Appendix F: Choosing a Trademark

Transcription

1 Appendix F: Choosing a Trademark The Mark of a Good Trademark George Eastman of Kodak said a trademark should be short, vigorous, easily spelled, and mean nothing & Product Name, Berkeley: Nolo Press, p. 3/10-3/ Trademark Names to Avoid Personal names (nicknames, first names, surnames, initials) Marks that describe a product s characteristics or geographical location & Product Name, Berkeley: Nolo Press, p. 3/10-3/ Trademark Names to Avoid Names with unintended homonyms (French soft drink Pschitt) & Product Name, Berkeley: Nolo Press, p. 3/10-3/

2 Japanese Soft Drink Sweat Trademark Names to Avoid Names similar to famous trademarks may be perceived as infringement i and/or dilution & Product Name, Berkeley: Nolo Press, p. 3/10-3/ Tools to Create Trademarks Name consultants (usually for larger corporations) or ad agencies Name-It ( NameStormers ( & Product Name, Berkeley: Nolo Press, p. 3/10-3/ Software Tools NameStormers offers NamePro for $495. Screens for multilanguage offensive meaning. MacroWorks offers NameBuilder for $ ( & Product Name, Berkeley: Nolo Press, p. 3/10-3/

3 Finding Trademark Services Look under Information Brokers or Trademark Consultants in Yellow Pages. Look in legal journals. 360 Trademark Services Sunnyvale Center on Innovation, Invention and Ideas ( /D t ments/library/sci3/) Trademark Express 361 Sc[i]3 Sc[i]3 one of 3 Patent and Trademark Depository Libraries (others Detroit and Houston) Sc[i]3 has direct access to PTO trademark database X-Search 362 Sc[i]3 (con.) Jiffy trademark search: $50 Comprehensive trademark search: $199 X-Search (trademark text / image): $72 / hour Sc[i]3. Sunnyvale Center for Innovation, Invention and Ideas. < 11 July

4 Searching with Sc[i]3 Report comes with cover letter Then an introduction to databases (CASSIS database for jiffy search or X-Search or TRADEMARKSCAN) TrademarkScan Searches for trademarks that contain queried words Can refine search to within trademark registration classes 365 X-Search Can be used to search for images as well as words; can search for phonetically similar trademarks. State Registration Search Checks state index for alphabetically-similar results

5 Trademark Express Federal & State Trademark Search: $250 World Regional International Common Law Research: $ Trademark Express National Common Law Search: $200 State Common Law Search: $100 Federal Trademark Logo search: $ Do-It-Yourself Trademark Electronic Search System (TESS) contains more than 3 million pending, registered and dead federal trademarks. Trademark Electronic Search System. 9 July US Patent and Trademark Office. 11 July < 370 How To Protect Trademarks Use the trademark as an adjective, not as a noun or verb example: Coke soft drink, Kleenex facial tissue, Xerox photocopier, FedEX overnight courier service 371 5

6 Use distinctively capitalized, underlined, italicized, with trademark symbol bl 372 (Trademark and unfair competiton law, J.C. Ginsburg, A.J. Greenbaum) 373 Kleenex. (Trademark and unfair competiton law, J.C. Ginsburg, A.J. Greenbaum) 374 (Trademark and unfair competiton law, J.C. Ginsburg, A.J. Greenbaum) 375 6

7 US: Trademark Registration Patent and Trademark Office Registration symbol (R in a circle) The symbol TM is used for unregistered trademarks. 376 Common-Law Trademarks No registration required. Prevents others from using same/similar marks Limited, less protection than federally registered trademark. May cover only a limited geographical location. Gardner, Steven, Basics of Trademark Law, Campbell Law Observer, April, Trademark Registration Registration lasts 10 years and can be renewed forever. But if a mark is not used for 2 years, a presumption of abandonment is created. 378 How to Register a Trademark 15 U.S.C. Â 1051(a): Application for use of trademark. 15 U.S.C. Â 1051(b): Application for bona-fide intention to use trademark. Gardner, Steven, Basics of Trademark Law, Campbell Law Observer, April,

8 Trademark in Europe EU trademark regulation (1993) makes a trademark valid throughout EU. Establishes European trademark office in Alicanté, Spain. Trademark granted for 10 yrs and renewable If not used in the EU for 5 years can 380 be revoked Trademark in Japan 10 year terms, from application is renewable. aphics/konami.gif 381 Federal Anti-Dilution Act The owner of a famous mark can stop another s commercial use of a mark that causes dilution Dilution & tarnishment t - lessening the capacity of a famous mark to identify goods or services Marks tend to become more famous over time 382 Famous Mark: 8 Factors Distinctiveness Duration and extent of use Duration and extent of advertising/publicity Geographical extent of mark Lanham 383 Act 8

9 Channels of trade Degree of recognition Nature and extent of use of the same or similar mark by third parties Whether the mark was registered 384 This ad attempts t to suggest that t the advertiser has the endorsement of Coca-Cola, Inc. through misuse of the lettering Cybersquatting Registering of famous or company names as domain name by an unauthorized person Congress passed the Anticybersquatting Consumer Protection Act in 1998, Cyberpiracy Act of Extends name protection provisions to famous people. Bad faith registration of a trademark as a domain name can carry criminal penalties Damages up to $100,

10 Internet and Trademarks Multiple enterprises with the same name exist, now collide over Internet Possible solution Expand the number of generic top level domains to give multiple claimants access to same name. acme.com, acme.glass, acme.biz, etc 388 American Trademarks In Foreign Countries United State joined the International Trademark Treaty ( Madrid (Madrid Protocol ): Nov It offers a US trademark owner the ability to obtain registration in many countries 389 American Trademarks In Foreign Countries (Continued) One-stop filing mechanism: by filing one application in the US using a centralized filing system, patent is registered in the other member countries Can request non-publications of applications American Trademarks In Foreign Countries If applicants do not want to publish their applications, they must file a request for nonpublications

11 392 Noam, Intellectual Asset Management