The trademark guide how you can protect and profit from trademarks, 3rd edition

Copyright © 2018 by Linda Lee Wilson All rights reserved Copyright under Berne Copyright Convention, Universal Copyright Convention, and Pan American Copyright Convention No part of this book may be reproduced, stored in a retrieval system, or transmitted in any form, or by any means, electronic, mechanical, photocopying, recording or otherwise, without the express written consent of the publisher, except in the case of brief excerpts in critical reviews or articles All inquiries should be addressed to Allworth Press, 307 West 36th Street, 11th Floor, New York, NY 10018 Allworth Press books may be purchased in bulk at special discounts for sales promotion, corporate gifts, fund-raising, or educational purposes Special editions can also be created to specifications For details, contact the Special Sales Department, Allworth Press, 307 West 36th Street, 11th Floor, New York, NY 10018 or info@skyhorsepublishing.com 22 21 20 19 18 54321 Published by Allworth Press, an imprint of Skyhorse Publishing, Inc., 307 West 36th Street, 11th Floor, New York, NY 10018 Allworth Press® is a registered trademark of Skyhorse Publishing, Inc.®, a Delaware corporation www.allworth.com Cover design by Mary Belibasakis Library of Congress Cataloging-in-Publication Data Names: Wilson, Lee, 1951- author Title: The trademark guide: how you can protect and profit from trademarks / Lee Wilson, Attorney-at-Law Description: Third edition | New York, New York: Allworth Press, an imprint of Skyhorse Publishing, Inc., [2018] | Includes index Identifiers: LCCN 2018001116 (print) | LCCN 2018010308 (ebook) | ISBN 9781621536338 (eBook) | ISBN 9781621536321 (hardcover: alk paper) Subjects: LCSH: Trademarks Law and legislation—United States—Popular works Classification: LCC KF3180.Z9 (ebook) | LCC KF3180.Z9 W55 2018 (print) | DDC 346.7304/88—dc23 LC record available at https://lccn.loc.gov/2018001116 Hardcover ISBN: 978-1-62153-632-1 eBook ISBN: 978-1-62153-633-8 Printed in the United States of America Note: It is important to remember that although this book contains reliable information, the law changes, and interpretations of the law vary No book can offer sufficient advice to guide anyone in a specific situation Use the information in this book to educate yourself so that you can recognize when you have a problem Then, ask a lawyer well versed in intellectual property law to advise you about your particular concerns if you feel that your own understanding of the law or skills for handling your problem are inadequate Dedication This book is dedicated to my old friend and business partner Bill King, my favorite serial capitalist, whose accomplishments in the business world are proof that good ideas and hard work are rewarded in a free enterprise society Contents Introduction Chapter 1: Understanding Trademarks Chapter 2: Trademark Infringement Chapter 3: Trademark Clearance Chapter 4: Trademark Selection Chapter 5: Trademark Protection Chapter 6: Trademark Lawyers Chapter 7: Trademark Usage Chapter 8: Trademark Licensing Chapter 9: Other People’s Trademarks Chapter 10: Trademarks in Cyberspace Appendices Appendix A: Trademark Cease and Desist Letter Appendix B: Basic Facts about Trademarks Appendix C: US Trademark Office FAQs Glossary Index Introduction As more and more of the wealth of our country becomes embodied in intellectual property, it becomes increasingly important for businesspeople to grasp the basics of intellectual property law Almost everyone has a hard time remembering the difference between the three major sorts of intellectual property: trademarks, copyrights, and patents Trademarks are the subject of this book Before you can completely understand trademarks, however, you need a passing knowledge of copyrights and patents After we briefly distinguish trademarks from copyrights and patents, we’ll consider trademarks in detail Although all three protect products of the human imagination, trademarks, copyrights, and patents are distinct but complementary types of intellectual property Each is governed by a different federal law The copyright and patent statutes both originate in Article I, Section 8, Clause of the Constitution, which empowers Congress “to Promote the Progress of Science and useful Arts, by securing, for limited Times to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.” Our federal trademark statute originates in the “commerce clause” of the Constitution, which gives Congress the power to regulate interstate commerce Only our federal government regulates copyrights; copyright registrations are granted by the Copyright Office, which is a department of the Library of Congress Similarly, only the federal government can grant a patent However, although the federal government grants trademark registrations, so all fifty states And for complicated reasons, the US Patent Office and the US Trademark Office are two halves of the same division of the Department of Commerce, called the United States Patent and Trademark Office Confused? It gets easier In fact, the best way to understand copyrights, patents, and trademarks is to consider them together, in relation to each other COPYRIGHTS A copyright is a set