8th edition Trademark Legal Care for Your Business & Product Name by Attorneys Stephen Elias & Richard Stim EIGHTH EDITION AUGUST 2007 Editor RICHARD STIM Cover Design SUSAN PUTNEY Book Design TERRI HEARSH Production SARAH HINMAN Example Illustrations JOHN MILLER & HEATHER SNYDER Indexer VICTORIA BAKER Proofreading PAUL TYLER Printing DELTA PRINTING SOLUTIONS, INC. Elias, Stephen. Trademark : legal care for your business & product name / by Stephen Elias 8th ed. p. cm. Includes index. ISBN-13: 978-1-4133-0699-6 (pbk.) ISBN-10: 1-4133-0699-3 (pbk.) 1. Trademarks Law and legislation United States Popular works. 2. Business names Law and legislation United States Popular works. I. Title. KF3180.Z9E43 2007 346.7304’88 dc22 2007013018 Copyright © 2007 by Stephen Elias ALL RIGHTS RESERVED. PRINTED IN THE USA. 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Call 800- 955-4775 or write to Nolo, 950 Parker Street, Berkeley, CA 94710. 20 Frequently Asked Trademark Questions 1 Introduction 9 1 A Trademark Primer 11 Trademarks and Trademark Law 13 Basic Principles of Trademark Law 17 e Role of Federal Registration in Protecting Trademarks 23 Not All Business Names Are Trademarks 26 Trade Name Formalities 27 Trade Dress and Product Designs 31 Sources of Trademark Law 35 e Difference Between Trademark and Copyright 36 e Difference Between Trademark and Patent 37 2 Trademarks, Domain Names, and the Internet 39 How to Clear and Register Domain Names 40 What to Do If the Domain Name You Want Is Already Registered 44 Domain Names and Trademarks 46 Other Trademark Issues in Cyberspace 47 3 How to Choose a Good Name for Your Business, Product, or Service 51 Anatomy of a Product or Service Name Trademark 53 Distinctive Names Make Legally Strong Trademarks 54 How Trademark Law Treats Marks With Common Terms 55 What Makes a Distinctive Trademark a Legally Strong Trademark? 57 Guidelines for Making a Mark Distinctive 59 Marketing Considerations When Choosing a Name Mark 67 Table of Contents 4 Trademark Searches—What ey Are and Why You Should Do One 71 What Is a Trademark Search? 72 Why Do a Trademark Search? 72 What Resources Are Used in a Trademark Search? 72 Where Are Trademark Search Resources Located? 73 Different Levels of Trademark Searches—What ey Are; When ey’re Appropriate 74 Planning Your Trademark Search 77 Using a Professional Search Service 81 Using a Patent and Trademark Depository Library to Do Your Own Search 84 Does Your Failure to Search Mean You Acted in Bad Faith? 85 5 How to Do Your Own Trademark Search 87 Meet TESS—e Trademark Electronic Search System 89 Getting Started With TESS 91 Understanding the TESS Structured Form Search 93 Tips on Using the TESS Structured Form Search 96 Trademark Searching With TESS: An Example 99 Understanding the TESS Free Form Search 101 Understanding the Results of Your Search 104 An Introduction to SAEGIS—A Great Fee-Based Search System 106 Searching for Designs 108 Searching State Registered Trademarks and Trade Names 108 Searching for Trade Names and Unregistered Marks 109 6 How to Evaluate the Results of Your Trademark Search 113 What’s Involved in Evaluating Trademark Search Results? 115 What Is the Likelihood of Customer Confusion? 116 An Overview of How Marks Are Evaluated for eir Potential to Cause Customer Confusion 119 How Closely Related Are the Goods/Services? 120 Do the Goods or Services Compete? 128 How Similar Are the Marks? 128 Additional Factors 129 Final Factors 131 How to Read a Trademark Search Report 132 7 Federal Trademark Registration 139 Brief Overview of Federal Registration 141 What Marks Qualify for Federal Registration 142 If You Haven’t Started Using Your Mark, Should You File an Intent-to-Use Application? 146 What Examples of Your Mark Will You Submit With Your Application? 147 What International Class Is the Best Fit for Your Product or Service? 152 Deciding How Many Marks You Want to Register 153 Applying for Registration Online 154 If You Are Filing by Mail 174 What Happens Next? 175 Communicating With the PTO 176 If the Examiner Issues a Rejection Letter 177 Follow-Up Activity Required for Intent-to-Use Applications 183 Follow-Up Activity Required After Registration 185 8 How to Use and Care for Your Trademark 187 Use of the Trademark Registration ® Symbol 188 Use of the TM or SM Symbol for Unregistered Trademarks 189 File Your Section 8 and 15 Declarations 189 File Your Section 8 Declaration and Section 9 Application for Renewal 193 Use It or Risk Losing It 193 Maintain Tight Control of Your Mark 194 Use the Mark Properly—Avoid Genericide 196 Transferring Ownership