Looking to name and brand your business or products? In order to do so, it helps to understand the laws on trademarks. In this presentation from New Leaf Legal, you will learn what qualifies as a trademark under U.S. law and what protections are enforced.
1. No protection over ideas Its all about execution, use determines IP protection
2. source identifier of goods and services Consumer trust and loyalty Consumer perception, can easily ID goods/services they want, consistent quality. Words and design (logos) most common sound, color, packaging possible Thresholds higher for certain types A trademark is NOT: Art just b/c you created it, doesnt mean its a trademark. advertisement
3. Generic: Not protectable Tissue v. Kleenex Never use brand as noun Asprin, Thermos Descriptive Boston Marketing, Electronics Land Possible solutions: Disclaimers, Supplemental w/ secondary meaning Suggestive Boston Market, Circuit City, Haystack Arbitrary Apple Fanciful
4. Other factors: Marketplace impression How do people perceive your mark? Strawberry Fields Tea, cereal fertilizer Culture Color Symbols/gestures Translations (Nova)
5. Class/industry Some space to grow, deference by USPTO When searching: how crowded is your space? Certain words that mean nothing in other industries may be descriptive in your industry i, green, Use in commerce for full reg Specific no ads, alone (no sentence), certain reqs for industries (clothing) Each class, examples w/i class acceptable Perpetual w/ continued use, must check in
6. Registration Exclusivity Nation-wide presumed Basis for intl filing Incontestability (5 yrs) Statutory damages (3x) Intent-to-use Common Law Only via actual and continued use Geo limits TM only Defend rights, not assert.
7. Policing: google alerts, C&D Use it or lose it Be consistent, esp w/ logos. Redesigns need new registrations Slogans What is your IP strategy? For enforcement?
8. Likelihood of confusion (some factors) Consumer perception/actual confusion not about brand owner Side-by-side/initial impression Phonetics, letter changes not strong argument Intent of defendant Channels/customers Sophistication of consumers