1. The Business of Naming Your Business: The Importance of Distinguishing Trade Names and Trademarks www.TheKellerLawFirm.com Presented By: Kelley Clements Keller, Esq. Cumberland County Bar Association Successful Business Series

2. What is Intellectual Property? Intellectual property is a legal concept which refers to the products of human imagination, creativity, and ingenuity that have value in the marketplace and for which exclusive rights are recognized. Intellectual property laws are strict liability statutes designed to protect intangible assets that contribute to a business’s competitive edge. www.TheKellerLawFirm.com

3. Types of IP Patents  New and useful inventions Copyrights  Tangible expressions of creative ideas Trademarks  Words or symbols that serve as indicator of origin Trade Secrets  Info that derives economic value from being held secret www.TheKellerLawFirm.com

4. Why Does IP Matter? Loss of intellectual property rights can be very costly to a new business.  Infringement  Misuse  Failure to police  Genericide  Mitigate risk on the front end www.TheKellerLawFirm.com

5. The New Business: Early Decisions and Early Mistakes Earliest—and most important—decision:  Choosing a business name Earliest—and most costly—mistake:  Failing to clear business name for use as a trademark www.TheKellerLawFirm.com

6. Trade Name vs. Trademark Trade Name:  Legal identity—or official name —under which the business is “doing business” Trademark:  Identifies the product or service  Indicator of origin www.TheKellerLawFirm.com

7. Trade Name vs. Trademark May be one in the same:  Nike, Inc. and  The Coca-Cola Co. and But different function in the marketplace and governed by different rules www.TheKellerLawFirm.com

8. The Trade Name: A State Matter Secured and regulated at the state level  The local state department  PA = Bureau of Corporations and Charitable Organizations Deemed valid and approved if:  1) not identical or nearly identical to a previously registered entity; and  2) proper paperwork is completed and filed. www.TheKellerLawFirm.com

9. The Trade Name: Your Rights Gives exclusive rights to the name:  1) as a trade name (not a trademark), and  2) in that state only. To use the trade name as a trademark :  Name must also be cleared as a trademark.  Nike, Inc. and NIKE® www.TheKellerLawFirm.com

10. The Trademark: Goods and Services Trademark represents the product or service Serves an indicator of origin Power, strength, and value built through use of the mark in commerce www.TheKellerLawFirm.com

11. The Trademark: Value Through Reputation Consumers draw an association between mark and product or service (distinct trade name irrelevant) Strong marks (stronger positive association)  valuable marks The Coca-Cola Co. has used the COCA-COLA brand for 127 years  $80 billion brand www.TheKellerLawFirm.com

12. Obtaining a Trademark: Use in Commerce Rights conferred through actual use of a mark in commerce  First to use a mark (in a particular territory) is the first to own the mark (in that territory) Unregistered marks (common law marks)  Legal protection where mark is used (geographically) Federally registered marks – use in interstate commerce  Legal protection nationwide www.TheKellerLawFirm.com

13. Trademark Availability vs. Corporate Name Availability Trademarks (whether registered or not) have no state registration requirement Thus, trademarks will not be discovered through corporate name availability search www.TheKellerLawFirm.com

14. Advising the Client Avoid adopting a business name with prior common law or registered trademark use Commission a trademark search and legal opinion from a skilled searcher  Search must cover the records at the U.S. Patent and Trademark Office  Should be extended to cover unregistered common law uses  Will determine availability of name for use and registration as a trademark www.TheKellerLawFirm.com

15. Advising the Client “Knock-Out”  U.S. Patent and Trademark Office  Common law Internet search Comprehensive  U.S. Patent and Trademark Office  Secretary of State trademark registers  General and industry-specific common law resources  Business name databases  Top-level domain names including.com,.net,.edu,.org,.biz, and.info www.TheKellerLawFirm.com

16. The Trademark Search and Opinion Determines availability for use and registration Discovers potential infringement problems and areas of vulnerability Without it, a business is “flying blind” and may end up on the wrong end of a cease-and-desist Defense to a claim of willful infringement – reduce to innocent and mitigate damages www.TheKellerLawFirm.com

17. Putting It All Together Small, local businesses often assume they need only clear their names at the state level since they only intend to operate locally Digital space is a new playing field Small business are no longer anonymous www.TheKellerLawFirm.com

18. Putting It All Together Federal registration and even pending applications provide nationwide protection  Constructive notice A state trade name registration (or even state trademark registration) will not insulate from liability for trademark infringement www.TheKellerLawFirm.com

19. The Takeaway Every business owner should ask and answer two questions before selecting a business name:  1) Is my name available for use as a trade name?  2) Is my name available for use as a trademark? www.TheKellerLawFirm.com

20. Wrapping it Up Questions? www.TheKellerLawFirm.com * Images may be subject to copyright by a third party.

21. Thank You! www.TheKellerLawFirm.com Kelley Clements Keller, Esq. (717) 386-5035 kkeller@thekellerlawfirm.com @KelleyKeller /YourIPMatters /KelleyKeller