1. TRADEMARKS 101: Protecting Your Brand Co-Sponsored by SmartUp & General Assembly Presented By Andrei D. Tsygankov, Esq. Entrepreneur & Attorney-At-Law 2. About Me B.S. in Management from Georgia Tech J.D. from Georgia State University College of Law Current: Co-Founder and COO of SmartUp Partner at Founders Legal (Bekiares Eliezer LLP) Former: Managing Director & In-House Counsel for a group of companies that focused on Export Management & Distribution of goods internationally 3. How This Presentation May Help You We will explain: What Trademarks (and Servicemarks) are and how to use them How a Federal Registration [ ] help your brand and your company Registration process and common problems What to do if someone infringes on your Trademark? 4. What is a Trademark? Identifier of Source 5. What is a Trademark? For Consumers: Creates an association between a Product or Service and its provider Assurance of Quality For Sellers/Providers of Products or Services: Identifies that a Product or Service is provided by YOU, and ONLY YOU Creator of Goodwill for your company 6. 2 Important Functions of a Trademark 1. Protect Consumers 2. Protect Sellers of Goods and Services 7. Common Law Trademark Rights Using a Name, Logo, Slogan, etc. in your line of business Adding TM (for Goods) to your mark to claim your Trademark Adding an SM (for Services) to your mark to claim your Servicemark For Example MYBRAND or MYBRANDSM 8. What Is Federal Trademark Registration? Protects a Mark (a Brand) under Federal Law (Lanham Act) Gives rights and protections for your Mark nationwide Administered by the United States Patent and Trademark Office (USPTO) 9. What Is The Benefit Of Federal Registration? Registering your mark gives you the EXCLUSIVE right to use that Mark in your field A Federal registration gives you great tools to ENFORCE your exclusive rights to the Mark throughout the United States 10. What Is The Benefit Of Federal Registration? If you obtain a Federal Trademark Registration on your Mark(s): Everyone else using that Mark after your registration, does so AT THEIR OWN RISK 11. 2 Main Categories of Trademarks Trademark (for Goods) Servicemark (for Services) 12. What Can Be Trademarked? Unique Things Associated With Your Brand 13. What can be Trademarked? Wordmark SloganName 14. What can be Trademarked? Logomark Combined Word/Logomark 15. What can be Trademarked? Packaging Design 16. What can be Trademarked? Colors 17. What can be Trademarked? Trade Dress Colors + Design + Layout 18. What can be Trademarked? Sounds Scents 19. What can be Trademarked? Name Logo Slogan Packaging Design Colors Trade Dress Sound Scent 20. The Trademark Process Selecting your Mark(s) Clearance & Conflict Search Researching Appropriate Classes and Sub-Classes Filing Application and Obtaining Registration Using your Mark Correctly After Registration Enforcing Your Mark 21. Selecting Your Mark Generic Descriptive Suggestive Arbitrary Fanciful Spectrum of Distinctiveness STRONGWEAK 22. Selecting Your Mark Can the Mark be Registered? GENERIC? SIMILAR MARK ALREADY REGISTERED? 23. Selecting Your Mark Can the Mark be Registered? MERELY DESCRIPTIVE? By Product, Service, or Geography? DECEPTIVELY GEOGRAPHICALLY MIS- DESCRIPTIVE? 24. Selecting Your Mark Risk of 3rd Party Action? Risk of Protest, Opposition or Cease & Desist Infringement Lawsuit 25. Selecting Your Mark Strength of Mark? Will I be able to use my Mark Exclusively? To what extent will I be able to prevent others from using it? Will the Mark help to increase the value of my brand and my company? 26. Searching For Conflicts USPTO Trademark Electronic Search System (TESS) Search Engines Google, Bing, Yahoo, etc. Search for names that are SIMILAR to yours! 