Trademarks Definition, value and use.

Companies create and build brands every day. Dos and Don’ts of Trademark Use This overview will provide insight into the legal DO: advantages of protecting your brands through 1. Use a trademark in distinct type. trademarks and guidelines for proper trademark protection. Capitalize the entire trademark or set it off from other words: MIDAS® not Midas What is a Trademark — Legally Speaking? 2. Use a mark as a proper adjective. A trademark is any word, phrase, symbol, design, sound, smell, color, product shape, group of letters or numbers, or combination of Associate the mark with the descriptive name of the product or these, used by a company to identify its products and services and service in all marketing and sales promotional pieces, feature distinguish them from those of others. or technical articles, published reports and news releases: MEDTRONIC® pacemakers A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. 3. Use a mark with the proper notice of its status. If the mark is registered with the USPTO, use: A trade name is the name used to identify a business not the goods • ® with registered trademark or service mark or services it provides. It is not a trademark and is not accompanied by a marking such as ® , TM or SM. • Asterisk (*) and footnote explaining the mark is “A trademark of ABC, Inc.” Registering a Trademark 4. Use the mark consistently. Although not required, you can register a mark with the United DON’T: States Patent and Trademark Office (USPTO) and in most foreign countries. 1. Use a mark as a noun. Owning a U.S. trademark registration on the Principal Register WRONG: LR Mate® keeps costs under control. provides you with many benefits, including: 2. Use a mark as a verb. • constructive notice to the public of your ownership of the mark; WRONG: You can Rollerblade® on the sidewalk. • the right to bring a lawsuit concerning the mark in federal court; 3. Use a mark in a possessive form. • the use of the U.S. registration as a basis to obtain registration in WRONG: Fizzies’ service is outstanding. foreign countries; • the right to file the U.S. registration with the U.S. Customs Service to stop the importation of infringing foreign goods; and • a legal presumption of your ownership of the mark and your exclusive right to use it nationwide in connection with your CONTINUED goods or services.

WHERE LAW AND BUSINESS MEET® Consequences of Improper Trademark Use Services Provided If you are not careful, improper use of your mark by you or the Fredrikson & Byron works with brand owners; advertising, direct public can cause it to lose its distinctiveness over time and become marketing and sales promotion agencies; designers; illustrators; a descriptive term for the particular product or service. This is known photographers and other businesses of all sizes throughout the as “genericide” and no mark is immune. Some trademark rights and country. The services we offer include: registrations have been lost because the marks became the generic • Business formation and startup names of the product: • Trademark clearance, prosecution and maintenance Allen wrench Escalator Shredded wheat • Trademark protection, enforcement and licensing Aspirin Granola Spandex • Copyright registration, protection and licensing Cellophane Jungle gym Yo-yo • Advertising copy review Celluloid Linoleum Zipper • Sweepstakes review, rule drafting and registrations Dry ice Pogo (stick) • Competitive advertising disputes/litigation • Trade secret protection Clearing Trademarks – • Non-compete agreements An Ounce of Prevention • NDA agreements Before selecting a trademark you should determine if it is available For More Information, Contact: for use and registration. You do not want to fall in love with something you can not use or end up in an infringement fight, with Ann Dunn Wessberg David C. West damage awards and attorneys’ fees at risk. Here are a few options Chair of the Trademark Group Chair of the Advertising, [email protected] Marketing & Trademark Group to consider in “clearing” a mark. 612.492.7006 [email protected] 612.492.7166 DIY TOP LEVEL CLEARANCE SEARCH Conduct your own internet search for prior marks that could be an Cynthia A. Moyer Courtney A.H. Thompson obvious issue. Along with Google or Bing searches, you can also [email protected] [email protected] 612.492.7167 612.492.7251 search the Trademark Office records at uspto.gov to determine whether there is already a federal application or registration for an Laura L. Myers Asmah Tareen obviously problematic mark. [email protected] [email protected] 612.492.7295 612.492.7139 PRELIMINARY SEARCH BY FREDRIKSON & BYRON We have access to various subscription databases that provide a John C. Pickerill Nadja Baer [email protected] [email protected] quick “down and dirty” review of registered marks in the U.S. and 612.492.7306 612.492.7276 many foreign jurisdictions. It’s ideal for narrowing a list of possible marks and reducing risks. However, a preliminary search does not Tracy L. Deutmeyer [email protected] guarantee that a mark is available. 515.242.8923 COMPREHENSIVE SEARCHES If you need the most thorough search available, Fredrikson & Byron works with outside companies that scour thousands of databases for evidence of the prior use and/or registration of similar marks, and they cover broad variations of spellings and forms of marks. Keep in mind that unregistered marks and marks that represent phonetic equivalents can be the basis of a trademark suit against you, and the comprehensive search will uncover these types of otherwise “hidden” marks. As a result, a comprehensive search should be considered whenever a critical mark (like a product name or over- arching brand name) is being proposed.

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