“Excellent step-by-step instructions for registering a mark, written in plain English with clear examples. Recommended for all collections. ” LIBRARY JOURNAL 9TH EDITION Attorneys Stephen Elias and Richard Stim Trademark Legal Care for Your Business & Product Name • Conduct a trademark search • Choose a great name you can protect • Fight back against infringers AMERICA’S NO. 1 TRADEMARK LAW BOOK Free Legal Updates at Nolo.com N O L O ®  e Story Dear friends, Founded in 1971, and based in an old clock factory in Berkeley, California, Nolo has always strived to off er clear legal information and solutions. Today we are proud to off er a full range of plain-English law books, legal forms, software and an award-winning website. Everything we publish is relentlessly researched and tested by a dedicated group of in-house legal editors, who together have more than 150 years’ experience. And when legal changes occur after publication, we promptly post free updates at Nolo.com. 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Stim, Richard. Trademark : legal care for your business & product name / by Richard Stim & Stephen Elias. 9th ed. p. cm. Rev. ed. of: Trademark : legal care for your business & product name / by Stephen Elias & Richard Stim. 8th ed. 2007. Includes index. Summary: “A complete guide to all business name and trademark issues including choice of name, trademark registration, domain names, and dealing with infringement.  is completely updated edition includes all of the latest trademark cases and rules regarding online registration. It also features an FAQ/Dear Rich questions and answer section” Provided by publisher. ISBN-13: 978-1-4133-1256-0 (pbk.) ISBN-10: 1-4133-1256-X (pbk.) I. Elias, Stephen. II. Elias, Stephen. Trademark. III. Title. KF3180.Z9E43 2010 346.7304’88 dc22 2010009267 Copyright © 2010 by Nolo. All rights reserved.  e NOLO trademark is registered in theU.S.Patent and Trademark O ce. Printed in the U.S.A. No part of this publication may be reproduced, stored in a retrieval system, or trans mitted in any form or by any means, electronic, mechanical, photocopying, recording, or other- wise, without prior written permission. Reproduction prohibitions do not apply to the forms contained in this product when reproduced for personal use. For information on bulk purchases or corporate premium sales, please contact the Special Sales Department. Nolo, 950 Parker Street, Berkeley, California 94710. Please note We believe accurate, plain-English legal information should help you solve many of your own legal problems. But this text is not a substitute for personalized advice from a knowledgeable lawyer. If you want the help of a trained professional—and we’ll always point out situations in which we think that’s a good idea—consult an attorney licensed to practice in your state. Dedication I dedicate this book to my mother, the late Edna Elias-Johnson, and to Stanley and Dorothy Pearson. ey don’t make ’em like they used to. Steve Elias Table of Contents 20 Frequently Asked Trademark Questions 1 Your Legal Companion for Trademarks 9 What’s New Since the Last Edition? 10 1 A Trademark Primer 15 Trademarks and Trademark Law 17 Basic Principles of Trademark Law 22 e Role of Federal Registration in Protecting Trademarks 31 Not All Business Names Are Trademarks 35 Trade Name Formalities 36 Trade Dress and Product Designs 42 Sources of Trademark Law 47 e Difference Between Trademark and Copyright 50 e Difference Between Trademark and Patent 51 2 Trademark, Domain Names, and the Internet 53 How to Clear and Register Domain Names 54 What to Do If the Domain Name You Want Is Already Registered 59 Domain Names and Trademarks 63 Other Trademark Issues in Cyberspace 64 3 How to Choose a Good Name for Your Business, Product, or Service 69 Anatomy of a Product or Service Name Trademark 72 Distinctive Names Make Legally Strong Trademarks 73 How Trademark Law Treats Marks With Common Terms 74 What Makes a Distinctive Trademark a Legally Strong Trademark? 77 Guidelines for Making a Mark Distinctive 78 Marketing Considerations When Choosing a Name Mark 88 4 Trademark Searches—What ey Are and Why You Should Do One 95 What Is a Trademark Search? 96 Why Do a Trademark Search? 96 What Resources Are Used in a Trademark Search? 97 Where Are Trademark Search Resources Located? 97 Different Levels of Trademark Searches—What ey Are; When ey’re Appropriate 100 Planning Your Trademark Search 104 Using a Professional Search Service 109 Using a Patent and Trademark Depository Library to Do Your Own Search 113 Does Your Failure to Search Mean You Acted in Bad Faith? 114 5 How to Do Your Own Trademark Search 117 Meet TESS—e Trademark Electronic Search System 119 Getting Started With TESS 120 Understanding the TESS Structured Form Search 123 Tips on Using the TESS Structured Form Search 127 Trademark Searching With TESS: An Example 132 Understanding the TESS Free Form Search 134 [...]