27. Searching For Conflicts State Trademarks Database In GA: Georgia Secretary of State State Business Entity Names In GA: Georgia Secretary of State 28. Searching For Conflicts If Conflicts Exist: Find a different Mark to use Modify your Mark substantially Propose a Co-existence Agreement to the registrant Purchase the conflicting Mark 29. Researching Classes & Sub-Classes Nice Classification of Goods & Services 45 International Classes Each Class has many Sub-Classes USPTO Trademark ID Manual (TMIDM) 30. Researching Classes & Sub-Classes Select the International Class closest to your Mark Select the appropriate Sub-Classes for each Class ONLY select the ones you are actually USING Do NOT invent your own use the ones listed 31. Registration Process: Filing Application USPTO Trademark Electronic Application System (TEAS) Filing Fees: $225 per International Class (TEAS Plus Application) 32. Registration Process: Filing Application 2 Main Application Types In Use Mark is used in Interstate Commerce Intent to Use Mark not used yet, but bona fide intent to use it exists Once allowed, must show use within 6 months Up to 5 extensions allowed, for a total of 3 years 33. Registration Process: Timeline Assigned to Examiner: 3-4 Months from Filing If no issues found, Notice of Publication 3-4 Months From Examiner Review Registration 1-2 Months after Publication Minimum Time to Registration: 7 Months 34. Examiner Review Compliance With Requirements No Conflicts Approval of Application Publication for Opposition No Oppositions Filed REGISTRATION Application Filed Office Action (Refusal) Non-Compliance Application Abandoned TTAB Response Final Refusal 3rd Party Opposition Filed Appeal Applicant Wins Applicant Loses 35. Post Registration Maintenance To keep Registered Mark AFTER Registration: Must file Affidavit of Use between year 5 and 6 (following registration) Must file Renewal every 10 years (between years 9 and 10 following registration) 36. Post Registration Use Make sure to use the symbol with your Mark Once registered, and the TM symbol before Use your Mark consistently NO changes at all to the wordmark, logo, or slogan 37. Post Registration Use Distinguish your Mark when using with other terms: Write the Mark using CAPITAL LETTERS, in Italics, or using a stylized font unique to the Mark Example TIDE laundry detergent Nordstrom department stores Nike running shoes 38. Post Registration Use Use your Mark completely and properly LEGO bricks, not LEGOs Never use your Mark in a possessive form Television show on AMC, NOT AMCs Show Never use your Mark as a Noun, only as an adjective that modifies it McDonalds hamburgers 39. Post Registration Use Never use your Mark as an action Searching online via GOOGLE search engine, NOT Googling Never use your Mark in plural form BMW automobiles, NOT BMWs 40. Why Is Proper Use Important? Protects the strength and value of your Brand 41. What Do These Have In Common? Aspirin Zipper Escalator Heroin Trampoline Videotape Genericide 42. What Do These Have In Common? Xerox LEGO Band-Aid Google Actively Fighting Genericide 43. Enforcing Your Rights Monitor the Competition Monitor Federal Trademark Applications If someone is using your Mark or something similar to it, notify them immediately to stop (and take legal action if necessary) 44. Someone Claims That I Am Infringing See a professional about evaluating your case Review of opposing application and registration Negotiation with opposing party 45. Things You Can Do Select your Mark Do your own Conflict Search Look into the appropriate Trademark International Classes and Sub-Classes Establish your Date of Use (save the evidence) Prepare specimens showing your Mark in use 46. Get Professional Assistance With Reviewing your conflict search results Evaluating registerability and risk of conflict with 3rd Parties Confirming your selection of International Classes and Sub- Classes Confirming appropriateness of Use Date and specimens Filing Application 47. Get Professional Assistance With Monitoring your Mark Enforcing your rights: Protests & Oppositions Cease & Desist Letters Infringement Claim Evaluations 48. Common Pitfalls Not doing a Conflict Search Searching for only exact matches and not considering similar names or very big players Claiming an incorrect date of use Selecting the wrong International Class Claiming too many sub-classes 49. My Contact Info Andrei Tsygankov, Esq. Andrei@smartuplegal.com 800-530-4983 @Smartup_ ATLANTA TECH VILLAGE Suite 555 3423 Piedmont Road, NE Atlanta, GA 30305 To schedule a consultation with me please visit www.smartuplegal.com and click consult!