OVERVIEW OF TRADEMARK PROTECTION IN THE UNITED STATES AND ABROAD Scott Baldwin, Attorney Global...
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OVERVIEW OF TRADEMARK PROTECTION IN THE UNITED STATES AND ABROAD Scott Baldwin, Attorney Global Intellectual Property Academy July 18, 2012 9:30 a.m. – 11:00 a.m. Central
OVERVIEW OF TRADEMARK PROTECTION IN THE UNITED STATES AND ABROAD Scott Baldwin, Attorney Global Intellectual Property Academy July 18, 2012 9:30 a.m
OVERVIEW OF TRADEMARK PROTECTION IN THE UNITED STATES AND
ABROAD Scott Baldwin, Attorney Global Intellectual Property Academy
July 18, 2012 9:30 a.m. 11:00 a.m. Central
Slide 3
Speaker Biography Scott Baldwin is an Attorney in the Global
Intellectual Property Academy (GIPA) at the United States Patent
and Trademark Office (USPTO). Prior to this position, Scott served
as a Trademark Attorney with the USPTOs Office of Policy and
External Affairs (OPEA) where he handled policy matters relating to
trademark issues in the United States and abroad, and provided
technical assistance to foreign governments that wanted to develop
or improve their trademark systems. Scott was also a Trademark
Examining Attorney at the USPTO for over nine years. Scott also
worked as an Attorney with the law firm of Fulbright & Jaworski
in Washington, D.C.
Slide 4
Learning Objectives 1)Understand the benefits of selecting
strong trademarks. 2)Understand that trademark rights in U.S. come
from priority of use. 3)Realize that trademark registration
provides valuable benefits. 4)Understand when to use TM and
symbols. 5)How to navigate the federal trademark
application/registration process. 6)Know that trademark rights are
territorial -> must be protected country-by-country.
7)Understand the threat of trademark squatting and how easily it
can happen. 8)Make use of trademark resources available.
Slide 5
Life of a Trademark I CREATION Choosing a trademark or service
mark. II. SCREENING and CLEARANCE Making sure the proposed mark is
available. III. PROTECTION Seeking protection, country-by-country.
IV. MAINTENANCE Renewing trademark registrations.
Slide 6
CREATION Part I: LIFE OF A TRADEMARK
Slide 7
Definition of a Trademark TRIPS Any sign, or any combination of
signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of
constituting a trademark. Such signs, in particular words including
personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs,
shall be eligible for registration as trademarks. Members may
require, as a condition of registration, that signs be visually
perceptible. TRIPS Article 15 U.S. Law Any word, name, symbol, or
device, (or any combination thereof) used to identify and
distinguish goods or services and to indicate their source. Section
45 of the Trademark Act 15 U.S.C. 1127
Slide 8
Types of Trademarks Word Marks KODAK Design Marks Composite
Marks containing both words and design Slogans WE BRING GOOD THINGS
TO LIFE
Slide 9
Unusual Trademarks Shape: Bottle shape for soda pop Color: Pink
color for insulation Sound: Drums, trumpets and strings for
entertainment / motion picture films Scent: Plumeria flower blossom
scent for sewing thread Motion:Flying pegasus for movie
studios
Slide 10
9 Trademark Continuum Source Indicating Capacity No Source
Identifying Capacity Not Inherently Distinctive but may acquire.
Inherently Distinctive Generic soda Suggestive VERICHECK Arbitrary
APPLE Merely Descriptive COASTER-CARDS Fanciful EXXON
Slide 11
Part II: LIFE OF A TRADEMARK SCREENING and CLEARANCE
Slide 12
Common Law unregistered; derived from use. TM State
Registration the truly local. Registered with one or more U.S.
states Federal Registration - interstate commerce or between the
U.S. and another country. Other Federal Statutes Smokey Bear Woodsy
Owl Types of Trademark Protection in the U.S.
Slide 13
SCREENING and CLEARANCE in the U.S. USPTO DATABASE Federally
registered trademarks and pending applications for registration
STATE TRADEMARK REGISTRIES DOMAIN NAME SEARCH Generic Top Level
Domains (gTLDs) Country Code Top Level Domains (ccTLDs) COMMON LAW
SEARCH The Web, trade names, trade directories, etc. Obtaining a
full search helps to ensure that these other sources of information
will be considered in clearing trademarks.
Slide 14
13 Avoid having to change your mark in every place it appears.
Avoid having to recall existing products that bear the infringing
mark. Avoid having to destroy existing product with the infringing
mark. Avoid being held liable for damages to the owner of the mark
and possibly even for attorneys fees. Conducting a Search Can Save
a Company Time, Money and Grief!
Slide 15
PROTECTION (Country-by-Country) PART III: LIFE OF A
TRADEMARK
Slide 16
Not required, because trademark rights (in the U.S.) arise from
use on or in connection with goods or services, BUT There are
significant advantages to having a federal trademark registration.