... slogan for a brand of sport shoes and sportswear), Apple’s apple with a bite missing (a symbol for a brand of computers), and the name Coca-Cola in red cursive lettering (a logo for a brand of soft drink) A service mark is any word, phrase, design, or symbol that operates to identify a specific brand of service for instance, McDonald’s (a name for a brand of fast food service), ACLU (a name for a brand... are the logos, packaging, innovative product shapes, cartoon characters, website address names (domain names), and unique product characteristics that businesses are using to hawk their wares Even the look and feel of a business s website is important for a business to identify itself and its products in the marketplace All of these devices business and product names, logos, sounds, shapes, smells,... lettering used for IBM, the gold 20  |  Trademark: Legal Care for your Business & Product Name McDonald’s arch, the universally recognized swirl used to denote Nike products, and the blue cross used to denote health care services all demonstrate how powerfully a logo can garner instant product or business recognition Slogans Another popular form of trademark is the marketing slogan “Obey your thirst”... understand your rights and obligations in choosing and using a trademark to identify your business and products in the marketplace Trademarks and Trademark Law What’s in a name? To Shakespeare, “A rose by any other name would smell as sweet.” But what is true in love can be the opposite in business IBM would not smell half so sweet by another name, nor would Google, Apple, McDonald’s, or Levi’s In the business. .. between state and federal trademarks? 6 2  |  Trademark: Legal Care for your Business & Product Name 14 If my trademark search finds a mark identical or similar to mine and I find out that the owner is no longer in business (or that the mark is no longer being used by that business) , am I free to use it? Can I register it with the PTO? 7 15 If I combine my business or product name with a logo,... business world, the name of a successful product or service contributes greatly to its real worth Every day, names such as Allendale Auto Parts or Building Blocks Day Care identify these businesses for their customers, help customers find them, and (assuming they provide a good product or service) keep the customers coming back again and again And it’s not just a clever business or product name that pulls... my business or product name with a logo, does the combination distinguish the name from other names that are already registered or in use? If the name accompanying your logo is the same as or very similar to a name that is federally registered or used, you will be precluded from using or registering the name/ logo combination, even though the appearance of your name/ logo combination and the other name. .. 18  |  Trademark: Legal Care for your Business & Product Name name Few business owners can afford to disregard or run afoul of this body of law What Are Trademarks? Trademarks fall into two general categories: marks that identify goods or products (known as trademarks) and marks that identify services (known as service marks) Though you may occasionally see this distinction in action, these terms are, in fact, legally... day-to-day business You don’t need to become a trademark expert—you only need the basic knowledge that protects your business name Our goal in writing this book is to do just that—to give you everything your business needs to secure and protect your name efficiently and at a reasonable cost With that in mind, this book plots a course for small business owners The first half of the book deals with choosing and. .. Although most small businesses rely on their business names as their primary trademarks, there are many other ways for a business to inform consumers about itself, its services, and its products Logos Next to a name, the most popular commercial identifier is the logo, a pure graphic or a combination of a graphic and some aspect of the business name Examples abound The block-lettered Ford set against a . Trademark : legal care for your business & product name / by Richard Stim & Stephen Elias. 9th ed. p. cm. Rev. ed. of: Trademark : legal care for your business & product name / by. as complete as your own search of both registered and unregistered marks. 4 | TRADEMARK: LEGAL CARE FOR YOUR BUSINESS & PRODUCT NAME 8. What is a “common law” trademark, and what rights. the official PTO form to apply for a federal trademark registration? 8 20. How do I get an international trademark? 8 2 | TRADEMARK: LEGAL CARE FOR YOUR BUSINESS & PRODUCT NAME B elow are