of a Trademark 197 9 Evaluating Trademark Strength 201 A Brief Review of What Makes a Strong Mark 202 e First Step: For Marks Consisting of Words, Identify the Distinctive Part of the Mark 203 Assess the Legal Strength of the Trademark Aspect of Your Word Mark 203 10 Sorting Out Trademark Disputes 221 Trademark Infringement 223 Determining Priority in an Infringement Dispute 232 Dilution 241 Cybersquatting 247 11 If Someone Infringes Your Mark 253 What Litigation Costs 254 How Much Is Your Mark Really Worth to You? 254 Negotiate—Don’t Litigate 257 How to Handle an Infringer 259 12 If Someone Claims at You Infringed eir Trademark 269 What the Complaining Party Can Do to You 270 Steps You Should Take 271 13 International Trademark Protection 273 Where Will You Seek Protection? 274 How Will You Register Abroad? 277 14 Help Beyond is Book 281 Doing Your Own Research in a Law Library 282 Finding Trademark Laws and Information on the Internet 287 Finding a Lawyer 287 Appendixes A International Classification of Goods and Services 291 B Glossary of Terms 307 C Selected Pages from omson CompuMark Trademark Search Report 315 Index 337 1. What does it mean to “trademark” a business or product name or logo? 3 2. What is the difference between a trademark and a service mark? 3 3. How long does it take to get a trademark registered? 3 4. Suppose I register a trademark for a particular product. What happens when I want to use the same trademark for a different product? 3 5. Can I apply to register a logo, name, and slogan all in one application? What happens if I want to use them separately? 3 6. What happens if I register my mark but later find out that someone else was already using the mark but never got around to registering it? 3 7. I’ve been told to do a trademark search before applying to register my mark. Why should I, if the PTO does one when they get my application? 4 8. What is a “common law” trademark, and what rights does it give me? 4 9. Why should I bother to register a trademark I’m already using on my business or products if I already have rights under the common law? 4 10. Can I do the application myself or should I hire an attorney? 4 11. What if I find an exact match or near-exact match in a search? Can I still use my proposed trademark anyway? What’s the worst that can happen? 5 12. Can I register my domain name/Internet website address as a trademark? 5 13. What’s the difference between state and federal trademarks? 5 14. If my trademark search finds a mark identical or similar to mine and I find out that the owner is no longer in business (or that the mark is no longer being used by that business), am I free to use it? Can I register it with the PTO? 5 15. If I combine my business or product name with a logo, does the combination distinguish the name from other names that are already registered or in use? 5 16. What materials should I search in order to feel like I’ve been thorough enough? 6 17. What is the Official Gazette, published by the PTO, and who reads it? 6 20 Frequently Asked Trademark Questions Q QUESTIONS 2 | TRADEMARK: LEGAL CARE FOR YOUR BUSINESS & PRODUCT NAME 18. I’ve learned that I’ll have to renew my trademark registration in a few years. Will the PTO notify me when the time comes, or do I have to keep track of this date myself? 6 19. How do I get the official PTO form to apply for a federal trademark registration? 6 20. How do I get an international trademark? 7 QUESTIONS | 20 FREQUENTLY ASKED TRADEMARK QUESTIONS | 3 B elow are brief answers to 20 of the most common questions about trademarks. 1. What does it mean to “trademark” a business or product name or logo? When people say they plan to “trademark” a name or logo, they generally mean they intend to register the name or logo with the U.S. Patent and Trademark Office (PTO). Though federal registration provides important benefits, trademark ownership is actually determined by who uses the mark first in a commercial setting. So, by using a name, logo, or other symbol to identify goods or services in the marketplace, a trademark has been created and trademark ownership has been established. 2. What is the difference between a trademark and a service mark? A trademark is any name, logo, symbol, or other device used to distinguish a product from competing products in the marketplace and to identify the product’s source. A service mark is any name, logo, symbol, or other device used to distinguish a service from others in the marketplace and to identify the source of the service. Legally, there is no difference between the two terms, and the terms “trademark” and “mark” are often used for all types of marks, including service marks. 