12 The mark consists of the exhaust sound of applicant’s motorcycles, produced by V-Twin, common crankpin motorcycle engines when the goods are in use. (Application Serial No. 74/485,223) Trademarks can be: HARLEY DAVIDSON
13 Trademarks can be: “The mark consists of a high impact, fresh flower fragrance reminiscent of Plumeria blossoms” U.S. Reg. No. 1,639,128
14 Trademarks can be: AMAZON.COM PRICELINE.COM YAHOO.COM
15 Trademarks vs. Service Marks Trademarks identify products or goods. Service marks identify services.
16 Service Marks GOLDEN ARCHES Design MCDONALD’S
17 Trademarks GOLDEN ARCHES Design BIG MAC MCDONALD’S Plus Design
18 Other Types of Marks Collective Marks: used by members of a group or organization to identify the goods they produce or services they render. Example: ILGU (International Ladies Garment Union)
19 Other Types of Marks Certification Marks: certify that products or services are manufactured or provided by others have certain qualities.
20 Certification Marks Example: VIDALIA for onions (“The certification mark is intended to be used by persons authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia Onion Act of 1986.”)
21 Trade Names vs. Trademarks A trade name is not a trademark: McDonald’s Corporation vs. McDONALD’S Trade names are not registrable in the Trademark Office.
22 Types of Marks Strength Highest None Fanciful Arbitrary Suggestive Merely Descriptive Generic
29 The Term “Brilliant” would be: Merely descriptive for diamonds. Suggestive for furniture polish. Arbitrary for applesauce.
30 Misconceptions Registration of the mark in a state as a trademark or service mark does not necessarily mean it is permissible to use the mark everywhere.
31 Rights in a Mark are Maintained by: Continued use of the mark. Renewing a federal registration every 10 years. Policing the mark.
32 Lost Rights in a Mark are Lost by: Failing to continue to use the mark in commerce. A licensor failing to maintain adequate control over the quality of the licensed goods/service. Failing to police third-party uses of infringing marks.
33 Types of Trademark Applications Actual use of mark in interstate commerce; and Intent-to-use the mark in interstate commerce.
34 No - No’s An assignment of a trademark, absent the “goodwill of the business connected therewith”, is invalid – “assignment in gross. ”
35 No - No’s Can’t assign an intent-to- use trademark application.
36 No - No’s Licensing of a trademark, without quality control provisions, results in a “naked” license.
37 The Care and Feeding of Marks Always use the mark as a proper adjective which modifies a noun, such as CABBAGE PATCH KIDS dolls, LEVI’S jeans, XEROX copy machines.
38 Never use a mark in the possessive form, in the plural form or as a verb. Avoid prefixes, suffixes, additions or deletions of the mark. The Care and Feeding of Marks
39 The Care and Feeding of Marks Distinguish the mark in use from surrounding text: distinctive type face, quotation marks, all capital letters or capitalize the first letter of each word of the mark.
40 For Registered Marks: Use “®” or the phrase “Registered in the U.S. Patent and Trademark Office” or “Reg. U.S. Pat. TM. Off.” The Care and Feeding of Marks
41 The Care and Feeding of Marks For unregistered marks: “ TM ” “ SM ” or an asterisk indicating “A trademark/service mark of XYZ Corporation.”