1. According to PTO, 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 Trademark?

2. ™ vs. ® ™ (for an unregistered trade mark, that is, a mark used to promote or brand goods) ® (for a registered trademark)

3. Why Trademark?

5. Trademark exists to… Promote Business Ethics Protect Goodwill Promote Market efficiency

6. Unfair Competition Doctrine The product or service of the first company employs a symbol or device(trademark) that consumers use to identify the product/service. The competitor uses a symbol so similar that the consumers might confuse it with that of the first company. The competition adopted that symbol or device having known(or should have known) about the prior use by the first company.

7. Advantages of Federal Trademark Registration Without registration need to prove otherwise. Nationwide priority is established.

8. Generic & Descriptive Marks What is escalator? Marks that become Generic over time loose their protective status. Eq. Thermos, trampoline, netbook. Descriptive marks can be protected under Lanham act if they assume secondary meaning. Eq. PIZZAZZ for pizza, WORLD BOOK for encyclopedias.

9. Trade Dress & Product Design Distinctive - If attribute is distinctive, it can be protected under trademark without proving the secondary meaning. Single color can never be distinctive and a company seeking trademark protection for a product’s color would have to demonstrate secondary meaning.

10. Aesthetic & Utilitarian Functionality If the Aesthetic or Utilitarian functionality trademarks interfere with market completion, they cannot be protected. Eq. John Dere was not able to trademark for color green for front-end loaded as most farmers preferred wanted loader’s color to match with the tractor’s color. Smilarly the hexagonal shape of BOSE speakers cannot be trademark protected.

11. Trademark Registration Trademark priority. Likelihood of confusion. Bondafide intention to use. Has to be renewed every 10 years.

12. Dilution & Free Speech An association arising from similarity between a mark and a famous trademark that impairs the distinctiveness or hams the reputation of a famous trademark. Eq. LEXUS automobile and LEXIS computer Database. The trademark can be used for parody, criticism, commentary or advertising to compare goods or services.

13. Infringement Remedies Monetary Relief. Seizure of Imports. Counterfeiting Penalties.

14. Non-US trademark registration & issues Registration rules differ from country to country. Most countries have first to file for registration. Non-US trademarks should be especially taken care of in cases where a business is licensing to a local company outside US as it could lead to parallel imports or gray market.

15. Gray Market A foreign- manufactured good, bearing a valid US trademark imported into the US without the permission of the US trademark holder. The trademark owner can call for injunction or fight it by using copyright laws.

16. Questions