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Tantalizing Trademark To-Do’sTantalizing Trademark To-Do’s
April 12, 2013April 12, 2013
Timothy M. DonoughueTimothy M. Donoughue
Intellectual Property Senior CounselIntellectual Property Senior Counsel
But first, a word from our sponsor:But first, a word from our sponsor:
All this is Tim’s opinion only, not the view All this is Tim’s opinion only, not the view of BHI, and not on the record.of BHI, and not on the record.
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
TrademarksTrademarks
Definition of Trademark:Definition of Trademark: Any Any markmark which which Identifies and distinguishes goods Identifies and distinguishes goods
or servicesor services Indicates source of good or servicesIndicates source of good or services
TM
®
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
Trademark v. Service MarkTrademark v. Service Mark
A “Service Mark” is a mark that A “Service Mark” is a mark that designates services onlydesignates services only
A “Trademark” is a mark that A “Trademark” is a mark that designates goodsdesignates goods
However (just to be confusing), However (just to be confusing), “Trademark” can also be a mark that “Trademark” can also be a mark that designates services or both goods and designates services or both goods and servicesservices
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
1. 1. Don’tDon’t Miss a Mark! Miss a Mark!
Definition of mark is very broad.Definition of mark is very broad. Marks can now include sounds, colorsMarks can now include sounds, colors Marks can be foundMarks can be found
within other markswithin other marksLogos or slogansLogos or slogansStylizationsStylizations
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
2. 2. DoDo Know Your Country Know Your Country
In US, trademark rights are acquired by In US, trademark rights are acquired by use—no registration requireduse—no registration required
In RU, trademark rights are acquired by In RU, trademark rights are acquired by registration—use gives no rightsregistration—use gives no rights
In BR, the trademark office does not In BR, the trademark office does not send notices, they publish themsend notices, they publish them
In EP, the trademark office covers In EP, the trademark office covers several countriesseveral countries
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
3. 3. DoDo Understand the Goods/Services Understand the Goods/Services
Trademarks’ effects are limited to their Trademarks’ effects are limited to their particular goods and servicesparticular goods and servicesIn US, limited to actual useIn US, limited to actual useCan be multiple goods/servicesCan be multiple goods/servicesPart of a clearance searchPart of a clearance search
Example:Example:DELTA faucetsDELTA faucetsDELTA power toolsDELTA power toolsDELTA airlinesDELTA airlines
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
4. 4. DoDo Docket, Docket, Docket Docket, Docket, Docket
Accurate docketing is criticalAccurate docketing is criticalAvoids loss of rights in datesAvoids loss of rights in datesLowers costLowers cost
Critical to double check automatic Critical to double check automatic docketingdocketingEnsure that the country selection is Ensure that the country selection is
correctcorrectMake sure the dates look rightMake sure the dates look right
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
5. 5. Don’tDon’t Ever Abuse Marks Ever Abuse Marks
We must be models to our clients of We must be models to our clients of how to use trademarks correctlyhow to use trademarks correctlyBrochuresBrochuresEmailsEmailsMemosMemosLettersLetters
How the clients see the mark usedHow the clients see the mark usedinfluences how they in turn use itinfluences how they in turn use it
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
Grammar LessonGrammar Lesson
All trademarks are adjectivesAll trademarks are adjectives Use with generic name of Use with generic name of
product/serviceproduct/service““We ran the XMAC tool.”We ran the XMAC tool.”Not -- “We will ship ten XMACs.”Not -- “We will ship ten XMACs.”
Never use as a possessive, plural, verb Never use as a possessive, plural, verb or nounor nounDon’t “xerox it”; make a Don’t “xerox it”; make a
“photocopy”“photocopy”
Proper Use of MarksProper Use of Marks
Distinguish in printDistinguish in printCAPS or CAPS or italicsitalics
Include trademark noticeInclude trademark noticeTM, SM or TM, SM or ®® only for registered
marks Give notice of company Give notice of company
ownership if not obviousownership if not obviousFootnote with “TESTRAK is Footnote with “TESTRAK is
a service mark of Baker a service mark of Baker Hughes Incorporated”Hughes Incorporated”
®™
SM
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
6. 6. DoDo Know Trademark Infringement Know Trademark Infringement
Likelihood of confusionLikelihood of confusion Exact match not requiredExact match not required Must be within same marketMust be within same market
Similar to unfair competitionSimilar to unfair competition
If you suspect somethingIf you suspect somethingsee your attorney!see your attorney!
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
8. 8. DoDo Learn the USPTO Online Learn the USPTO Online
www.uspto.gov Under TrademarksUnder Trademarks
TESS – to searchTESS – to searchTEAS – to fileTEAS – to fileTSDR – to check the statusTSDR – to check the status
Then under Manuals, Guides…Then under Manuals, Guides…TMEPTMEPAcceptable ID of Goods/ServicesAcceptable ID of Goods/Services
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
7. 7. DoDo Keep Your Attorney Informed Keep Your Attorney Informed
Attorney-Client privilegeAttorney-Client privilegeExtends to “one employed by the lawyer Extends to “one employed by the lawyer
to assist” with legal services. TRE 503to assist” with legal services. TRE 503 Attorney work productAttorney work product
Extends to the work product of an Extends to the work product of an “attorney’s representative”. TRCP 192.5“attorney’s representative”. TRCP 192.5
For those to apply, you must be under the For those to apply, you must be under the supervision of the attorney!supervision of the attorney!
© 2013 Baker Hughes Incorporated.All Rights Reserved.
Licensed for educational use only.
9. 9. DoDo Know a Proper Specimen Know a Proper Specimen
In US (Office is very particular on this)In US (Office is very particular on this) Specimen Specimen mustmust show the mark show the mark
Used on or in connection with the sale of Used on or in connection with the sale of goodsgoodsLabel, tag, stampLabel, tag, stampNot an ad, website except in limited Not an ad, website except in limited
cases!cases!In the sale or advertising of the servicesIn the sale or advertising of the servicesTMEP 904.07(a)TMEP 904.07(a)
10. 10. DoDo Ask for Help! Ask for Help!
Very complex areaVery complex areaParticularly in docketingParticularly in docketingEspecially with new jurisdictionsEspecially with new jurisdictionsA question now saves much grief later!A question now saves much grief later!
Questions?Questions?
Tantalizing Trademark TidbitsTantalizing Trademark Tidbits
April 12, 2013April 12, 2013
Timothy M. DonoughueTimothy M. Donoughue
Intellectual Property Senior CounselIntellectual Property Senior Counsel