# Presentation: 182552

## Trademarks:Identifying & Protecting Your Rights

**John Rodriguez**
**Attorney-Advisor**
**Office of International Relations**
**U.S. Patent and Trademark Office**

**Conference on Intellectual Property in the Global Marketplace**

## A trademark serves to identify you and your goods/services to your customers.
A trademark enables customers to distinguish you from your competitors.

**A trademark enables customers to distinguish you from your competitors.**

**Why are Trademarks Important?**

## A word, phrase, symbol or design, or a combination of words, phrases, symbols or designs that identifies and distinguishes the source of the goods or services of one party from those of others.  Even colors, smells and sounds may be trademarks in the U.S. (and in some other countries).   

**What is a Trademark?**

**Examples of Trademarks**

**Plop, plop, fizz, fizz, oh what a relief it is!**
**We bring good things to life.**

**Notes:**
NOTE TO 6K:
Is it possible to arrange the objects in this slide to ensure that the “Plop, plop” mark and the “We bring” mark each appear on one line, that is, are not broken into two lines?

## 
Rebirth
Breveté (stylized)
Vanish

**Rebirth**
**Breveté**** (stylized)**
**Vanish**

**Possible Names for a New Anti-Aging Cream**

**Notes:**
NOTE TO 6K:
On righthand side of screen, please insert picture of bottle for cream (copy of bottle withOUT any name on it).  

## Breveté is the Soul of Lit-Up Skin.
A Brief Moment on the Fingertips Erases Years from the Complexion.
Beauty is Brief...Breveté  is Forever.
A Bit of Breveté and Brand New Skin.

**A Brief Moment on the Fingertips Erases Years from the Complexion.**
**Beauty is Brief...****Breveté****  is Forever.**
**A Bit of ****Breveté**** and Brand New Skin.**

**Possible Slogans**

## Can a Company Use Any Word or Phrase and Have Trademark Protection?

**Fanciful or Arbitrary **
**Words**
** ****EXXON**

**Source Indicating**
**  ****Capacity**
**Spectrum**

**No Source **
**Identifying **
**Capacity**

**Not Inherently **
**Distinctive**
**Can Acquire**
** ****Distinctiveness**

**Inherently **
**Distinctive**

**Generic **
**SODA**

**Merely Descriptive**
**CHOCOLATE FUDGE**

**Suggestive**
**SUNKIST**

**Can a Company Use Any Word or Phrase and Have Trademark Protection?**

**Notes:**
NOTE TO 6K:
Can you redraw the spectrum to reverse it, i.e., “no source identifying capacity” starting on the left, etc.  Also, I would put the “no source identifying capacity” in one color, the “not inherently distinctive” in a second color, and the 2 “inherently distinctive” in a third color – kind of like a rainbow!

## To lessen the risk that it could violate another company’s trademark rights, a business needs to determine whether another business is already using a trademark that is identical or similar to the one it wants to use, for the same or related goods or services.  

**Why Should a Business do a Trademark Search Before Filing?**

**Notes:**
NOTE TO 6K:
Place a box around the text to draw attention to it.

## Avoid having to change your mark – in every place it appears.
Avoid having to recall existing product with the infringing mark.  
Avoid having to destroy existing product with the infringing mark.
Avoid being held liable for damages to the owner of the mark – and possibly even attorney’s fees.

**Avoid having to recall existing product with the infringing mark.  **
**Avoid having to destroy existing product with the infringing mark.**
**Avoid being held liable for damages to the owner of the mark – and possibly even attorney’s fees.**

**Conducting a Search Can Save a Company Time, Money and Grief! **

**Notes:**
Note to 6K:
Could you bring in each bullet one at a time, with each appearing in red, and perhaps insert a “danger sign” or sound?

## How do I find out whether the same or similar mark is federally registered or the subject of a pending TM application for registration for the same or related goods/services?
By performing a search, free of charge, using the Trademark Electronic Search System (TESS) at the USPTO Web site  www.uspto.gov 

**By performing a search, free of charge, using the Trademark Electronic Search System (TESS) at the USPTO Web site  ****www.uspto.gov**** **
**  **

**Searching! The Knock-Out Search****USPTO – WHOIS – WEB **

**Notes:**
NOTE TO 6K: 
Can you put website addresses in something that can be SEEN by the audience?  This color, above, does not show up.