of rights that the copyright statute gives to the creators of artistic, literary, musical, dramatic, and audiovisual works Only the person who created the copyrighted work is legally permitted to reproduce, perform, or display it, distribute copies of it, or create variations of it; any unauthorized exercise of any of these rights is called “copyright infringement” and is actionable in federal court Since January 1, 1978, in the United States, a copyright is created whenever a creator “fixes” in tangible form a work for which copyright protection is available Under most circumstances, a copyright will endure until seventy years after the death of the creator of the copyrighted work; after copyright protection expires, a work is said to have fallen into the “public domain” and anyone is free to use it Registration of a copyright enhances the rights that a copyright owner gains automatically by the act of creation, but is not necessary for copyright protection The chief limitation on the rights of copyright owners is that copyright protects only particular expressions of ideas rather than the ideas themselves This means that several people can create copyrightable works based on the same idea; in fact, there is no infringement no matter how similar one work is to another unless one creator copied another’s work (For more information about copyrights, see The Copyright Guide, Fourth Edition, by Lee Wilson, published by Allworth Press.) PATENTS A patent is a monopoly granted by the US Patent Office for a limited time to the creator of a new invention In the language of the patent statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law According to the Patent Office, A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees US patent grants are effective only within the United States, US territories, and US possessions Under certain circumstances, patent term extensions or adjustments may be available The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States What is granted is not the right to make, use, offer for sale, sell, or import, but the right to exclude others from making, using, offering for sale, selling, or importing the invention There are three types of patents: Utility patents (which generally endure for twenty years from the date on which the application for the patent was filed in the United States) may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; Design patents (which endure for fifteen years if issued after May 13, 2015) may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and Plant patents (which endure for twenty years from the date on which the application for the patent was filed in the United States) may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant An inventor must meet very strict standards before the Patent Office will grant a patent for his or her invention; then, the inventor can stop everyone else from manufacturing the invention without permission or even importing an infringing invention into the United States, even if the infringer of the patent independently came up with the same invention No product name is protectable by patent law; a product name is a trademark and trademark protection is earned in the marketplace rather than being awarded like a patent And no song, story, painting, or play can be patented; copyright gives writers and artists the right to keep others from copying their works, but not a complete monopoly on the creation or importation of similar works (For a more detailed discussion of patent law, see The Patent Guide, Second Edition, by Carl Battle and Andrea Small, from Allworth Press and consult the US Patent Office website at https://www.uspto.gov/patent.) TRADEMARKS Trademarks are (usually) words or designs that identify products or services to consumers Unlike copyrights, in which their creators have protectable rights from the inception of the copyrighted work, rights in a trademark accrue only by use of the trademark in commerce and then belong to the company that applies the mark to its products rather than to the person who comes up with the name or designs the logo that becomes the trademark Roughly speaking, a company gains rights in a trademark in proportion to the geographic scope and duration of its use of the mark Ordinarily, the company that uses a mark first gains rights in that mark superior to any other company that later uses it for the same product or services Unauthorized use of a trademark is trademark infringement Trademark infringement is a commercial sin It is one of the more common forms of a large and not-very-well-defined area of the law called “unfair competition.” Basically, the law of unfair competition has, over the years and in numerous cases, labeled certain efforts at commercial competition “unfair”—even fraudulent—because they are too aggressive or less than honest Unfair competition is, generally speaking, competition by dirty tricks, although several forms of unfair competition can result from otherwise innocent blunders By declaring certain actions “unfair” in commerce, the courts seek to promote both free competition and fair competition Among the types of trademark-related commercial conduct that have been held to constitute unfair competition are: • • • • • • • trademark infringement; trademark dilution; use of confusingly similar business names; use of confusingly similar literary items; unauthorized use of a distinctive literary or performing style; copying a product’s trade dress and configuration; and infringement of the right of publicity Not every action that has been or could be labeled unfair competition is codified, that is, named and written down in a statute Judges may add to the list of unfair business tactics as new situations are presented that seem to them to entail overreaching by a marketer As is the case with copyrights, registration enhances rights in trademarks but does not create them It is generally easy to register a mark within a state, but federal trademark registration, which confers much greater benefits, is more difficult to obtain Trademark rights last indefinitely; as long as a mark is used in commerce, its owners have protectable rights in it A trademark represents the commercial reputation of a product or service as embodied in, usually, a word or design Trademark law prohibits certain trade practices that are considered unfair, such as the imitation of another’s trademark in order to profit from consumers’ mistaken belief that the imitation trademark and the product it names are authentic This is trademark infringement Trademark law exists to protect consumers It ensures, for instance, that when you buy a pair of running shoes marked with the NIKE® name, they are of the high quality you have come to expect in NIKE products because they are, indeed, manufactured by NIKE (Lawyers use capital letters to indicate the precise verbal content of trademarks We’ll the same with all trademarks and with all titles, slogans, and names used like trademarks.) And in protecting consumers, trademark law also protects the interests of trademark owners—their understandable desire to market their products without interference from other marketers who seek to trade on their fame The two things anyone who markets a product needs to know about trademarks are how to choose them and how to use them Choosing a new product name is not a simple undertaking, or should not be Certain kinds of names are not registrable as trademarks with the US Patent and Trademark Office The knowledgeable businessperson who christens a new product will take these restrictions into account, since federal registration is, or should be, the goal of every trademark owner The other major consideration in choosing a trademark is picking one that no one else is using This process is called “trademark clearance.” You ignore it at your peril, since adopting and using someone’s established trademark, even innocently, is trademark infringement, and trademark infringement can result in lawsuits that are expensive to settle and hopelessly expensive to defend In the United States, trademark ownership accrues by use of the trademark in commerce Unless a trademark is used in the marketplace, there is no trademark, because there is no commercial reputation that can be symbolized by the word or design Roughly speaking, trademark owners earn the right to prevent others from using the same design or word to represent or name a product or service similar to theirs in direct proportion to the extent of their use of that name or design, geographically and otherwise The owner of the two BIJOU theatres in northeast Idaho can probably keep other theatres and entertainment venues from using BIJOU in their names, but only within the same general area Unless the fame of the BIJOU theatres—their commercial reputation—has spread beyond the geographic area where they are located, the owner of the BIJOU trademark can prohibit the use of the name only within the same area The long-standing and widespread fame of New York’s RADIO CITY MUSIC HALL, however, allows the company to stop the use of that or any confusingly similar name for any concert or entertainment venue anywhere in the United States The RADIO CITY MUSIC HALL name is now understood by even those who have never been there to refer to the famous theatre Because the reputation of the entertainment destination has spread across the entire United States, US trademark law prohibits any entertainment venue anywhere in the country from appropriating the RADIO CITY MUSIC HALL name, even though, arguably, someone who buys a ticket for a show in Oklahoma is not a potential buyer for a ticket for the same date in New York What matters in the case of famous marks is that similar or identical names are likely to create the idea in the mind of consumers that two commercial entities are somehow associated even when they are not Once a trademark is “cleared for takeoff” and is in use, how the mark is used is very important If a trademark is used as a noun rather than as an adjective (“WINKLES” rather than “WINKLES toy trucks”), it can lose its status as a trademark That’s what happened to “aspirin,” “cellophane,” and “escalator,” all of which once named particular brands of the products for which they are now the generic names If the ® symbol is not used properly in conjunction with a federally registered trademark, the trademark owner’s right to collect money damages in a lawsuit against a trademark infringer may be diminished