Ten Trademark Tips for Biz Owners

Ten Trademark Tips
for Business Owners
December 14, 2012
Presented by
Lindette C. Hassan, Esq.

Ten Trademark Tips for Business Owners
© 2011 Fox Rothschild

What is a Trademark?
 Trademarks identify products or services in the minds
of potential consumers, and distinguish them from the
goods and services of others.

 A service mark is the same as a trademark, except that
it identifies and distinguishes the source of a service
rather than a product. Throughout this presentation, the
terms "trademark" and "mark" refer to both trademarks
and service marks.


Tip #1
 It is highly advisable to protect any trademark
used in connection with a good or service.


Tip # 2
 When deciding to protect a trademark, it
is necessary to determine the level of
protection needed.


Tip # 2 (Cont.)
 Three Levels of Trademark Protection
- 1. Common Law
 No registration needed
 Use required
 Very limited rights


Tip # 2 (Cont.)
- 2. State
 Registration required
 Use required
 Renewable
 Limited rights


Tip # 2 (Cont.)
- 3. Federal
 Registration required
 Covers the entire United States
 Renewable
 Interstate commerce necessary


Tip # 3

 When choosing a trademark for a good
or service, thought should be given to the
strength of the mark.


Tip # 3 (Cont.)
 Types of Trademarks
- Generic
 Ex: Diet Chocolate Fudge Soda
- Descriptive
 Ex: Security Center
- Suggestive
 Ex: Coppertone
- Arbitrary/Fanciful
 Ex: Xerox; Kodak

 Generic<Descriptive<Suggestive<Arbitrary/Fanciful


Tip # 4
 Certain marks cannot be protected or
registered as a trademark.


Tip # 4 (Cont.)
 Marks that cannot be protected as a
Trademark include:
- Generic marks
- Deceptive marks, including deceptively
misdescriptive and geographically
misdescriptive marks
- Morally or culturally offensive marks
- Marks that are confusingly similar or likely to
dilute another mark


Tip # 5
 Certain marks may be registered on the
Principal Register only after they acquire
distinctiveness.


Tip # 5 (Cont.)
 Principal Register
- Presumption of ownership
- Exclusive right to use the mark throughout
the U.S.
- Right to receive treble damages
- After 5 years of registration, the mark is
deemed incontestable


Tip # 5 (Cont.)
 Marks that may be registered on the Principal
Register only after they acquire distinctiveness
include:
- Marks that are descriptive of the products or
services for which they are used, or of a quality or
feature of those products or services
- Marks that are primarily a common surname
- Marks that name a geographic place, including most
U.S. place names and well-known foreign place
names


Tip # 5 (Cont.)
 Supplemental Register
- Secondary Register
- Same rights as common law, with a few
exceptions
 Eligible to use ®
- After 5 years on the Supplemental Register,
eligible to reapply for the Principal Register


Tip # 6

 Make sure the “TM”, “SM”, and ®
symbols are used correctly.


Tip # 6 (Cont.)
 TM – used on unregistered or state-
registered trademarks or service marks
 SM – used on unregistered or state-
registered service marks
 ® - used only on Federally registered
trademarks and service marks


Tip # 7
 If a business owner plans to sell goods or
provide services in interstate commerce,
an Intent-to-Use trademark application is
advisable.


Tip # 7 (Cont.)
 Intent-to-Use Applications
- Federal only
- Allows business owner to “hold place in line”
- Actual use is necessary before registration is
granted


Tip # 8
 It is highly advisable to do a trademark
search when deciding upon the name of
a business.


Tip 8 (Cont.)
 Trade Name – The name under which a
business operates for commercial
purposes
- Ex: Pepsi Co.
 It is possible for a Trade Name to infringe
on a trademark


Tip # 9
 When determining whether a potential
business name or mark is confusingly similar to
another mark, it is necessary to consider:
- Spelling;
- Pronunciation;
- Foreign equivalents;
- Long-form words for any acronym or the meaning of
any abbreviations; and
- The goods or services offered.


Tip # 10
 Trademark protection/registration is only
as good as the business owner wants it
to be.
- USPTO will stop others from trying to
register similar marks
- However, business owners need to be
proactive to protect their marks


QUESTIONS


Contact Information

Lindette C. Hassan, Esq.
610.397.6518
lhassan@foxrothschild.com


Ten Trademark Tips for Biz Owners

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