Legal Goal: Consumer Protection Law: Prevent Likelihood of Confusion Prevent Dilution and Tarnishing of Famous Marks

Your Goals:

Build equity JUST DO IT!

Promote an image “I’d like to buy the world a _____.”

Quality assurance – create trust “You’re In Good Hands With _______.”

Build brand loyalty CLASSIC COKE

Describe your product Call to mind a competitor or trend

What is the Point?

Words, logos, slogans Motion, sound, color, scent,

texture Packaging, product design

Generic – APPLE for applies

Deceptively Mis-descriptive - WASHINGTON STATE for apples from Colorado

Merely Descriptive or Mis-descriptive – RED & CRISPY for apples; WASHINGTON STATE for apples; MILLER for apples

Suggestive – ROSE for apples

Arbitrary – APPLE for computers

Fanciful – AXON for apples

Stick with potentially strong marks Rule of Thumb: Avoid the obvious WHO,

WHAT, WHERE, WHY and the WHEN.com. Avoid acronyms Don’t get married before a search Be conscious of foreign translations or

meanings and generic words COORS “turn it loose” = “get loose bowels” “GOT MILK” = “ARE YOU LACTATING?”

Consider a McFamily Remember your goals

Availability Registrability TM equity potential – how big is the ranch?

In the U.S., Registration is NOT required to establish trademark rights (unlike non-common law foreign countries)

Instead, trademark priority can be established by:

Using the mark (rights limited to geographic territory of use)

Filing a federal registration application (followed by use)

So, one must search prior users as well as prior applicants

Likelihood of Confusion: Similarity of the marks (sight, sound, meaning) Relatedness of goods and services Distinctiveness of senior mark Consumer care at the point of purchase (cost, time,

sophistication, etc.) Intent of junior user (consider your other activities) Channels of trade or overlapping consumers, including likelihood

of bridging the gap Likelihood of Confusion:

Dilution of Famous The Aggressive Trademark Owner

the McFamily of marks TTAB proceedings and courtroom litigation

Pre-Search of USPTO database (http://tess.uspto.gov), a WhoIs database (www.betterwhois.com), the Internet (www.google.com), competitor’s and industry websites Free and immediate

Full Search of USPTO, state and common law databases Costs approximately $600 with 3-business-day turnaround

The benefits of an intent-to-use application; and foreign priority claim

The statutory presumptions in litigation The general discouragement of third-party

infringements Most businesses run PTO searches, at least

The PTO helps with your enforcement efforts

The power of the encircled R

Use mark as an adjective

For example, KLEENEX tissue

Not in possessive (’s)

For example, “the ROCK SHOX’s 4-inch travel will serve you well”

Not as verb

“Let’s go ROLLERBLADING down the Boulder Creek Path”

Don’t Pluralize For example, don’t write “The SCHWINN’s

two-color paint scheme…

Instead write “The SCHWINN bicycle’s two-color paint scheme…”

Use of “™” (indicated unregistered) or “®” (indicated a registered mark) “The SCHWINN® MOAB® bike features...”

Indicate marks with initial cap or all CAPS

Jack Daniel's Sends the Most

Polite Cease-and-Desist Letter

Ever

From Salvation

to Collaboration

Not Litigation Ale

Comparative advertising, statutory fair use, nominative fair use

Limited First Amendment and Parody

Select a strong trademark Consider a family of marks Use the Internet for searching Consider not registering Consider registering so PTO can be your

police officer Don’t be abusive Watching services