In the abstract, these may seem like niggling considerations In actuality, proper trademark usage can be crucial to the overall health of the company that owns the mark, since the trademark may represent the most valuable asset of the company, its goodwill The Xerox Company thinks so, at least Otherwise it would not run thousands of dollars’ worth of ads every year pointing out that photocopiers are not “xerox machines” and that its machines are “XEROX® brand photocopiers.” Xerox doesn’t want to end up like the Otis Elevator Company, whose famous ESCALATOR ironically lost its uniqueness because of that very fame, thanks to the popularity and success of the moving stairways marketed under the ESCALATOR name When the name ESCALATOR became a generic term applicable to all moving stairways, the ESCALATOR moving stairway was demoted to “escalator” and faded into the woodwork, so to speak, becoming so famous it became anonymous The Xerox ads emphasizing the proper use of the XEROX trademark have been joined in recent years by similar protests (in the form of “cease and desist” letters to journalists and others who use name as a lower-case verb: “google”) pointing out that GOOGLE® is a trademark rather than a synonym for “to use the Google search engine to gather information on the Internet.” The chapters that follow contain the rest of the story I hope I have told it well, because trademarks and the law and their interaction have been a major focus of my practice for more than half my working life Like many English majors, after graduation from college I looked for areas of commerce where my love of language could be useful I tried most of the usual ones I was a newspaper reporter I wrote and produced advertising for several years And I supported myself—badly—during law school by working as a freelance writer But I had missed one interesting area of the law that is especially suitable for anyone who cares about the effects of language (and symbols) on human behavior—trademark law Then, during my second and third years of law school, I clerked for a crusty but kind intellectual-property lawyer named Edwin Luedeka, who one day pointedly told me “trademark law is a good field for a woman.” And for English majors, I found Trademark law is more like linguistics than any other area of the law Once you grasp the real nature of trademarks, the intricacies of trademark law seem logical And the importance of trademarks is hard to overstate, because nearly every dollar spent in our capitalistic society is directed into one corporate pocket rather than another because of the reputation of the product or service purchased, which is represented by its trademark This book is designed to be a primer for anyone who creates or uses trademarks, which is just about everyone employed in any management position in American business, whether that business is a one-person, headquarters-at-home, cottage industry or a giant corporation that employs thousands of people Since I have nibbled several of the edges of American business and have practiced trademark law for more than thirty years, I believe I am well suited to talk about the issues, concerns, and problems of both trademark owners and of those who encounter trademarks in their business life and must know how to choose, handle, and protect them My long-time tutor in matters of business, especially startup businesses, is my friend and former business partner Bill King, to whom this book is dedicated I am also indebted to another friend and lawyer, Larry Woods, for some of the ideas and insights in chapter 6; his years of experience helped me expand my own observations beyond the one-person-one-viewpoint barrier that faces anyone who writes on topics as broad as the legal profession N NABISCO®, 79 “naked licensing,” 140 names, serving as trademarks, 2, see also verbal marks names, trademark See naming a product; trademark name selection naming a product, xiii–xiv see also trademark name selection; trademark searches challenges in, patent vs trademark protection and, xi–xii trademark infringement and, 11–14, 33 trademark searches and, 45 naming software, 78 National Pork Board, 17–18 national symbols, trademarks disparaging, 60–61 nature, trademark names inspired by, 79–80 NBC®, NEUTROGENA®, 168 New England Patriots AFC Championship and Super Bowl t-shirts, 31 Newman, Paul, NEWMAN’S OWN®, New York Public Library, 164 nicknames, serving as trademarks, Nike, 56 NIKE®, 4, 6, 79, xiii Notice of Allowance (NOA), 222–223, 230 Notice of Appeal, 228–230 notice of federal registration See “circle R” ® symbol Notice of Opposition, 134 Notice of Publication, 94, 221 Notification of ‘Notice of Publication,’ 221 nouns, using trademarks as, xiv, 131, 154 NOVA®, 80–81 NOW® (National Organization for Women), 82 numbers, trademarks using, 83 NYQUIL®, 79 nyt.com, 175–176 NYTOL®, 83 O OBSESSION®, OCLC Online Computer Library Center, Inc., 164–165 offensive names, denial of trademark registration and, 58–59 Office Action (US Trademark Office), 94, 220–221, 227, 228, 229, 231 Official Gazette for Trademarks, 96, 134, 209, 221, 227, 228, 229, 230 Omega Corporation, 11–13 1-800-HOLIDAY®, online filing See electronic filing opposition (objection to the trademark registration), 