2.  Presented by:
 Derek Fahey, Esq.
 Fahey Business Law and Intellectual Property

3.  Copyright:
 Protects original works of authorship fixed in any tangible medium of
expression.
 Duration: life of the author plus 70 years (if created after 1978)
 Patent
 Protects any useful, new and non-obvious invention
 Types of patents: design, utility, plant
 Duration: 14 – 20 years depending on the type of patent
 Trademark
 Any word, symbol, name or device used in trade to identify and
distinguish the source of goods.
 BRANDING
 Duration: as long as it is used in commerce in connection with the
product or service.
The Difference Between Trademarks, Copyrights
and Patents

4. Trademark Overview
 Primary function – used for consumers to identify a
good or service with the source of such good or service.
 Consumers expect a uniform quality and standards of
services associated with a trademark.
 One of the purposes of trademarks is to prevent
confusion of the source of the good or service.
 BRANDING

5. Obtaining Trademark rights
 Trademark rights may be obtained at common law
when a business or individual uses a particular mark
to identify or distinguish its goods or services.
 Common law rights can be limited to geographic
location used. If used nationally, then protection is
national. If used only locally, then protection is local.
 First to use the mark has priority to the mark.

6. Spectrum of Distinctiveness
 A mark must de distinctive for it to be protected.
 It must be used to identify and distinguish the source of
a particular good and service
 Two paths for distinctiveness
 Inherently distinctive
 Acquired distinctiveness
 Long time use of a mark with a product comes to be known by
the public as specifically designating that product.
 Example “Fish-fri”

7. Weak vs. Strong Marks
 Descriptive or Generic: words that merely describe
the good or service (Weak mark)
 Example: “Energy Drink” ; “South Florida Title
Loan Company” “Aspirin”
 Suggestive: words that suggest some aspect of the
good or service to which it applies. Requires some
imagination. For example, “Coppertone”.
 Arbitrary or fanciful
 Words that bear no relationship with the type of
product or service to which they apply. For
example, “Apple” for computers. (Strong Mark)

8. What can be Registered as a
Trademark?
 Color
 Sound
 Logo
 Word or phase
 Packaging
 Under trade dress
 Look and feel of something
 Apple Store

9. Exclusions from Registration
 Scandalous, Disparaging and Deceptive marks
 Marks that mislead., e.g., Swiss for watches made in
China.
 Marks using a person’s name without
permission., i.e.“Bo Ball”
 “Redskins” for a football team.
 Marks in similar or same class of goods or services as a
registered mark that are likely to confuse consumers
 Descriptive or generic marks.

10. How to Register a trademark
 Do a trademark search (www.uspto.gov)
 Helps determine the probability of the mark being
registered
 Apply “Likelihood of Confusion” test with marks found in
the search
 Decide on the whether service vs. trademark
 Decide on “intent to use” vs. use based application
 Is there a bona fide use of the mark in
commerce?
 Decide on the class of the goods
 Marks can be protected under more than one
class

11. Benefits of Federally Registered
Trademark
 Enhanced remedies against infringes
 May make it easier to hire a lawyer on contingency
 Nationwide right and protection of the mark
 Benefits in litigation
 Presumption of validity
 May become incontestable
 Enforcement of registered marks by U.S. Customs and
Border Protection

12. When to think about your
Trademark?
NOW!!!!!