travis burch-lunch & learn presentation march 18, 2016
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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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