96, 134, 207, 221, 227, 228, 229 OPRAH® television show, 64 OREO®, 79 Otis Elevator Company, xv, 130 overall commercial impression, 22, 28, 195, 238 overused words, for trademark names, 82 owner of the mark, on federal trademark registration application, 207–208 ownership of a trademark See trademark ownership ownership rights, intent-to-use applications and, 98 ownership statement, comparative advertising and, 150–151 P package design, serving as trademarks, packaging design, trademark infringement and, 22–23 paper applications for trademark registration, 100, 101, 206, 213 paper filing, 101, 205, 211 parody, trademark, 152–153, 156–158 Parton, Dolly, 64 Patent and Trademark Resource Center (PTRC), 205, 225 The Patent Guide, Second Edition (Battle and Small), xii patents about, x–xi definition, 238 federal law and, ix term on a, x–xi trademarks vs., xi–xii, 191 types of, xi, 238–239 PEANUTS®, “personality” of a trademark, 81–82 personal names, registration of trademarks using, 68–69 persons, trademarks using the name or likeness of living, 63–64 PETER PAUL MOUNDSALMOND JOY®, phone calls, to/from lawyers, 122–123 phone calls, trademark attorneys returning, 114–115 photographs, incidental use of someone else’s trademark in, 148–149 Pilates, Clara, 137–138 Pilates, Joseph, 137–138 The Pilates method, 137–138 Pilates method/equipment, 137 The Pilates Studio, 137 PILLSBURY®, place names, registration of trademarks using, 66–67 plant patents, xi, 239 PLEDGE®, 4, 168 POCKET BOOK, 136 policing trademarks, 133–135 POLO®, POST-IT®, 130 PRIMAL THERAPY, 136 Princeton Review, 175 Principal Register, 96 filing options, 204–205 Principal Register registrations, 96, 97 Principle Register, 73, 76, 242 priority of use, trademark ownership and, privacy concerns, federal trademark registration application and, 208–209 product characteristics, serving as trademarks, 5–6 product names See naming a product; trademark clearance product/services provision, in licensing agreement, 141–142 PROM, 136 pronunciation of names, trademark infringement and, 24–25, 29–30 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 41–42, 102–103 PRUDENTIAL®, publication of a mark, 227, 228, 229 public domain copyright and, x “published for opposition,” 94, 96, 134, 221 PURINA®, 159–160 Purina Mills, 159–160 Q QUAKER OATS®, quality control provision, in trademark licensing agreements, 142 quality specifications, in licensing agreement, 142 R radio call letters, serving as trademarks, RADIO CITY MUSIC HALL, xiv Reebok, 49–50 REEBOK®, 79 referrals, lawyer, 108–109 registrars, domain name, 36 registration copyright, x, ix of domain names, 192 trademark.See trademark registration regulation see also trademark law(s) of copyrights, ix federal vs state, 89 rejection of a trademark application applicants responding to, 95 confusingly similar marks, 57–58, 94–95 deceptively misdescriptive marks, 65–66 disparaging restriction, 60–62 functionality requirement, 58 geographically descriptive or deceptively misdescriptive marks, 66–68 immoral, deceptive, or scandalous marks, 58–60 likelihood of confusion factors, 193–194 marks consisting of or simulating flag/coats of arms/insignia, 62–63 marks using names/portraits/signature of a living individual without consent, 63–64 “merely descriptive” marks, 64–65 miscellaneous grounds for, 199–200 options available to you after, 95–96 relatedness of goods and services and, 196–197 similarity of marks and.See similarity between marks for small technicalities, 94 substantive grounds for, 94–95 Ten Deadly Sins of Trademark Selection, 46, 57–69, 95, 169 trademark lawyers and, 101 use of surnames, 68–69 religions, trademarks disparaging, 61 renewal federal registration, 9, 98–99, 141, 232 state registrations, 90–91 reports, trademark search, 54 “Request for an Extension of Time to File a Statement of Use,” 222 Request for Extension of Time to File a Statement of Use, 223 retainer fees, 121, 123 REVERE WARE®, 93 “right of publicity,” 63–64 ROLLERBLADE®, 130, 131 RONALD MCDONALD®, 4, 5, 17 royalty income, 139, 143–144 RUBBER ROPE, 136 S SAFE T PLUG, 136 SARA LEE®, 69 scandalous names, denial of trademark registration and, 58–59 S.C Johnson Company, 168 screening interviews, with trademark attorneys, 111–114 screening (trademark) search databases used for, 39 directories used for, 38–39 explained, 34, 46–47 extent of, 35 foreign trademarks used for, 41–43 Internet domain names, 36 resources and equipment for, 35 search engine searches, 37–38 as shortening further trademark searches, 43 state trademark records used for, 39–41 through US Patent and Trademark Electronic Search System (TESS), 35–36, 200–201 search engines, 37–38, 174 see also Google searches searching a trademark See full (trademark) searches; screening (trademark) search secondary meaning, 7, 26, 68, 73, 96, 239 Section declaration, 224, 231–232 Section declaration, 224 serial numbers, assigned to registration applications, 93, 94, 220, 227 series names, 8–9 service marks, 2, 239 SESAME STREET® theme song, SHASTA®, 15 Shell Oil Company logo, 15 SHREDDED WHEAT, 137 “sight, sound, and meaning test,” 14, 52, 57–58, 241 signature, on trademark registration application, 219 similarity between marks, 194–195 see also “confusing similarity” between