## www.uspto.gov

## Welcome to TESS!

**Welcome to TESS!**

## Enter the Words or Phrases You Want to Search...

**Enter the Words or Phrases You Want to Search...**

## Designs also are registrable and should be searched.
For composite marks consisting of a word and a design element, each element – word and design – should be searched. 

**Designs also are registrable and should be searched.**
**For composite marks consisting of a word and a design element, each element – word **_**and**_** design – should be searched. **

**Searching...designs!**

**Notes:**
NOTE TO 6K:
On lefthand side of slide, insert our Brevete bottle with Brevete name on bottle.  The bottle with color.

## If it is being used as a trademark or service mark, e.g., acting as an indicator of source for the goods or services.
Also, there must be a distinctive portion in the domain name.
But if your proposed mark is being used as a domain name, you may want to select another mark.  

**Also, there must be a distinctive portion in the domain name.**
**But if your proposed mark is being used as a domain name, you may want to select another mark.  **

**www.trademark.com**

**Can an Internet Domain Name be Registered as a Trademark?**

**Notes:**
NOTE TO 6K:
Could you put “trademark.com” in the lower righthand corner (to illustrate what an internet domain name is).

## Searching! The Knock-Out SearchUSPTO – WHOIS – WEB 

**Searching! The Knock-Out Search****USPTO – WHOIS – WEB **

## Searching! The Knock-Out SearchUSPTO – WHOIS – WEB 

**Searching! The Knock-Out Search****USPTO – WHOIS – WEB **

## Common Law - unregistered
State Registration – the “truly local”
Federal Registration® - interstate 
Other Federal Statutes
Smokey Bear
Woodsy Owl

**State Registration – the “truly local”**
**Federal Registration® - interstate **
**Other Federal Statutes**
**Smokey Bear**
**Woodsy Owl**
**	**

**Types of Trademark Protection in the U.S.**

## Not required, because trademark rights (in the U.S.) arise from use on or in connection with product or service, BUT... 
There are advantages to having a federal trademark registration.

**There are ****advantages**** to having a federal trademark registration.**

**Does a Company Need to Register its Mark in the U.S.?**

**Notes:**
NOTE to 6K:
Please highlight the word “advantages” in some special manner.

## Constructive notice nationwide of TM owner's claim. 
Evidence of ownership of the trademark.
Jurisdiction of the federal courts may be invoked.
Registration can be used as a basis for obtaining registration in foreign countries.
Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods. 

**Evidence of ownership of the trademark.**
**Jurisdiction of the federal courts may be invoked.**
**Registration can be used as a basis for obtaining registration in foreign countries.**
**Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods. **

**Advantages of Federal Registration**

**Notes:**
NOTE to 6K:Could you replace bullets with arrows pointing to right, please, e.g., ->

## USPTO does not –
Consider trade names.
Consider state registrations.
Consider common law marks.
Consider domain names.
Conducting a “full search” ensures that these other sources of information will be considered in clearing marks.

**Consider trade names.**
**Consider state registrations.**
**Consider common law marks.**
**Consider domain names.**
**Conducting a “full search” ensures that these other sources of information will be considered in clearing marks.**

**USPTO Search – ****Only One Part of the Equation**

## Knock-out searches:  Done!
Full searches:  Done!
Any possible bases for refusal:  ... No!

**Full searches:  Done!**
**Any possible bases for refusal:  ... No!**
**	**

**Almost Ready to File...**

## What’s my basis for filing my application?
Use-based, or
Intent-to-use (must have bona fide intent), or
Foreign application or registration.

**Use-based, or**
**Intent-to-use (must have *****bona fide***** intent), or**
**Foreign application or registration.**

**Almost Ready to File...**

**Notes:**
NOTE to 6K – 
In a set-off box at the bottom of the slide (the box can blink or be put in lights that run around the box – anything that shows that this is a big deal), put:  The advantage of an Intent-to-Use Application:  Your “constructive use date” will be the date of filing, rather than the actual date of first use.  

## What constitutes “use” of a trademark?
What constitutes use in of a trademark in “interstate commerce”?

**What constitutes use in of a trademark in “interstate commerce”?**

**What Constitutes “Use”?**

**Notes:**
NOTE TO 6K:
If possible, please insert the picture of the confused-looking person again, from earlier slide (to illustrate that these concepts are really confusing to folks).

