Explores naming (company, trade or business), domain name registration, what constitutes a trademark, selecting a trademark, trademark availability, and registering trademarks.

1. WilmerHale Brown Bag Lunch Series:
Trademarks – The Basics
March 28, 2012
Attorney Advertising

2. What Is a Company Name, Trade Name, or
Business Name?

It is the name used by a company in its business
activities

A trade name cannot be registered as a trademark
unless it also functions as a trademark
E.g., Apple Computer, Inc. owns Apple®
computers
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3. Domain Name Registration (URL)

Registrar does not clear use of name

Use of domain name is not trademark use

Should independently search to avoid third party
action
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4. What Is a Trademark?
Just as your own name identifies and distinguishes
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
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5. What Is a Trademark?
 Word
 Symbol
 Slogan
JUST DO IT.
 Product or packaging design that identifies
a specific product and distinguishes it
from others in the marketplace
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6. Selecting a Mark
less distinctive
Generic
Descriptive
more distinctive
Suggestive
Arbitrary
Fanciful
CARPET
CLEANING
COMPANY
The more distinctive the mark, the greater its level of legal protectability
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7. Descriptive vs. Suggestive

Suggestive marks are automatically protectable
and registrable

Descriptive marks may be protected and
registered only upon a showing of secondary
meaning (acquired distinctiveness)
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8. Trademark Availability
A trademark is not available if:

The mark or confusingly similar mark is already
federally registered or is the subject of a pending
federal registration (assuming that the application
is ultimately accepted); or

The mark or confusingly similar mark is already
being used in the same market in connection with
similar goods or services.
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9. Trademark Searches

Preliminary USPTO TESS (Trademark Electronic
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
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10. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP
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11. How Are Trademark Rights Obtained?
Rights are obtained either:

By registration; or

By use

Note: Corporate registration is not trademark use
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12. Why Register – Federal
Right to use the mark in all 50 sates
 Notice of registration:
®
 Provides notice to 3rd parties conducting searches
 Right to bring suit in Federal Court
 Right to importation remedies
– Deposit copies of the registration with the United States
Customs Service to prevent importation of goods bearing an
infringing mark
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13. Federal Registration

Online form at
www.uspto.gov/trademarks/index.jsp

Filing Basis
–
Use
–
Intent to Use
–
Identification of goods or services – must be specific
enough to identify the nature of the goods or services
–
International Class System – match to goods and/or
services
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Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to
keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP
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