old and new marks in appearance, 195 in commercial impression, 195 evaluating, 14–17 examples of marks determined to have, 18–20, 22–32 examples of marks determined to not have, 20–21 likelihood of confusion based on, 94, 95 in meaning, 195 in sound, 194 singular use of trademarks, 131 Slants, the (rock group), 62 slogans, 4, 153, 217 SMITH BROTHERS®, 5, 68 SM symbol, 91, 127, 154, 203, 211 SOCIOGRAPHICS, 137 SOFTSOAP, 137 software programs, for creating new trademarks, 78 “SOMETIMES YOU FEEL LIKE A NUT, SOMETIMES YOU DON’T,” songs, serving as trademarks, sound, similarity of marks in, 52, 193 sounds, serving as trademarks, 5, SPAM®, 79 special form drawings, 210–211 specimens of use, 89, 92, 98, 215, 216–218, 223 SPECTRUM, 27 SPLENDA®, 168 sports clothing, “re-creating,” 30–32 spouses, giving consent to use of trademarks, 64 Sprint Communications, 175 standard character drawings, 210 Stanley Kaplan Review, 175 STARBUCKS®, 82 STAR WARS®, state maps, logos of, 67 Statement of Use (SOU), 230, 231 “Statement of Use” (SOU), 222, 223 state regulation of trademarks, ix state trademark records, for trademark searches, 39–41 state trademark registrations, 2, 57, xiii applying for, 89–90 benefits of, 90 federal registrations vs., 89 following rules for use of, 91 renewing, 91–92 statutory damages, 239–240 Stewart, Martha, 69 strong trademarks, 14–15, 197–199 substantive rejections of registration application, 94 subtle marks, 70 SUGAR FOOT, 53–54 suggestive marks, 70–73, 198 SUPER GLUE, 137 Supplemental Register, 70, 76, 95–97, 242 SURGICENTER, 137 surname trademarks, 68–69, 96, 242 SWEET FEET, 53–54 symbols trademark infringement and, 23–24 trademarks disparaging, 60–61 symbols, trademark see also “circle R” ® symbol; TM symbol importance of, 51–52 special form drawings and, 211 where to use, 203 T “TASTES SO GOOD CATS ASK FOR IT BY NAME,” TEAS Plus, 204–206, 208, 213, 214 TEAS Reduced Fee (TEAS RF), 204–206, 208, 214 TEAS Regular, 204–206 telephone numbers, serving as trademarks, telephone-type directories, 38 television call letters, serving as trademarks, Ten Deadly Sins of Trademark Selection, 46, 57–69, 70, 95, 169 termination provisions, in licensing agreement, 143 term of a patent, x–xi term provision, in licensing agreement, 141 territory provision in licensing agreements, 141 TESS (Trademark Electronic Search System), 35–36, 94, 99, 200–201 Texaco logo, 52–53 THE COMPUTER STORE, 136 THE PILL, 136 THERMOS, 137 thesaurus, creating names and, 80 “This bud’s for you” slogan, 153 ThomasNet, 39 Thomas Register of American Manufacturers, 39 THUNDERBIRD®, 80 Tiffany brand, 59 TINKER TOYS®, 15 TM symbol, 91, 127, 151, 203 TOMMY HILFIGER®, TOM’S OF MAINE®, top-level Internet domain name (“TLD”), 170–172 Toucan Gold, Inc., 163 TOYOTA®, TOYS “R” US®, 83 trade dress infringement, 22–23, 240 trademark(s) see also famous marks; generic trademarks/genericness compared with copyrights and patents, xi–xii, 191 definition, 1, 191, 240 domain names vs., 192 explained, xii functions of, 1–2 law of unfair competition and, xii–xiii product elements not serving as, 6–9 product elements serving as, 4–6 trademark abandonment, 34, 47, 50–51, 128, 228, 229, 230–231, 240 Trademark Act of 1946, 91, 220 Trademark Assistance Center (TAC), 92n1, 204, 205, 206, 213, 220, 224–225 trademark clearance, xiii–xiv see also full (trademark) searches; trademark searches checklist for, 45–51 design/visual trademarks, 51–53, 55–56 finding out origin or proposed marks and, 46 image plus word trademarks, 53–54 narrowing list of proposed marks, 46 need for, 33–34 trademark counterfeiting, 30–32 trademark creation See trademark name selection trademark dilution, xii, 84–87 Trademark Dilution Act (1995), 30, 84, 147, 152, 161 Trademark Dilution Revision Act (TDRA), 47, 84–87, 241 trademark disparagement, 149, 163 Trademark Electronic Application System (TEAS), 204–205 Trademark Electronic Search System (TESS), 35–36, 94, 99, 200–201 Trademark Fee Information, 223 trademark genericness See generic trademarks/genericness trademark infringement, xii, 11–32 see also lawsuits categories of products/services named by the marks and, 16 costs and consequences of, 12, 13, 59–60 deceptive marks and, 59 definition, 241 evaluating similarities between design marks, 52–53 evaluating similarities between marks, 14–17 example of, xiii examples of marks that are confusingly similar, 18–20 examples of marks that are considered, 22–32 examples of marks that are not confusingly similar, 20–21 for logos/design marks, 16–17 naming a product and, 11–14, 33 policing a trademark, 133–135 preventing, 13 see also trademark clearance settling trademark issues before going to court, 134 “sight, sound, and meaning test,” 14, 52 state registration of trademarks and, 90 trademark clearance and, xiv trademark parody and, 153 use of someone else’s trademark and, 155–163 trademark law(s), xv–xvi see also individual names of laws function of, importance of trademark lawyers and, 105 not prohibiting nontrademark uses of someone else’s trademark, 149–150 scope of protection by, 147–148 searching foreign trademark records and, 41 state, 90 trademark lawyers, 105–125 fees, 12, 119–120, 123–124 finding a, 47, 107–110, 202 following advice of, for trademark