## File an application at the U.S. Patent and Trademark Office! 
You can fill out an application online, check it for completeness, and file it over the Internet using the Trademark Electronic Application System (TEAS) at www.uspto.gov/teas/index.html 

**You can fill out an application online, check it for completeness, and file it over the Internet using the Trademark Electronic Application System (TEAS) at ****www.uspto.gov/teas/index.html**** **

**How do I get a Federal Trademark Registration?**

**Notes:**
NOTE TO 6K – can you put the URL in a different color – this is the way it appears when we type it in, but it cannot be seen by the audience.

## www.uspto.gov

## Application

**Actual date all five required elements of application are received in the Office.**
**Provides protection against applicants         filing after this date.**
_**F**_***ee*****:**** one class fee is required.**
_**A**_***ddress*****:**** a correspondence address is needed.**
_**M**_***ark*****:**** a clear representation of a single mark.**
_**I**_***dentification*****:**** the applicant’s goods or services.**
_**N**_***ame*****:**** the owner of the mark.**

**Application**

**Notes:**
NOTE to 6K - 
FAMIN logo needs to be moved to center of slide.

## Filing fee for paper filings: 
                               VS.
Filing fee for e-filing: 

**                               ****VS.**
**Filing fee for e-filing: **

**Filing Fees or, ****“You do the Math!”**

**$375 per class of              **
**goods/services**
**$325 per class of**
**goods/services **
**(or $275 per class **
**if filed under the *****new***
**TEAS PLUS form!)**

**Notes:**
NOTE to 6K – Can you make this “pop” so that folks see that e-filing is much cheaper and can you put a “vs.” in the center of the screen between the two?

## Welcome to TEAS!

**Welcome to TEAS!**

## In addition to a lower filing fee...
You minimize chances of making a mistake!
You get instant acknowledgement of receipt!
You have 24-hour access to filing information!

**You minimize chances of making a mistake!**
**You get instant acknowledgement of receipt!**
**You have 24-hour access to filing information!**

**Benefits of Filing Online...**

## File Application.
Examination by Trademark Examining  Attorney-Allowed, Amended or Refused.
If Allowed, Notice of Allowance and Publication for opposition in the Official Gazette.  (If Refused, appeal to the TTAB.)
After Publication, Opposition period.
If no Opposition, Registration issued.  

**Examination by Trademark Examining  Attorney-Allowed, Amended or Refused.**
**If Allowed, Notice of Allowance and Publication for opposition in the *****Official Gazette.*****  (If Refused, appeal to the TTAB.)**
**After Publication, Opposition period.**
**If no Opposition, Registration issued.  **

**Examination Process at USPTO**

## Examination:	7 months after filing
		(average pendency)
Registration:	19.5 months after filing

- 		**(average pendency)**
**Registration:****	****19.5 months**** after filing**

**Trademark Timeline****[Times are Approximate]**

## Congratulations!

**TRADEMARK**

**REGISTRATION**

**CERTIFICATE**

**Congratulations!**

**Notes:**
NOTE to 6K - 
Could you add soundclip of clapping?  Also, you’re free to change the “Congratulations” as you see fit to conform to the overall look-and-feel of the slide presentation as a whole.

## Remember!

**Remember!**

**TRADEMARK REGISTRATIONS MUST BE MAINTAINED!**
**Evidence of continued use form – submitted between 5****th**** and 6****th**** year.**
**Renewal form – submitted between 9****th**** and 10****th**** year.**
**EASY FOR COMPANIES TO DO by timely and accurately filing the forms electronically!**

**Notes:**
NOTE to 6K - 
Could you set off the sentence, “Easy for companies to do...” in a box or otherwise, please?  And center box, please?

## No, but, remember, an applicant must comply with all procedural and substantive requirements of the Lanham Trademark Act and Trademark Rules of Practice, even if he or she is not represented by an attorney. 

**Do I Need an Attorney to File My Trademark Application?**

**Notes:**
NOTE to 6K – Can you set off the “Remember” paragraph in some striking way?

## No. “Trademarks are territorial.”
You must search and file for trademark protection in each country in which you want to do business.
However, you may use your application or federal registration as a basis to file one “International Application” under the Madrid Protocol in certain foreign countries... (More to come!)

**You must search and file for trademark protection in each country in which you want to do business.**
**However, you may use your **_**application**_** or **_**federal registration**_** as a basis to file **_**one**_** “International Application” under the Madrid Protocol in certain foreign countries... (More to come!)**

**Is Federal Registration Valid Outside the United States?**

**Notes:**
NOTE to 6K - 
Highlight the basic principle, “Trademarks are territorial.” by setting it off in a box or some other fashion.

