Presentation on theme: "Got ®? Ted Landwehr Landwehr Law Offices 4034 7 th Street NE Columbia Heights, MN 55421 763-781-7898."— Presentation transcript:
Got ®? Ted Landwehr Landwehr Law Offices 4034 7 th Street NE Columbia Heights, MN 55421 763-781-7898
What is a Trademark A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.
What is a Service Mark? A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.
Must I Register My Trademark No. You can establish rights in a mark based on use of the mark in commerce, without a registration (i.e. common law rights). However, owning a federal trademark registration on the Principal Register of the U.S. Patent and Trademark Office provides several important benefits.
Strategic Business Benefits of Registering Trademarks Projects a professional image of establishment and a legally savvy business organization Strong deterrent effect Makes great economic sense considering the organization’s substantial investment in developing and using its trademark brand - ($1-2 thousand registration cost vs. tens of thousands of $ for redeveloping and reutilizing brand) Trademark brand becomes a much valuable asset when selling business.
Should I Conduct a Search for Similar Trademarks Before Filing an Application? It is advisable to conduct a search before filing your application. Reduces the likelihood of rejection or trademark infringement Cost is approximately $345 per class (much less than litigation costs)
What are the Benefits of Federal Trademark Registration? Public notice of your claim of ownership of the mark; A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; The ability to bring an action concerning the mark in federal court; The use of the U.S. registration as a basis to obtain registration in foreign countries; The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; The right to use the federal registration symbol ® and Listing in the United States Patent and Trademark Office’s online databases. May provide protection against others using the registered mark in their domain name.
International Registration Marks registered on the Principal Register in the USPTO may also be registered internationally in up to 80 countries using the Madrid System. For more information, see: http://www.wipo.int/trademarks/en/ or USPTO.govhttp://www.wipo.int/trademarks/en/
Who May File an International Registration? Any trademark owner with an application filed in or a registration issued by the USPTO and who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States can submit an international application through the USPTO.
Do federal regulations govern the use of the designations "TM" or "SM" or the ® symbol? If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol "®" after the USPTO actually registers a mark, and not while an application is pending.
What is the difference between “use in commerce” and “intent to use” in commerce? The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and $100 fee per class that are unnecessary if you file under “use in commerce.”
How long will it take for my mark to register? The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.
May I assign or transfer the ownership of my trademark to someone else? Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee.
State Trademark Registration Register mark and specimen with the Minnesota Secretary of State Less complicated than federal registration Less expensive - $50 per class
State Trademark Remedies Injunctive relief - May bring an action to enjoin the manufacture, use, display, or sale of any counterfeits or imitations of the mark, and a court of competent jurisdiction may grant injunctions to restrain the manufacture, use, display, or sale as the court considers just and reasonable. The court may require the defendants to pay to the owner either or both of the following: (1) all profits derived from the wrongful manufacture, use, display, or sale; or (2) all damages suffered by reason of the wrongful manufacture, use, display, or sale. The court may also order that counterfeits or imitations in the possession or under the control of a defendant be delivered to an officer of the court, or to the complainant, to be destroyed. The court, in its discretion, may enter judgment for an amount not to exceed three times the profits and damages and reasonable attorneys' fees of the prevailing party if the court finds the other party committed the wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case..Other penal law - The enumeration of any right or remedy herein shall not affect a registrant's right to prosecute under any penal law of this state.