Tantalizing Trademark To-Do’s April 12, 2013 Timothy M. Donoughue Intellectual Property Senior Counsel

But first, a word from our sponsor: All this is Tim’s opinion only, not the view of BHI, and not on the record.

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. Trademarks Definition of Trademark: Definition of Trademark: Any mark which Any mark which Identifies and distinguishes goods or services Identifies and distinguishes goods or services Indicates source of good or services Indicates source of good or services TM ®

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. Trademark v. Service Mark A “Service Mark” is a mark that designates services only A “Service Mark” is a mark that designates services only A “Trademark” is a mark that designates goods A “Trademark” is a mark that designates goods However (just to be confusing), “Trademark” can also be a mark that designates services or both goods and services However (just to be confusing), “Trademark” can also be a mark that designates services or both goods and services

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 1. Don’t Miss a Mark! Definition of mark is very broad. Definition of mark is very broad. Marks can now include sounds, colors Marks can now include sounds, colors Marks can be found within other marks Marks can be found within other marks Logos or slogans Logos or slogans Stylizations Stylizations

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 2. Do Know Your Country In US, trademark rights are acquired by use—no registration required In US, trademark rights are acquired by use—no registration required In RU, trademark rights are acquired by registration—use gives no rights In RU, trademark rights are acquired by registration—use gives no rights In BR, the trademark office does not send notices, they publish them In BR, the trademark office does not send notices, they publish them In EP, the trademark office covers several countries In EP, the trademark office covers several countries

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 3. Do Understand the Goods/Services Trademarks’ effects are limited to their particular goods and services Trademarks’ effects are limited to their particular goods and services In US, limited to actual use In US, limited to actual use Can be multiple goods/services Can be multiple goods/services Part of a clearance search Part of a clearance search Example: Example: DELTA faucets DELTA faucets DELTA power tools DELTA power tools DELTA airlines DELTA airlines

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 4. Do Docket, Docket, Docket Accurate docketing is critical Accurate docketing is critical Avoids loss of rights in dates Avoids loss of rights in dates Lowers cost Lowers cost Critical to double check automatic docketing Critical to double check automatic docketing Ensure that the country selection is correct Ensure that the country selection is correct Make sure the dates look right Make sure the dates look right

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 5. Don’t Ever Abuse Marks We must be models to our clients of how to use trademarks correctly We must be models to our clients of how to use trademarks correctly Brochures Brochures s s Memos Memos Letters Letters How the clients see the mark used influences how they in turn use it How the clients see the mark used influences how they in turn use it

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. Grammar Lesson All trademarks are adjectives All trademarks are adjectives Use with generic name of product/service Use with generic name of product/service “We ran the XMAC tool.” “We ran the XMAC tool.” Not -- “We will ship ten XMACs.” Not -- “We will ship ten XMACs.” Never use as a possessive, plural, verb or noun Never use as a possessive, plural, verb or noun Don’t “xerox it”; make a “photocopy” Don’t “xerox it”; make a “photocopy”

Proper Use of Marks Distinguish in print Distinguish in print CAPS or italics CAPS or italics Include trademark notice Include trademark notice TM, SM or TM, SM or ® ® only for registered marks Give notice of company ownership if not obvious Give notice of company ownership if not obvious Footnote with “TESTRAK is a service mark of Baker Hughes Incorporated” Footnote with “TESTRAK is a service mark of Baker Hughes Incorporated” ® ™ SM

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 6. Do Know Trademark Infringement Likelihood of confusion Likelihood of confusion Exact match not required Exact match not required Must be within same market Must be within same market Similar to unfair competition Similar to unfair competition If you suspect something see your attorney! If you suspect something see your attorney!

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 8. Do Learn the USPTO Online Under Trademarks Under Trademarks TESS – to search TESS – to search TEAS – to file TEAS – to file TSDR – to check the status TSDR – to check the status Then under Manuals, Guides… Then under Manuals, Guides… TMEP TMEP Acceptable ID of Goods/Services Acceptable ID of Goods/Services

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 7. Do Keep Your Attorney Informed Attorney-Client privilege Attorney-Client privilege Extends to “one employed by the lawyer to assist” with legal services. TRE 503 Extends to “one employed by the lawyer to assist” with legal services. TRE 503 Attorney work product Attorney work product Extends to the work product of an “attorney’s representative”. TRCP Extends to the work product of an “attorney’s representative”. TRCP For those to apply, you must be under the supervision of the attorney! For those to apply, you must be under the supervision of the attorney!

© 2013 Baker Hughes Incorporated. All Rights Reserved. Licensed for educational use only. 9. Do Know a Proper Specimen In US (Office is very particular on this) In US (Office is very particular on this) Specimen must show the mark Specimen must show the mark Used on or in connection with the sale of goods Used on or in connection with the sale of goods Label, tag, stamp Label, tag, stamp Not an ad, website except in limited cases! Not an ad, website except in limited cases! In the sale or advertising of the services In the sale or advertising of the services TMEP (a) TMEP (a)

10. Do Ask for Help! Very complex area Very complex area Particularly in docketing Particularly in docketing Especially with new jurisdictions Especially with new jurisdictions A question now saves much grief later! A question now saves much grief later!

Questions?

Tantalizing Trademark Tidbits April 12, 2013 Timothy M. Donoughue Intellectual Property Senior Counsel