs, Devices, Sounds, Colors, Domains
Amount of protection depends on level of distinctiveness:
Fanciful/Coined (made up word) – e.g. Kodak
Arbitrary (no obvious relation) – e.g. Dove
Suggestive – e.g. Coppertone
Descriptive – e.g. Spray & Wash
Generic - Bleach
WHAT CAN YOU TRADEMARK? Words, Names, Symbols, Slogans, Designs, Devices, Sounds, Colors, Domains
Amount of protection depends on level of distinctiveness:
Fanciful/Coined (made up word) – e.g. Kodak
Arbitrary (no obvious relation) – e.g. Dove
Suggestive – e.g. Coppertone
Descriptive – e.g. Spray & Wash
Generic - Bleach
Obtaining Rights
Common law rights through use in the actual sale or advertising of a service or product
Trademark protection nationwide through federal registration (USPTO) as well as statewide protection (Secretary of State).
USPTO fee is $325-$375 and takes 18-24 months without opposition
Benefits of Federal Registration
Presumption & evidence of ownership and date of use
Access to federal courts and statutory remedies
Use of the
Must file in one of 45 international classifications for goods & services
1B Intent to Use registration also available for trademarks not currently in commercial use
“Eat Mor Chickin”
Chick-fil-A Eat More Kale
Overprotection
Folk Artist began printing t-shirts to laud benefits of local agriculture
Artist files trademark application to protect business from copycats
Chik-fil-A sends cease-and-desist letter claiming likelihood of confusion 5 years earlier
Threats of lawsuits as deterrence
Trademarks not an absolute protection against legal action
Need to defend TM usage to maintain rights
Likelihood of Confusion Analysis (Sleekcraft)
Strength of the mark
Proximity of the goods
Similarity of the marks
Evidence of actual confusion
Marketing channels used
Type of goods and degree of care likely to be exercised by the purchaser
Defendant’s intent in selecting the mark
Likelihood of expansion of the product lines
“Tiger Blood”
Charlie Sheen Tiger’s Blood
Cashing in?
19 live registrations for “Tiger Blood” or variations like “Tiger’s Blood”
2008 1A “Tigers Blood” for Syrups for making soft drinks
2010 1A “Tiger’s Blood” for Tobacco
2011 1A “TigerBlood” for Dietary supplemental drinks (3/6/2011)
11 1B Intent to Use applications, 2 abandoned
Catch phrases can qualify as trade marks
Popularity of catch phrase does not necessarily ensure business success
Low barrier to entry and high enforcement cost reduces business value
Search Words
Key Words
AdWords service where advertisers bid to use keywords that may be proprietary brand names
Object to divert traffic on specifically targeted consumers
No major ruling against Google on a lawsuit regarding trademarked keywords (e.g. Rosetta v. Google)
AdWord keyword may constitute “use” in commerce
Must still prove likelihood of confusion
Google nearly immune
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