BIRTH OF A TRADEMARK PART 1 In this part, you will select a name and choose a trademark category and description for your service from the United States Patent and Trademark Office official Identification Manual (the “ID Manual.” Then tell me whether your name is strong from a legal perspective. Part 1a: Select a Scenario & Name Choose one scenario from the following page to use for the rest of the assignment. Except for the Entrepreneur track, the scenarios below concern the relocation from New Zealand of professional rugby player Dev Escary to start a professional league in North America. For legal purposes, the more distinctive the name, the better. Fanciful (made up) names are the strongest because they don’t mean anything else in the world. Arbitrary or suggestive names are also strong and registrable. Entrepreneur Fashion Marketing/Management You have your own business going (or expect to launch one). You may search and clear your name for this assignment. Mia Escary, member of a popular New Zealand girl band, wants to launch a fashion line. Brother Dev has promised to let her design his team’s uniforms and fan apparel. She wants to project a street chic vibe with her brand. What name would work well for Mia’s fashion brand? Dev’s rugby team is launching in your town and you’d love to have the team make an appearance at a new festival you’re planning. What name will you choose for the festival? Media Sports You are forming a public relations company and learned about Dev and Mia’s relocation from your good friend Ebenezer. This presents the perfect opportunity to land Dev's rugby league and Mia's band as your first clients. What professional, attentiongrabbing and memorable name can you come up with? Dev Escary, former captain of the famous NZ Blacks, has been recruited to put together a professional rugby team in the US—the first in the new United Rugby Federation (URF). The NFL is backing the effort and is encouraging him to come up with a quality name for the team. Some of the choices so far: Rough Riders ~ Braves ~ Red Rovers ~ Shrikes ~ Express ~ Rebels. Use one or pick your own name. Intellectual Property Law Film Include your scenario and name selection in your presentation Ebenezer Nguyen is making a documentary about Dev Escary’s move from New Zealand to start a professional team. He’s starting up a production company and has thought of the following names: Polymer ~ 27 Signals ~ Ebenezer ~ Blast ~ EbenEye ~ Nguyen. Do you like any of these or can you think of something else? 2 Part 1b.: Describe the product or service using the USPTO ID Manual When registering a trademark, you will be asked to provide a description of the goods or services the mark represents. This serves as the basis for the Trademark office to determine whether your mark might infringe on a senior mark user (competitor), so it must be accurate. The description may be broad or narrow, but should actually represent what’s being sold. The USPTO has a list of approved descriptions applicants can use for their marks. If you use one of these descriptions, you will save money on the application. Find an appropriate description for your product or service by searching the Acceptable Identification of Goods & Services Manual database. If the description you find in the Manual contains brackets, you should revise the bracketed area to meet your needs. USPTO ID Manual explained on the next page Intellectual Property Law Include the description and the international class of goods or services from the ID Manual in your presentation 3 Search the USPTO Acceptable Identification of Goods & Services Manual database for a description of your product/service. The results: this is the international class Intellectual Property Law Insert your general search term here The results: this is the description (replace the bracketed area with your own words) 4 Part 1c.: Is the mark strong or weak? Strong (fanciful, arbitrary, suggestive) marks are those that do not directly describe the goods or services offered under the mark and thus can be easily protected. They make the consumer have to think to make the connection between the brand name and the item itself. Weak (descriptive) marks don’t require such thought. They communicate the nature of the products or services immediately. Because little imagination is involved, weak marks are not easily protected. In this regard, marketing and legal departments are often at odds. Marketing likes a descriptive name because it immediately tells the consumer what the product is or does. But such names are usually harder to protect because they typically incorporate words that every competitor in the space needs to describe their product. The law rewards unique, distinctive names. Legal would prefer the brand owner to choose a non-descriptive mark even if it means having to spend more money to educate the public about the connection between the name and the product. Include your opinion of mark strength in your presentation Is the mark you’ve chosen strong (i.e., suggestive, arbitrary or fanciful) or weak (i.e., descriptive of the goods/services)? Intellectual Property Law 5 BIRTH OF A TRADEMARK PART 2 In this part, you will search 3 different places to see if your name is unique or if someone else is already using it. Then, tell me about your results. Part 2: Conduct a Trademark Clearance Search A clear name (one that minimizes risk of infringement) is one that is not confusingly similar to pre-existing marks. Consider: 1. Competing goods/services? 2. Similar appearance, sound, meaning? 3. Same stores or channels of distribution? 4. Trying to cash in on good will? 5. Sophisticated target market? 6. Overlapping target market? 7. Strong mark? Well known? 