1. Protecting Your Brand: Trademark Basics
BU Law Entrepreneurship & IP Clinic

2. Distinguishing Types of IP
Patent: way to protect your inventions (ex. light bulb)
Copyright: way to protect your creative expressions that are fixed in a tangible medium (ex. painting)
Trade Secret: way to protect proprietary information from misappropriation (ex. Coke recipe)
Trademark: way to protect your goodwill as the source of the goods or services you produce or provide (ex. Apple logo)

3. Overview What is a trademark?
What are the requirements to register a trademark?
Why is it important to file for trademark protection?
How can the Clinic help you with trademark matters?

4. Purpose: Prevent unfair competition by looking at consumer confusion
What is a Trademark?
Any word, name, symbol, or device or any combination therefore used by a person to identify and distinguish his or her goods or services.
Purpose: Prevent unfair competition by looking at consumer confusion
IDENTIFIES A BRAND!! .
This can include words, phrases, logos, colors, sounds, smells, motions, product packaging… But there are different rules and requirements for each.

5. Examples of Popular Trademarks and Service Marks
Here are examples of some popular trademarks that you may be familiar with.
These trademarks can include both the logo and the words themselves such as “Coca-Cola” or “Shell”. Also, McDonalds trademark the golden arches as well as the word “McDonalds”
Also, as I mentioned, a company or person can register a sound as a trademark, which is what NBC did with it’s signature sound that Natalie will now demonstrate.

6. Purpose: Prevent unfair competition by looking at consumer confusion
What is a Trademark?
Any word, name, symbol, or device or any combination therefore used by a person to identify and distinguish his or her goods or services.
Purpose: Prevent unfair competition by looking at consumer confusion
IDENTIFIES A BRAND!! .
The purpose of a trademark is to ultimately prevent unfair competition by looking to whether consumers would be confused as to the source of any goods or services.
Trademarks basically identify where the goods or the services came from, for example what company produced such goods
When you register your TM you can prevent other people from using confusingly similar marks.

7. Trademark Definition
The term “trademark” includes any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
This is the federal definition of Trademark. You most likely will seek federal registration of the marks so these are the federal requirements to register a trademark.
Just a few things to point out. This is the definition of Trademark, which refers to the identification of the source of goods. I will go through this later, but the mark must be used in commerce (or the person has a bona fide intent to use the mark in commerce) AND it must distinguish the goods from others. It must also indicate the source of the goods.

8. Service Mark Definition
The term “service mark” means any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
Service marks have the same idea but the marks distinguish services of the applicant from the services of others.
a service must be a real activity
a service must be performed for the benefit of a third party and
the service must be qualitatively different and distinct from any good that you as a company sell so it must be a separate service rendered.  
Throughout, I will say “trademark” but this will cover both these goods/trademarks and service marks.

9. Basic Requirements for Federal Regisration
The mark must be:
Distinctive- must distinguish and not merely describe the goods or service; cannot be generic.
Used in Commerce (or have the bona fide intention to use)
These are the basic requirements to obtain rights in a trademark
Distinctive Purpose: read off the slide here
Used in Commerce: as we will discuss later, an applicant can apply for a rights in a mark if used in commerce or with a bona fide intention to use the mark in commerce.

10. Distinctive Requirement
Different Levels:
Inherently Distinctive (automatically distinctive)
Fanciful- invented for sole purpose to function as trademark
Ex. PEPSI, KODAK, and EXXON
Arbitrary- in common use, but do not suggest or describe the goods/services
Ex. APPLE (computers), CAMEL (cigarettes), and OLD CROW (whiskey)
Suggestive- requires imagination, thought or perception
AIRBUS (airplanes) and SPEEDI BAKE (frozen dough)
There are different levels to distinctiveness.
The first and most protective level is the inherently distinctive level.
If the applicant’s mark is inherently distinctive, then the applicant will not need to prove anything else to the USPTO.
These levels are important to consider when you are coming up with a name for your products or services. It is better to be inherently distinctive if possible.
Fanciful: These marks are either unknown in the language or completely out of common usage.
look at examples
Arbitrary: Arbitrary marks comprise words that are in common linguistic use but do not suggest or describe the goods or services of the company.
Suggestive- Suggestive marks are those that require imagination, thought, or perception to determine the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. 