3. How long does it take to get a trademark registered? The typical time it takes to federally register a trademark is between 12 and 18 months. 4. Suppose I register a trademark for a particular product. What happens when I want to use the same trademark for a different product? Each product or service is categorized within a class. If you begin using your trademark on a product or service in a different class than the one for which you originally registered your mark—for example, you use your logo on a paint product when you originally registered it for painting services—you should file another application to register the new use of the mark (in the appropriate class). However, you must check that the mark is not being used by another business for a similar product. If it is, you may need the assistance of a trademark attorney before proceeding. 5. Can I apply to register a logo, name, and slogan all in one application? What happens if I want to use them separately? If you want to use and protect each separately, you should register each separately. However, you can—if you wish—register them as one trademark and claim rights for the cumulative use. 6. What happens if I register my mark but later find out that someone else was already using the mark but never got around to registering it? If the other mark was being used nationally, as is the case with most catalog and Internet sales, then your trademark registration may be subject to cancellation. In any event, the registration will not protect you from an infringement suit if the first user can establish that your use of the mark 4 | TRADEMARK: LEGAL CARE FOR YOUR BUSINESS & PRODUCT NAME is creating the likelihood of customer confusion. If the other mark was only being used locally, you will probably be entitled to use the name in any region of the country where the first user had not established a presence. 7. I’ve been told to do a trademark search before applying to register my mark. Why should I, if the PTO does one when it gets my application? There are three good reasons: (1) Filing an application for federal trademark registration costs $325 if filing electronically ($375 if filing a paper application). There is no point in filing an application for a name that the PTO will reject because it’s already owned by someone else. (2) It is up to you to decide whether the mark you eventually choose is both registrable and free from infringing an existing mark. The PTO may find a potentially confusing mark in the course of its search but still decide to register your mark on the basis of its internal guidelines. However, the PTO’s decision to register your mark doesn’t get you off the hook if the owner of the existing mark decides to take you to court. (3) The PTO search primarily covers the federal trademark register, not trademarks that are in use but not registered. Because use, rather than registration, determines ownership, the PTO search will not be as complete as your own search of both registered and unregistered marks. 8. What is a “common law” trademark, and what rights does it give me? A common law trademark is any device (name, logo, slogan, etc.) that is being used to identify a business’s goods or services in the marketplace and has not been registered with a state government or with the federal government. The owner of a common law trademark that is used in more than one state can use the federal courts to enforce its rights in the parts of the country where the mark is being used. 9. Why should I bother to register a trademark I’m already using on my business or products if I already have rights under the common law? It’s a lot easier to win a federal lawsuit against later users by establishing certain presumptions—facts that you don’t have to prove in court and the other side must rebut. Federal registration gives you two presumptions: that you are the mark’s owner, and that the later user deliberately copied the mark. These presumptions also make it easier to prove infringement and collect damages and attorneys’ fees. 10. Can I do the application myself or should I hire an attorney? Most people can handle their own trademark applications without an attorney. The PTO provides easy-to-use instructions for filing your own trademark registration online using its Trademark Electronic Application System (TEAS) at its website (www.uspto.gov). If, however, you have questions that the PTO or online registration help files [...]