1. Trademarks for the Small Business Owner
What You Need to Know to Protect Your
Brands and Avoid Infringement Lawsuits
2. Every Business Has a Trademark!
• Embody Qualities and Characteristics of Products/Services
• Consumers Use Trademarks to Identify, Compare, and Distinguish
Products/Services
• Trademarks Offer Consumers Assurance of Quality and Consistency
(whether good or bad)
• MOST VALUABLE ASSETS – Embody Goodwill and Reputation of the
Business
3. Forming a Corporation or LLC Does Not
Protect the Name of the Business!
• Forming a Corporation or LLC Provides Limited Liability
• Some Companies Use Their Corporate Names as a Trademark (e.g.
McDonald’s and Dell).
• But Some Don’t (e.g. Doctor’s Associates, Inc.)
• Fictitious Name Registrations ≠ Trademark Protection
4. What is a Trademark?
• Names
• Logos
• Slogans
• Taglines
• Characters
• Symbols
• Colors
• Sounds
Used to Identify and Distinguish Products/Services and to Indicate the Source
of Products/Services
6. How Do You Acquire Trademark Rights?
• Just Use It!
• Acquire “Common Law” Rights Where Trademark is Used
• Trademark Rights Can Last Forever
• Federal Registration with the United States Patent and Trademark Office
Acknowledges and Enhances Prior-Acquired Rights
7. How Strong is Your Trademark?
• Trademarks are Categorized By Their Strength
• Stronger Trademarks = Broader Protection
• Categories of Trademarks:
Generic
Descriptive (BANK OF AMERICA, SPORTS ILLUSTRATED)
Suggestive (JAGUAR, GREYHOUND, COPPERTONE)
Coined and Arbitrary
8. Why Perform a Trademark Search?
• Because You Don’t Want to Be a Dirty Little Infringer
• Because You Don’t Want to Be Sued for Trademark Infringement
• Because You Don’t Want to Risk Losing the Goodwill and Reputation
Associated with Your Trademarks
• Because You Want to Know if Your Trademark is Eligible for Federal
Registration
9. Types of Trademark Searches
• Common Law Trademark Search
Reveals Trademarks Being Used But Not Registered
• State Trademark Search
Reveals Trademarks Registered at the State Level
• Federal Trademark Search
Reveals Trademarks Registered with the United States Patent and
Trademark Office
Recommended for ALL Businesses
10. The Federal Trademark Search
• Conduct “Knockout” Search Yourself at (www.uspto.gov)
This is NOT a Comprehensive Search!
Obvious Conflict = Use at Your Own Risk
No Obvious Conflicts = Hire a Trademark Attorney to Conduct a
Comprehensive Federal Search and Issue Legal Opinion
Positive Search Results = Seek Registration of Trademark
11. Why Should You Register Your Trademark?
• Obtain Exclusive Rights to Use Trademark Nationwide
• Prevents Registration of Confusingly Similar Trademarks
• Advantages in Trademark Infringement Litigation
• Puts World on Constructive Notice of Your Trademark Rights
• Can Prevent Importation of Infringing Products
• Easier to Obtain Trademark Protection in Foreign Countries
• Obtain Cancellation of Infringing Domain Names
• Ability to use the ®
12. Overview of Trademark Registration Process
• File Trademark Application (www.uspto.gov/trademarks/teas/index.jsp)
In Use or Intent-to-Use
• Trademark Examining Attorney Will Review Application in 3-4 Months
Approve for Publication
Refuse Registration and Issue an “Office Action” – Response Due Within 6 Months
• Trademark Application is Published for Opposition
No Opposition and In Use Trademark Application = Certificate of Registration (Rock On!!)
No Opposition and Intent-to-Use Trademark Application = Notice of Allowance
Opposition Filed = Need to Be Resolved Before Certificate of Registration or Notice of Allowance is Issued
• Prepare and File Statement of Use (Intent-to-Use Application Only)
Maximum of 36 Months (3 Years) from Notice of Allowance Date
Must File Extension of Time Every Six Months to Keep Application Alive
File Statement of Use = Obtain Certificate of Registration (Rock On!!)
• Renewal of Trademark Registration
Between the 5th and 6th Year of Registration
Between the 9th and 10th Year of Registration
Every Subsequent 10 Years
13. Protecting Your Brands Online
• Purchase Domain Names That Incorporate Your Primary Trademark(s)
(e.g. trademark.com, trademark.org, trademark.net, trademark.xxx)
• Conduct a Google Search Every Few Months
• Perform a Federal Trademark Search (www.uspto.gov) Every Few Months
• Reserve Usernames on Twitter, Facebook, and YouTube that Incorporate
Your Primary Trademark(s)
• Consider Hiring a Trademark Monitoring Company
14. What You Should NOT Do
• Purchase Domain Names That Incorporate Your Competitors’ Trademarks
• Adopt, Use, or Attempt to Register Your Competitors’ Trademarks
• Adopt Clipart as a Trademark
• Attempt to Create a False Association or Affiliation with Another Business
• Delay Protecting and Registering Your Most Valuable Trademarks
• Adopt a Trademark Without Clearing It First
• Send Cease and Desist Notices Without Knowing All the Facts
• Present False or Misleading Information in Your Trademark Application (purposely or
accidentally)
• Ignore or Take Lightly Allegations of Trademark Infringement