11. Distinctive Requirement
Different Levels:
Inherently Distinctive (no more is required)
Non-Distinctive
Descriptive Marks- merely descriptive of the goods or services
Ex: COLD AND CREAMY (ice cream) and PUBLIC STORAGE (storage rental facilities)
Ability to Acquire Distinctiveness- allows for registration of the mark
A descriptive mark must have developed “secondary meaning”
Ex: SHARP (televisions)
We just went through the Inherently Distinctive category. Now let’s go through the marks that are not distinctive. Descriptive marks are not distinctive and cannot be registered without something more.
Descriptive Marks-
A mark shall be refused registration if it merely describes the goods or services used in connection with such mark.
It is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services
Must look at it in connection with the goods and services, not in the abstract.
Acquired Distinctiveness
If a proposed trademark or service mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or "secondary meaning,"
Each circuit has its own multi-factor test to determine if a mark has developed secondary meaning.
- they will look at:
how long the mark has been in use
if consumers can identify the source of the goods or services such as the company who makes the goods based on looking at the mark
whether other people in the industry use that mark to describe the goods or services.
If the USPTO determines that the descriptive mark has acquired distinctiveness then it may be registrable.

12. Distinctive Requirement
Different Levels:
Inherently Distinctive (no more is required)
Non-Distinctive
Descriptive Marks- merely descriptive of the goods or services
Generic Marks- describe the “genus” of the goods
Born Generic (ALE HOUSE, BRICK OVEN, E-TICKET)
“Genericide” (ESCALATOR, ASPIRIN)- lose distinctiveness over time.
MISSPELLING DOES NOT MATTER!!
URBANHOUZING - descriptive
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. 
incapable of acquiring distinctiveness under §2(f).
Marks are generic either because they are born generic (Ale House, Brick Oven, E-ticket) or because they lose their source distinctiveness through a process of "genericide" (cancelling registration of Escalator, aspirin)
Companies spend a lot of money to prevent Genericide to make sure their brand is separate from the generic term for the goods/services: Think Xerox and Kleenex
POLICY- industries need to use these words to show what they are selling to the public. Give example of a company manufacturing elevators or servicing elevators
A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. 

13. Use Requirement
Registration of a “trademark used in commerce” or a trademark that a person has a bona fide intention to use in commerce
Specifics:
Must use in ordinary course of trade
“Use”-
Goods- placed on goods, the container, the labels or on associated with documents
Services- displayed in the sale or advertising of services
“Commerce”- interstate, territorial, and between the United States and a foreign country
In a trademark or service mark application based on use in commerce under §1(a), the mark must be in use in commerce on or in connection with all the goods and services listed in the application as of the application filing date.  
The application must include a statement that the mark is in use in commerce, verified in an affidavit or declaration. 
Cannot just use it once to reserve a right. You must actually use the mark in ordinary course of trade.
Use-
(1) on goods when— 
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and 
Services- (2) on services when it is used or displayed in the sale or advertising of services
Commerce-
The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country
"Territorial commerce" is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, or the U.S. Virgin Islands) or between the United States and a territory of the United States.

14. Special Circumstances and Exceptions
Surnames- NO registration if primarily merely a surname
Can acquire distinctiveness through secondary meaning
Living Person ID- NO registration of mark that contains a name, portrait or signature identifying a living individual, except through written consent.
Ex: ROYAL KATE (beauty products)
Foreign Equivalents- NO registration if merely descriptive English word translated into foreign language
Ex: SAPORITO (“tasty” for dry sausage product)
Surnames-
Words that the public would view as a surname/last name are not allowed to be registered.
However, if public does not perceive a term as a surname then the term may be registrable.
Living Person-
If the mark comprises a first name, pseudonym, stage name, nickname, surname, or title that identifies an individual who is generally known and the public may perceive that living person to be connected with the business in which the mark is used then that mark is not registrable unless that living person gives consent.
ROYAL KATE case- This mark was deemed to identify Kate Middleton who is a very well-known figure. The public may think that Kate is associated with these products considering her status in society and her trend-setting pattern.
Foreign Equivalents
The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself.

15. Why Register? Registering will:
Prevent others in the market from using same or confusingly similar mark
Put others on notice your mark is protected
Give company nationwide use of mark and notice of ownership
Federal protection provides comprehensive coverage
Prevents others in the marketplace from using the same or confusingly similar mark as your company's mark
State law provides protection but only for within that state; so file federally to obtain full protection
Puts others on notice if your mark is filed to let them know that there is a mark already in use
Filing shows prima facie evidence of validity and ownership of the mark
Gives company nationwide use of the mark and notice of ownership
Public notice of your claim of ownership of the mark;
Listing in the USPTO’s online databases;
Thee ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
importation of infringing foreign goods;
The right to use the federal registration symbol “®”
The ability to bring an action concerning the mark in federal court; and
The use of the U.S. registration as a basis to obtain registration in foreign countries

