Trademarks

Trademarks are Distinctive Identifier for a business such as Words, Logos, Slogans, Sounds, Smells, or Designs.Federal Registration with United States Patent and Trademark Office (USPTO)

• Common Law Trademark is obtained through use in commerce, but it is highly recommended to register it with USPTO – United States Patent and Trademark Office.
• Benefits:
  • Can bring lawsuit in Federal Court – Can save travel costs if infringer is based out of a different state.
  • Attorney Fees are available.
  • Statutory damages are available if the plaintiff can prove sale of counterfeit merchandise. (Someone selling Fockley’s while using Oakley name).

Types of Trademarks

• Generic – Name of a product (e.g., Books)
• Descriptive – Describes characteristic of product (Paperback Books)
• Suggestive – Name with a connection with product (Rainforest Books)
• Arbitrary – No connection with product (Thomson Reuters)

Suggestive and Arbitrary names are considered inherently different and easily protected, however Generic and Descriptive names need to gain a second meaning to gain protection. (iPhone)Rights of Trademark Owners

• Right to use the mark for their product indefinitely.
• Right to prevent others from using a substantially similar or confusing mark.
• Right to prevent dilution of famous marks even if unlikely to cause confusion.