Trademark process

A brand identity that is distinctive and differentiated from its competitors will always help a client legally protect this valuable and critical asset. Almost anything that serves to distinguish products or services from those of a competitor can serve as a trademark. Names, symbols, logotypes, taglines, slogans, packaging and product design, color, and sound are all brand identity assets that can be registered with the federal government and protected from future litigation. Federal registration is in place to ensure that the consumer is not confused or misled by trademarks that are too similar. The government agency responsible is called the U.S. Patent and Trademark Office (USPTO). Trademarks are always registered within industry classes, of which there are forty-five, and may be registered in more than one class. Intellectual property is the name of the legal discipline that specializes in providing the broadest scope of protection for brand identity assets. Intellectual property assets also include copyrights and patents. There are different points in the brand identity process when research is conducted to determine whether there are any conflicting marks, names, or taglines. The various types of searches include common-law, federal, and state. Experienced legal counsel is needed to assess the risk of trademark infringement.

A distinctive identity is worth nothing unless you can protect it.

Roberta Jacobs-Meadway

Eckert Seamans

PROCESS: TRADEMARK SEARCH AND REGISTRATION

> > > > Establish legal needs Establish legal resources Decide on type of search

Determine what needs to be protected: name, symbol, logotype, product design. Determine type of registration: federal, state, country. Identify key dates. Identify any regulatory constraints. Determine industry class(es). Assign search responsibilities. Set up documentation system. Identify client legal counsel. Identify intellectual property lawyer. Review other proprietary assets. Research search services. Common-law (anyone can conduct) Short screening (level 1) Comprehensive Visual (for symbols, package, products) Conduct preliminary research

Determine quickly other ownership. Search domain registration sites, newspapers, search engines, telephone directories. Create short list for comprehensive search.

Myths Once you register a trademark, you own it forever and for everything. Registering a domain name offers legal protection. We can save money if we conduct the search ourselves.

By the end of 2001, the USPTO had 1,063,164 active registrations for trademarks.

Brand identity legal basics

The more differentiated an identity is from those of its competitors, the easier it is to protect from a legal perspective.

Registering a mark gives clients extra rights and the broadest scope of protection. Although trademark rights may be established by actual use, federal registration ultimately secures more benefits in trademark infringement.

Registration is done at the federal and state levels. State registrations are usually less expensive than federal registrations but are more subject to challenge.

Protection for marks in other countries must be sought country by country since legal protection differs from country to country.

An individual, a corporation, a joint venture, or a partnership can own a trademark. A trademark cannot have two independent owners. In the case of litigation, defendants’ failure to do a competent search may be evidence of bad faith.

Intellectual property is a specialty, and identifying a lawyer who has experience in this is critical. Anyone can search the USPTO or other databases on the web for federal registrations, but lawyers are trained to assess the risk of a brand identity strategy.

Certain industries, such as the financial industry, require state registrations with designated commissioners for product names that are sold nationally. What works in one state will not necessarily work in another.

Mergers usually have their own set of requirements that affect information sharing. Parties may request to restrict access to certain documents.

® TM SM

® denotes a registered trademark, and may only be used when marks have been federally registered. TM is used to alert the public and does not require filing federal applications. It means trademark, which is a claim of ownership for goods and packaging. SM means service mark and refers to a unique service. This appears on any form of advertising and promotional literature. It does not require filing federal registration.

> > > Conduct comprehensive research Conduct registration

Identify comprehensive database resources for naming, symbols, taglines, trade dress (package design), product design, color, sound. Conduct and review searches. Determine availability. Choose what to eliminate or contest. Finalize list of registrations. Create documents as required. Federal State Country Monitor and educate

Develop plan to monitor intellectual property assets. Conduct annual intellectual property audits. Educate employees and vendors. Publish standards that clarify proper usage. Make it easy to adhere to legal usage.