16. Standards for Trademark Infringement
Elements for Trademark Infringement
Valid mark
Plaintiff has priority
Infringing mark causes confusion in eyes of consumers
Degree of similarity
Type of good offered
Other factors
Company has right to use trademark for the length of time that the holder uses and polices the mark
To successfully say that there has been a trademark infringement on your trademark, you must show:
It is a valid mark
It has priority over the defendant's claim to use the mark
The allegedly infringing mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks
Courts usually look at the degree of similarity b/w the marks at issue and whether the goods or services offered by the parties are sufficiently related such that consumers would assume they are from the same source
Other factors: how and where the parties' goods or services are advertised, marketed, sold; purchasing conditions; range of prospective purchasers; evidence of actual confusion;

17. Recent Example: Tiffany & Co. v. Costco Wholesale Corp.
Costco was selling rings that said "Tiffanys" on them, but they were not at all associated with Tiffany & Co. So, Tiffany sued saying that Costco was infringing on their TM for Tiffany and the court found in favor of Tiffany saying that the marks were confusingly similar for customers.

18. Recent Example: Florida International University Board of Trustees v
Recent Example: Florida International University Board of Trustees v. Florida National University Inc.
Florida International University Board of Trustees v. Florida National University Inc.
Florida International University was suing Florida National University for trademark infringement and the court found there was no infringement because students would not accidentally spend tens of thousands of dollars and attend the wrong school because of a similar sounding name.
Factor: the good is not purchased quickly; expensive good, spend time to decide which school to attend, etc.

19. When to File Section 1(a) Application Section 1(b) Application
Based on a use of the mark in commerce
Section 1(b) Application
Based on an “intent to use” the mark in commerce
Must submit a statement of use in commerce within 6 months of receiving a Notice of Allowance from the USPTO (although you are permitted to file five 6-month extensions if necessary)
Ideally: as soon as you settle on a name and want to begin building goodwill with consumers, whether in commerce or not
BUT obviously financial limitations can keep you from filing as soon as you might like
Thus, the USPTO has two types of applications for companies at various stages of development
Section 1A: for applicants who have begun using the mark in commerce as Emily discussed previously
Section 1B (aka intent to use application): this is for companies who have not yet begun using their mark in commerce, but want to put other companies on notice of their intent to use the mark in commerce.
If the USPTO ultimately finds that your mark is acceptable it will issue what is called a notice of allowance. Getting to this point typically takes a couple of months. You then have six months after the USPTO issues a notice of allowance to file what is called a statement of use which is how you demonstrate proof of use of your mark in interstate commerce. The USPTO does, however, permit you to file five 6-month extensions if it takes your company a bit longer to reach the point where you will be using the mark in commerce

20. How can the Clinic help?
The Clinic can assist in brand protection in the following ways:
Performing a “knock-out” search;
Preparing the USPTO trademark application;
Responding to Office Action letters; and
Drafting cease & desist letters

21. “Knock-Out” Searches What do we search?
Uses of the same or similar mark in commerce
Where do we search?
Google
USPTO Database (“TESS”)
Knock out search is essentially a phrase that describes the clinic’s process of searching for any existing marks that may be similar to the one you wish to register.
This serves two purposes:
1) It allows us to approximate the level of risk that the USPTO would deny your mark (or alternatively, the likelihood of the USPTO accepting your mark)
2) Puts you on notice for any marks you may be at risk of infringing if you continue forward using the mark
We search databases such as google and the USPTO database:
A Google search is relatively simple and is something that you as young entrepreneurs in the early phases of starting your company can do to help you select an entity name to avoid having to change the name later on. It simply involves Google-ing the name you wish to use and similar variations of your name choice and looking to see what other companies out there exist with similar names
USPTO searches are important because they include not only marks that are registered with the USPTO but also the marks that are still in the application review phase or companies that have filed Section 1B applications for marks.
The Clinic obviously is limited in that you we don’t have the same technology and manpower to dedicate to these searches that some companies who specialize in conducting these types of searches so if you do want an exhaustive search then we do recommend using one of those services and we can recommend you to some of the ones we are aware of.

22. Filing Costs Application: $225 or $275 Statement of Use: $100
Extension(s): $125 each
Application cost--either 225 or 275 per class depending on the type of application you file
statement of use: 100
Each extension requested to file for proof of use in commerce costs $125

23. E&IP Clinic
To learn more about the Entrepreneurship & IP Clinic visit sites.bu.edu/elawclinic