... Legal Care for your Business & Product Name ( ­including nonfunctional unique packaging) that serves to identify a specific product brand for instance, Xerox (a name for a brand of photocopiers), Just Do It (a slogan for a brand of sport shoes and sportswear), Apple’s rainbow apple with a bite missing (a symbol for a brand of computers), the name Coca-Cola in red cursive lettering (a logo for a brand... specific brand of service for instance, McDonald’s (a name for a brand of fast food service), Kinko’s (a name for a brand of photocopying service), ACLU (a name for a brand of legal organization), Blockbuster (a name for a brand of video rental service), the U.S Postal Service’s eagle in profile (a symbol for a brand of package-delivery service), CBS’s stylized eye in a circle (a symbol for a brand of... affect business • how to choose the best trademark for your business • how to check to see whether other businesses are using similar trademarks • how to federally register your trademark • the relationship between domain names and trademarks • how to maintain your trademark once you’ve got it • how to evaluate claims of trademark infringement, and 10  |  Trademark: Legal Care for your Business & Product. .. adopted by new businesses to identify themselves in the m ­ arketplace is their name For the purposes of trademark law, there are two main types of business names: • the formal name of the business, called its trade name, and • the name the business uses to market its products or services, alternatively referred to as a trademark, “service mark,” or just plain “mark.” For most small businesses, this... to handle them However, 26  |  Trademark: Legal Care for your Business & Product Name if you want more information on your state’s trademark registration procedure and trademark laws, contact your state trademark registration office You can also obtain more state trademark information at either Marksonline (www.marksonline.com) or the All About Trademarks website (www.ggmark com) Not All Business Names... that protects your business name Our goal in writing this book is to do just that—to give you everything your business needs to secure and protect your name efficiently and at a reasonable cost With that in mind, this book plots a course for small business owners The first half of the book deals with choosing and registering a trademark and the second half deals with preserving your rights and staying... Almost all legal problems involving business names arise when a business name is used as a trademark—that is, used to build a customer base for the ­ usiness and not when the b name is used as a trade name simply for billing, banking, and tax purposes The distinction between a trade name and a trademark can be a little confusing at first, because many businesses use at least a part of their trade name as... the business world, the name of a successful product or service contributes greatly to its real worth Every day, names such as Allendale Auto Parts or Building Blocks Day Care identify these businesses for their customers, help customers find them, and (assuming they ­ rovide a good p product or service) keep the customers coming back again and again And it’s not just a clever business or product name. .. Trademark: Legal Care for your Business & Product Name • The court will usually find that a mark was deliberately copied if the mark was listed on the federal trademark Principal Register at the time it was copied Ideally, just knowing basic trademark p ­ rinciples should be enough to answer all your questions and get you started on the road to choosing a clever name for your ­ usiness or product But... the ones offered by your business • Don’t try to piggyback your marketing efforts on a well-known trademark b ­ elonging to another business For e ­ xample, don’t call your new Web design service “Jetscape.” • Don’t choose a domain name for your business that is the same as the trademark of an existing business; if you do, you may be accused of infringement (if you have similar products or services), . a specific brand of service for instance, McDonald’s (a name for a brand of fast food service), Kinko’s (a name for a brand of photocopying service), ACLU (a name for a brand of legal organization),. 25 Not All Business Names Are Trademarks 26 Trade Name Formalities 27 Trade Name Registration Requirements 27 e Legal Relationship Between Trade Names and Trademarks 30 Trade Dress and Product. Protected as a Trademark 33 If Your Product Design Is Both Functional and Novel 34 A Trademark Primer 1 CHAPTER 12 | TRADEMARK: LEGAL CARE FOR YOUR BUSINESS & PRODUCT NAME Sources of Trademark