searches, 49–50 foreign trademark record searches and, 41 geographic location of, 109 helping you during and after trademark application process and, 99–100, 201–202 hired to oversee trademark usage, 133 how to find, 100, 202 Internet search printouts brought to, 37 Internet trademark mills vs., 106 interview meetings with, 111–114 investigating recommended, 109–110 licensing agreements and, 140, 144–145 “mortal sins” committed by, 120–121 providing necessary information to, 121–122 responses to rejection of registration applications, 95 right attitude toward, 124 screening interviews/meetings with, 111–114 signs of a good, 114–120 trademark agreements and, 140, 144–145 trademark searches by, 34 uses of, 105–106 using for selection of trademarks, 70 trademark licensing, definition, 241 see also licensing, trademark/license agreements Trademark Manual of Examining Procedures (TMEP), 71–76, 93–94, 117, 170–171, 173, 189, 199–200, 216, 218, 222 trademark name(s) see also naming a product; trademark name selection made possessive, 131 singular vs plural use of, 131 used as an adjective vs a verb, 131 used as a noun vs an adjective, xiv–xv, 131 trademark name selection see also naming a product acronyms and, 82 arbitrary marks, 70, 71 committee formed for, 77 descriptive marks, 70–71 fanciful marks, 71 fitting your commercial personality, 81–82 generic terms and, 70, 76 initials and, 82 inspired by nature, 79–80 inspired by world cultures, 80 Internet addresses and, 83–84 language and, 80–81 marrying two or more words, 79 merely descriptive marks and, 73–76 misspelled words and, 83 numbers and, 83 overused words and, 82 protecting famous marks from imitations/dilutions, 84–87 suggestive marks, 70–71, 70–72 Ten Deadly Sins of, 57–69 thinking of a name that has never existed, 77–78 using an uncommon word in a new way, 79 using common words in uncommon ways, 78 trademark ownership see also trademark protection being the first to use a trademark and, 2–3, 14 created by use of a mark, 2, 14 fending off infringers, 133–135 intent-to-use applications and, 98 trademark parody, 152–153, 156–158 trademark protection see also trademark registration from dilution, for famous marks, 84–87 maintaining your registration, 98–99 outside the United States, 102–103, 216 trademark registration definition, 241–242 design elements of trademarks and, 69 enhancing the rights of trademark owner, federal.See federal trademark registration grounds for rejection of, 6–9 increase in number of applicants for, international protection, 102–103 opposition proceedings, 94, 134 perpetuating existence of a moribund trademark, registrability of marks comprised of domain names, 170–171 state, 57, 89–91 state trademark records, 39–41 state vs federal, xiii, 40 ten reasons for denial of federal, 57–69, 243–244 Trademark Office exceptions, whims, and inconsistencies, 69 trademark rights duration of, xiii, 224 examples, xiv loss of reputation of trademark and, registering a trademark extending your, 50–51 Trademark Rules of Practice, 220 trademark searches see also full (trademark) searches; screening (trademark) search; trademark clearance definition, 242 design-only marks, 55–56 intent-to-use applications negating danger of a “stale” search report, 51 lawyers sending you copies of, 115 preventing trademark infringement with, 13 reasons for, 200 state registration of trademarks and, 90 trademark selection See trademark name selection Trademark Status and Document Retrieval (TSDR), 208, 220 trademarks, use of someone else’s see also trademark infringement for comparative advertising, 149–152, 160–161, 161–162 dividing line between safe and unsafe, 147–148 four rules regarding, 154–155 incidental use, 148–149, 158–160, 161–163 marketing a product under a name that is a parody of another mark, 152–153 trademark symbols See “circle R” ® symbol; TM symbol Trademark Trial and Appeal Board (TTAB), 95, 96, 228, 229–230 trademark usage, 125–138 see also generic trademarks/genericness; trademarks, use of someone else’s abandonment, trademark, 128 appointing a trademark czar for, 133 “death” of trademarks and, 127 grammatical, 131–132, 154 guidelines for, 132–133 in licensing agreement, 142–143 policing a trademark, 133–135 proper, xiv–xv ®symbol of registration, 125–127 trade publications, 135 TRAMPOLINE, 137 TUPPERWARE®, 130 TWINKLE BLOCKS, 15 TWINKLE TOYS, 15 U unfair competition, xii–xiii, 243 Unicorp, 12–13 Uniform Domain-Name Dispute-Resolution Policy (UDRP), 176–179 United States Patent and Trademark Office See US Patent and Trademark Office (USPTO) UNITED WAY®, UNI-TROL, 12 unregistered marks, 34, 48, 99, 202 unregistrable trademarks, 64, 243–244 see also generic trademarks/genericness; rejection of a trademark application US citizenship, federal trademark registrations and, 208 US Department of Justice, 32 use-based applications, 92–97 application process, 93–97 definition, 244 requisite elements for, 92 specimen for, 216–218 when to file, 90 use-in-commerce applications establishing, 215 intent-to-use applications vs., 214 registration certificate issues for, 221–222 use of mark requirements, 215 use of a trademark, trademark rights and, US Patent and Trademark Office (USPTO), ix, x, see also federal trademark registration