Does a Company Need to Register its Mark in the U.S.?
Slide 17
Public notice of your claim of ownership of the mark; A legal
presumption of your ownership of the mark and your exclusive right
to use the mark nationwide on or in connection with the
goods/services listed in the registration; The ability to bring an
action concerning the mark in federal court; The use of the U.S.
registration as a basis to obtain registration in foreign
countries; The right to use the federal registration symbol ;
Listing in the United States Patent and Trademark Offices online
databases; and Registration may be recorded with U.S. Customs and
Border Protection to prevent importation of infringing foreign
goods. The recordation fee for trademarks is US$190 per
International Class of goods. Advantages of Federal Registration on
Principal Register
Slide 18
File an application at the U.S. Patent and Trademark Office.
You can complete an application online, check it for completeness,
and file it over the Internet using the Trademark Electronic
Application System (TEAS). 97.8% of trademark applications were
filed electronically in FY 09! Three ways to pay: credit card,
automated deposit account or electronic funds transfer. How Do I
Get a Federal Trademark Registration?
Slide 19
Filing fee for paper filing: ___________ Filing fee for
e-filing: Filing Fees $375 per class of goods/services.
_________________ $325 per class of goods/services if filed using
the regular TEAS form. $275 per class of goods/services if filed
using the TEAS Plus form.
Slide 20
19 What are the possible legal bases on which I can file an
application to register a trademark in the United States? Use of
the mark in commerce bona fide use of a mark in the ordinary course
of trade, and not made merely to reserve a right in a mark. A bona
fide intention to use the mark in the future Section 1(b) of the
Trademark Act, 15 U.S.C. 1051(b), provides that an applicant may
file an application based on a bona fide intention to use a mark in
commerce under circumstances showing the good faith of such person.
Foreign application or registration. Legal Basis to File
Slide 21
Examination Process at the USPTO 1. File Application (Current
pendency = 3.0 months) 2. Examination by Trademark Examining
Attorney Allowed, Amended, or Refused. Common grounds for
refusal?
Slide 22
Examination Process at the USPTO continued 3. If Allowed,
publication in the Official Gazette and Notice of Allowance (if
intent-to-use). 4. If Refused, appeal to the Trademark Trial and
Appeal Board (TTAB) 5. If Refusal is affirmed: A) Appeal to a U.S.
District Court de novo: or B) Appeal to the United States Court of
Appeals for the Federal Circuit (CAFC) on the administrative
record.
Slide 23
Examination Process at the USPTO continued. 6. After
Publication, Opposition period. Both parties (Opposer and
Applicant) have right to appeal the TTAB decision. 7. If no
Opposition, Registration issues. 8. Cancellation proceeding
available to cancel a registration. Both parties (Petitioner and
Registrant) have right to appeal the TTAB decision. In general, the
USPTO is not involved in inter partes appeals of TTAB
decisions.
Slide 24
Examination:3.0 months from filing to examination.
Registration:10.7 months after filing. * Figures are approximate,
and based on Q2 FY 2012 performance. Trademark Timeline*
No. Trademark rights are territorial: rights in particular
trademarks exist only within the country whose laws granted those
rights. Is Federal Registration Valid Outside the United
States?
Slide 27
Be proactive in protecting trademarks! Have you considered
registering your mark in countries in which: Your goods or services
are marketed; Products or parts for your products are manufactured;
Research and development facilities are located; Your products are
trans-shipped; You might expand your business in the future; or
Counterfeiting is likely to be a problem. Protecting Trademarks
Abroad
Slide 28
MAINTENANCE PART IV: LIFE OF A TRADEMARK
Slide 29
Maintain Registrations! In The U.S. Evidence of continued use:
submitted between 5 th and 6 th year. Renewal: submitted between 9
th and 10 th year. Electronic forms can be completed very easily;
much of the data is entered automatically.
Slide 30
Be Alert! Read every piece of IP correspondence Carefully!
Trademark filing information is public. USPTO neither requires nor
is affiliated with any trademark monitoring services. An entity
doing business as the "United States Trademark Protection Agency"
is NOT affiliated with the United States Patent and Trademark
Office.
Slide 31
Trademark Registration Information on uspto.gov
Slide 32
31 The STOPFakes.gov Website
Slide 33
32 The STOPFakes.gov Website Some Highlights: STOP HOTLINE:
1-866-999-HALT (or web form) IPR Country Toolkits DHS Customs
Recordation Tool International IPR Advisory Program with American
Bar Association (ABA) (1-hour free consultation with expert
attorney) for certain countries. A list of Whos Who in the U.S.
Govt. involved in IP: http://www.stopfakes.gov/sf_who.asp