1. T®adema®k

2. We Live in a World Where People Own…
“You’re Fired!”
“That’s Hot”

3. 19-0™ “19-0” “19-0 The Perfect Season” “The Perfect Season”, 2008
New York Post “18-1”
Successfully registered in 2017
Three Peat®
1989, Riles & Co.
Byron Scott
Chicago Bulls, '93/'98
Yankees, 2000
Lakers, 2002
Three-Pete™, 2005

4. Duh, Winning®

5. Snooki®

6. Blue Ivy™

7. T®adema®k Basics
15. U.S.C. 1127: "any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured and sold by others and to indicate the source of the goods, even if that source is unknown."
Prevents consumer fraud, counterfeiting, and confusion in the market; source of good/service
15 U.S.C. aka Lanham Act, NOT from US Constitution!
DISTINCTIVENESS!!!!!!!!!!
Titles (books, films, etc. and character names)
Names, celebrity slogans (not copyrightable)

8. T®adema®k Basics Cont'd
Get trademark protection by:
1. Registering w/ USPTO, $335 fee + legal fees, 5th-6th year renewal and then every 10 years
2. Being first to use it in commerce
Trademark is an adjective that modifies a noun; NOT a verb or noun (Miller Lite beer, Winston cigarettes, etc., but not “googling” or “take an Aspirin”)
You can have the same brand name in different product markets
Like copyright, trademark law can be used as a form of censorship and inhibit free speech

9. Types of Ma®ks ® is a federally registered mark
™ is an unregistered mark or common law mark, protected by common law/state law, geographically restricted
℠ is a service mark, used to promote branded services (Comcast Xfinity, UPS, Fedex, Lube It USA, etc.)
State registered marks
Subject to state and federal laws

10. Losing your ma®k
It is up to the ma®k owner to police counterfeits and other ma®k abuses
“brand value” or “equity”
You can lose trademark protection through:
1. abandonment, after 3 years of non-use=can be registered by another; but potentially perpetual
2. improper licensing or assignment aka “naked licensing”...you must do quality control
3. genericization=public domain

11. The Slants Cannot federally register a racial slur as ®
Group is reclaiming the “disparaging” term, social commentary
2017 Supreme Court ruling: Free Speech
"The disparagement clause violates the First Amendment's Free Speech Clause,” Justice Samuel Alito

12. Washington Redskins
Clip 1, Clip 2

13. Lanham Act 1946 15 U.S.C. Primary federal trademark statute
Title 15 regulates trade and commerce in U.S., notably anti-trust (competition laws)
Primary federal trademark statute
Sets requirements for receiving a federal mark
Remedies for infringement
“likelihood of confusion” test

14. Territoriality
Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction.
Madrid Protocol:
International application, 84 countries
File once
10 year renewals
Part of WIPO

15. Trademark Searches USTPO search State of Oregon trademark
Only federal marks....
State of Oregon trademark
Oregon state search form
Only marks registered in the state
No common law search available

16. 4 Types of T®adema®ks
Distinctiveness is KEY! More distinct the better!
1. Arbitrary or fanciful: mark that bears no logical relationship to the underlying product
Fanciful (coined): Exxon, Kodak, Reebok
Arbitrary (common words used uniquely): Apple, Amazon, Dutch Boy, Grey Goose
2. Suggestive: indicates nature/quality or good/service associated w/ mark; requires perceptive imagination of audience (Blu-ray, Coppertone, etc.)

18. 4Types of T®adema®ks Cont'd
3. Descriptive: Mark acquires “secondary meaning” when mark is associated with producer and not the good. (Bank of America); low trademark protection
Term has dictionary meaning, but takes on “secondary meaning” when used in connection with products that relate to that meaning
4. Generic: distinctive mark has become generic term. (Aspirin, Heroin, Zipper, Yo-Yo, etc). NO trademark protection=public domain
Band-aid, Kleenex, Xerox have ALMOST become generic.

19. Google® v. googling

20. Name That Ma®k!
Fanciful
Arbitrary
Generic
Suggestive
Descriptive

21. Nonconventional T®adema®ks
Sound marks (aural marks): NBC chimes, “Sweet Georgia Brown” (Globetrotters theme), “I'm lovin' it” jingle, Metro-Goldwyn-Mayer lion roar
Color marks
Motion marks
Hologram marks
Smells
Shape marks (3D) (Coca cola bottle)

22. “Trade Dress” (not utility functions)

24. The key for non-conventional trademarks is that they cannot have a utility function!!!
Trademark registration cannot be used to confer a potentially everlasting monopoly on a useful product configuration.
2010, NO , YES