8. Actual confusion? (irrelevant to a product that hasn’t launched) Intellectual Property Law SEARCH FOR POSSIBLE CONFLICTING MARKS AND DOCUMENT YOUR FINDINGS Once a name is selected, a search must be conducted to ensure that no competitors have anything too close. If your name is considered confusingly similar to an existing name, whether that name is registered or not, you run the risk of infringement. A “clear” search is one that uncovers no other marks that are confusingly similar. In this part, you'll conduct and document a trademark clearance search and make recommendations as to use/depiction. Three searches are required: US, state and common law. Include in your presentation screen shot(s) of search results and explain whether the mark appears clear or not and why (refer to factors of confusing similarity) Review the TrademarkSearchHowTo100113.pdf presentation. This will show you how to conduct a trademark clearance search. NOTE:If your search returns few or no results, broaden the parameters to see if there are any spelling variations that might be soundalikes for your mark (think of how your mark sounds in a radio ad).The point is not simply to run the search, but to look for other marks that may be confusingly similar enough to block your use. See the next page for requirements. 7 USPTO Go to the United States Patent & Trademark Office Search Trademark Database > TESS > Basic Word Mark Search Search your exact term along with soundalikes Screen shot your results page (“No TESS Results Found” means no matches exists—a good thing) If any marks are similar, screen shot those pages and analyze whether they could block your mark on grounds of confusing similarity Intellectual Property Law State Repeat your search on the STATE level. Here is a list of links to the state trademark registries: http://www.uspto.gov/trademarks/ process/State_Trademark_Links.jsp. Choose your state’s database or use the Florida database at http://sunbiz.org/coritm.html if your state database is not online or charges for access, or you are in another country (unless your national or provincial registry displays results in English). Screen shot your results page and any similar marks’ pages Common Law Repeat your search on Google (http://google.com) or another search engine. Review the search results to determine whether there are any unregistered uses that might post a risk to using the name. Remember, trademark rights begin with usage— even unregistered marks can block use! NOTE: For better results when conducting this search, include a generic term that describes the product or service your mark represents along with your proposed brand name. For example, instead of searching “GoFast” for writing services, search on “GoFast writing.” This makes the results more relevant to your purpose. You can even do a second search (optional) in a broader product category, such as “GoFast media” to ensure no one is even close to you. 8 BIRTH OF A TRADEMARK PART 3 In this part, you will tell me how you would get the word out about your new name and what uses you might avoid. You’ll also define the various trademark symbols. Part 3: Use the Mark To be legally protected, a mark must be used in commerce and used consistently. This means that goods or services are actively being offered under the mark. Appropriate trademark symbols enhance rights. Include in your presentation the answers to the 5 questions posed below FIRST, EXPLAIN HOW TO USE THE TRADEMARK Trademark rights only arise when the mark is actually used in connection with goods or services in commerce (e.g., the business has launched). When you register the mark with the government, you have to prove to them that you are using the name. This is done by submitting a “specimen” showing that the mark is actually being used. Demonstrate your knowledge of trademark layers of protection by answering these questions: 1. What do the symbols “TM,” “SM” and ® mean? 2. If a company doesn’t use “TM” “SM” or ® with their mark, is it still a legally protected trademark? Include in your presentation a description of 3 types of specimens that could be be submitted to prove use of this mark in commerce Intellectual Property Law Include 1 way that you would NOT use this mark — use or depiction of the trademark that could harm your brand value and should be AVOIDED 3. What is the benefit of using a “TM” or “SM” notice with the mark? 4. What is the benefit of using the ®? 5. The logo designer wants to know whether to put a TM or circled R on the logo. Since your new mark hasn’t been registered with the USPTO yet, which trademark notice should be used initially —TM or circled R? 10 Assignment Two: Birth of a Trademark Due Sun Dec 3 @ 8:59 pm PST • 11% weight INTRODUCTION Choosing a strong brand for a business is an essential part of building business success. This involves a number of steps beginning with the selection of a unique name that won’t infringe on others’ marks, then using the name in a proper and consistent manner to build up consumer recognition and goodwill, and finally, regulating use of the trademark internally and by others to build good will and ensure distinctiveness. OBJECTIVES This activity achieves the following course objectives: • • • • Explain the concepts of trademark law Identify protectable trademark and rights holders Describe how to preserve ownership rights in trademarks Discern lawful use of others’ trademarks Assignment Instructions Complete all three parts: (the following is a summary; detailed instructions are in the document below) Part 1: Select a name, describe the product or service, explain whether the mark is legally strong or weak. Part 2: Conduct a trademark clearance search, recommend whether or not the mark can safely be used. Part 3: Explain how to use the trademark, explain the trademark symbols. Deliverables Due • A presentation (Keynote or PowerPoint) containing screenshots and responses to the challenges in the activity.
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