## Be proactive in protecting your trademark!
Have you considered registering your mark in “X” country?  
Where market.
Where source products or parts. 
Where plan to expand in foreseeable future.
Defensive registrations against counterfeiters.

**Have you considered registering your mark in “X” country?  **
**Where market.**
**Where source products or parts. **
**Where plan to expand in foreseeable future.**
**Defensive registrations against counterfeiters.**

**Protecting Your Trademarks Abroad**

## Protecting Your Trademarks Abroad

**Protecting Your Trademarks Abroad**

## What is the Madrid Protocol? It is an international trademark filing treaty administered by the World Intellectual Property Organization, WIPO.
The U.S. is a member of the Madrid Protocol.  

**The U.S. is a member of the Madrid Protocol.  **

**Protecting Your Trademarks Abroad:  The Madrid Protocol **

**Notes:**
NOTE TO 6K - 
Could you please insert a globe that revolves, that is, is animated?

## Under the Madrid Protocol, the U.S. TM owner can -
File a single application, in English, at the USPTO Web site, pay in US Dollars, and seek registration in any or all of the countries who are members, as the applicant designates. 
There is no need to file individual applications in each of the other 65 countries.  (Currently, there are 66 members.)

**File a single application, in English, at the USPTO Web site, pay in US Dollars, and seek registration in any or all of the countries who are members, as the applicant designates. **
**There is no need to file individual applications in each of the other 65 countries.  (Currently, there are 66 members.)**

**Benefits to U.S. Companies**

## Under the Madrid Protocol, after rights are granted in any of those countries:
Assignments can be effected by filing a single document with WIPO.
Renewal of all rights can be effected by the payment of a single fee at WIPO.

**Assignments can be effected by filing a single document with WIPO.**
**Renewal of all rights can be effected by the payment of a single fee at WIPO.**

**Benefits to U.S. Companies**

## A “basic application” or “basic registration” in the USPTO.
Payment of Fees: 
USPTO Certification fee of $100.00 
	per class.
International Registration fee(s) designated by the selected country(ies).

**Payment of Fees: **
**USPTO Certification fee of $100.00 **
**	****per class.**
**International Registration fee(s) designated by the selected country(ies).**

**General Requirements Under the Madrid Protocol**

## Distinguish your trademark from surrounding text, e.g., use capital letters or italics.
Use the mark in its proper form.  Do not pluralize it nor make it possessive.  
Use the mark as an adjective and couple it with a descriptive or generic term, e.g., a Xerox copy. 
Not as a noun, e.g., use “copy”, not “Xerox”.    
Not as a verb, e.g., use “photocopying”, not “xeroxing”.  
If your mark is federally registered, use the ®.

**Use the mark in its proper form.  Do not pluralize it nor make it possessive.  **
**Use the mark as an adjective and couple it with a descriptive or generic term, e.g., a Xerox copy. **
**Not as a noun, e.g., use “copy”, not “Xerox”.    **
**Not as a verb, e.g., use “photocopying”, not “xeroxing”.  **
**If your mark is federally registered, use the ®.**

**Maintaining Your Company’s Trademarks: Tips on Proper Trademark Usage**

## Register your marks and maintain the registrations.
License use of your marks, with your manufacturers, your distributors, and any other authorized third-party users, and exercise quality control over your licensees’ products.  
Use your mark, use your mark as a mark, and use your mark consistently.  Use notices of prior right.
Monitor the USPTO Official Gazette, monitor the marketplace, and STOP unauthorized third-party uses. 

**License use of your marks, with your manufacturers, your distributors, and any other authorized third-party users, and exercise *****quality control***** over your licensees’ products.  **
**Use your mark, use your mark as a mark, and use your mark consistently.  Use notices of prior right.**
**Monitor the USPTO *****Official Gazette*****, monitor the marketplace, and STOP unauthorized third-party uses. **

**Maintaining Your Company’s Trademarks: Don’t Lose Your Rights!**

## General Trademark Information

**General Trademark Information**

**Call the Trademark Assistance Center at **
** ****	****1-800-786-9199 or **
**Email your question to: ****TrademarkAssistanceCenter@uspto.gov**

## Trademarks:Identifying & Protecting Your Rights

**Trademarks:****Identifying & Protecting ****Your Rights**

**john.rodriguez@uspto.gov**
**THANK YOU!**