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A previous Law.com article by Stephen M. Nipper was entitled “Five Things Corporate Counsel Need to Know about Patents.” In this installment, he tackles the five things that corporate counsel need to know about trademarks. 1. WHAT IS A TRADEMARK? A trademark is an “indicator of source,” essentially meaning that the trademark, such as a word, logo, color, scent, sound, etc., points to a particular source of goods or services. To function as a trademark, and be protected as one, a trademark must be distinctive. If a trademark isn’t distinctive within the marketplace, it is hard to argue that the trademark indicates a particular source. With respect to distinctiveness, trademarks can be divided along a four type spectrum — generic, merely descriptive, suggestive and arbitrary. Arbitrary trademarks, such as Tropicana, and suggestive trademarks, such as Minute Maid, are by definition distinctive, whereas descriptive trademarks, such as Sweet for juice, can only be distinctive upon acquiring “secondary meaning” when consumers view the trademark as an indicator of source and not as the name of the goods or services. Finally, generic trademarks, such as “Juice” for juice, can never be distinctive and can’t be protected. Thus, to maximize their protectiveness, your company’s new trademarks should always be at least suggestive, if not arbitrary. 2. MY COMPANY’S TRADEMARK IS DISTINCTIVE, DO WE HAVE THE RIGHT TO EXCLUDE OTHERS FROM USING THE SAME TRADEMARK? Trademark rights are based on use, and thus the senior user of a trademark will typically have at least some rights to continue using their trademark in the same manner and location where they have previously used it. To lock in senior users (lock them into their current manner and location), one needs to obtain a federal trademark registration on the trademark. Obviously, that advice cuts both ways, for junior users to your company’s trademarks could obtain such a registration thereby limiting your future use of your own trademark. If your trademark is valuable, consult with an intellectual property attorney about trademark registration. 3. CAN WE FILE A FEDERAL TRADEMARK APPLICATION BEFORE WE BEGIN USING A TRADEMARK? Yes you can. It is called an “intent to use” trademark application. The registration process is fairly similar to protecting an “in use” trademark. At the same time you are considering filing trademark applications covering your forthcoming trademark applications one should also purchase the related domain names. 4. WE HAVE A TRADEMARK REGISTRATION, NOW WHAT? a. Use the “R” symbol to put others on notice of your trademark registration. b. Check the USPTO’s assignment records to ensure that your trademarks were properly assigned (if they were assigned from one corporation to another, etc.) and that they list your corporation’s current name. Trademark assignments can be searched here. c. Check the current status of your registrations. Go here and search by registration number. If the “current status” is anything but “registered,” your trademark registration may have lapsed. Consult with an intellectual property attorney for further guidance. d. Trademarks must be “maintained” every 6 to 10 years by filing “statements of continued use” and “renewals.” Failure to file the appropriate maintenance documents and fees will result in cancellation of the trademark registration. e. After the trademark has been registered on the Principal Register for five years a “declaration of incontestability” can be filed. If the declaration is accepted, the trademark will be much harder to challenge by a third party down the road. Make sure that your qualifying registrations have had this declaration (also known as a “Section 15″) filed. 5. WILL THE TRADEMARK OFFICE NOTIFY ME IF A THIRD PARTY IS USING A TRADEMARK LIKELY TO CAUSE CONFUSION WITH MY COMPANY’S TRADEMARK(S)? No. A trademark owner must be its own policeman, policing commerce for infringers. Larger corporations will typically employ professional “trademark monitoring” services or will ask the law firm handling their trademark matters to handle it for them. Smaller companies will merely have an employee regularly search the recent Trademark Office filings and the Internet in general for third party trademarks of concern. Stephen M. Nipper is a patent attorney and partner with Dykas, Shaver & Nipper, LLP in Boise, Idaho. He is also the blogger behind The Invent Blog.

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