Acceptable Identification of Goods and Services Manual (ID Manual), 206, 212–213, 214 attorneys, 201 Basic Facts about Trademarks, 47, 187–225 categorization of design marks, 55 classification system for goods and services, 47, 93 Design Code Search Manual, 55 examining offices, 93 exceptions, whims, and inconsistencies of, 69 federal trademark registration in the, 91 Frequently Asked Questions (FAQs), 233 full trademark search using records in, 47–48 helping you find an attorney, 100 number of applications received by, product names not registered with, xiii screening searches and, 35 trademark search websites offered by, 40 trademark symbols and, 91 website, 35, 225 what can and cannot be done by the, 204 US Patent and Trademark Office Electronic Search System (TESS), 35–36, 94, 99, 200–201 US Patent Office, ix, 91 see also US Patent and Trademark Office (USPTO) US Trademark Office, ix see also US Patent and Trademark Office (USPTO) utility of a product, buying decisions and, utility patents, xi, 238 V V8® juice, VAIO®, 83 Valu-Jet, 128 verbal elements of marks avoiding changes in, 131 “dilute” problem, 81–82 trademark searches and, 38, 48 verbal marks, dominant marks and, 29, 53 evaluating for similarities between marks, 16, 52 examples of strong, 15 with images, trademark clearance of, 53–54 trademark infringement and, 16, 24–26, 29–30 verbs, using trademarks as, 154, 155–156 VIDEO BUYERS GUIDE, 137 VISTA® (Volunteers in Service to America), 82 visual elements of marks/visual trademarks see also design elements of marks/design marks; logos avoiding “dilute,” 82 effectiveness of, 51 international commerce and, 29 trademark infringement and, 16, 23–24 VOLKSWAGEN®, VOLVO®, 2, 79 VW®, W WATERMAN®, 4, 68 “weak” marks, 197, 198–199 web addresses, 168–169, 192 see also domain names website domain names See domain names websites ICANN, 174 International Trademark Association (INTA), 154 listing search engines, 37 for searches of trademark registrations, 40 as a specimen for goods, 217 US Patent Office, xii US Trademark Office FAQs, 233 WENDY’S®, 69 “The Wesley Willis Fiasco Live EP,” 164 WHITE CASTLE®, WHITE SHOULDERS®, Whois search, 36 Willis, Wesley, 164 WILSON®, 68 WINDEX®, 168 windows95.com, 175–176 Winfrey, Oprah, 64 Wired magazine, 175 Woods, Larry, xv “woolmark” design logo, 15 words generic.See generic trademarks/genericness serving as trademarks, trademarks formed by marrying two or more, 79 words with images, trademark clearance, 53–54 WORK WEAR, 137 world cultures, trademark names inspired by, 80 World Intellectual Property Organization, International Bureau, 42, 103 World Wildlife Fund (WWF), 164 World Wrestling Federation (WWF), 164 WWF abbreviation, 164 www.thomasnet.com, 39 www.whitepages.com, 38 www.yellowpages.com, 38 X X-14®, 83 XEROX®, xv, 65, 129, 130 Xerox Corporation, xv, 129, 156 Y YO-YO, 130, 137 Z ZESTA®, 15 The Art of Digital Branding, Revised Edition by Ian Cocoran (6 × 9, 272 pages, paperback, $19.95) Brand Thinking and Other Noble Pursuits by Debbie Millman (6 × 9, 336 pages, paperback, $19.95) Business and Legal Forms for Graphic Designers by Tad Crawford and Eva Doman Bruck (8ẵ ì 11, paperback, 256 pages, $29.95) The Copyright Guide (Fourth Edition) by Lee Wilson (6 × 9, 304 pages, hardcover, $24.99) Design Thinking by Thomas Lockwood (6 × 9, 304 pages, paperback, $24.95) The Elements of Graphic Design (Second Edition) by Alex W White (8 × 10, 224 pages, paperback, $29.95) The Elements of Logo Design by Alex W White with Foreword by Jerry Kuyper (8 × 10, 224 pages, hardcover, $34.99) Emotional Branding by Marc Gobé with Foreword by Sergio Zyman (6 × 9, 352 pages, paperback, $19.95) Fund Your Dreams Like a Creative Genius by Brainard Carey (6⅛ × 6⅛, 160 pages, paperback, $12.99) How to Think Like a Great Graphic Designer by Debbie Millman (6 × 9, 248 pages, paperback, $24.95) Infectious by Achim Nowak (5ẵ ì 8ẳ, 224 pages, paperback, $19.95) Intentional Leadership by Jane A G Kise (7 × 10, 224 pages, paperback, $19.95) Legal Forms for Everyone (Sixth Edition) by Carl W Battle (8 × 11, 280 pages, paperback, $24.99) Legal Guide for the Visual Artist (Fifth Edition) by Tad Crawford (8ẵ ì 11, 304 pages, paperback, $29.95) The Patent Guide (Second Edition) by Carl W Battle and Andrea D Small (6 × 9, 356 pages, hardcover, $24.99) The Pocket Small Business Owner’s Guide to Building Your Business by Kevin Devine (5ẳ ì 8ẳ, 256 pages, paperback, $14.95) The Pocket Small Business Owner’s Guide to Business Plans by Brian Hill and Dee Power (5ẳ ì 8¼, 224 pages, paperback $14.95) To see our complete catalog or to order online, please visit www.allworth.com ... their trademarks Adopting the wrong trademark can land you in a lawsuit for trademark infringement, even if you had no knowledge when you chose your trademark that it might infringe another trademark. .. brainstorming, you reach a consensus You and your staff like the name UNI-TROL So the Omega marketing people, when you present the name to them They give you the go-ahead on the whole project and, simultaneously,... as popular as the other cookies made from your grandmother’s recipes People start buying your cookies by the bag, and it’s not long until your receipts exceed your expenses You and your cousin