Hello everyone, my name is Kevin Chu, one of the deputy attorneys at the Bbs practicum at Berkeley law Right here for another workshop in our 15 minute Laywer series.
Today's workshop is going to be a whirlwind tour through the trademark application system, or the trademark registration system.
So yeah, that's let's hop right to it.
So we want to start with a bit of context and background information about the types of assets we'll be protecting in this process.
There are many different areas of intellectual property law that will be, that you probably have assets in.
First would be covering trade secrets.
Trade secrets are a very broad expansive topic that would cover essentially any information that is confidential and Provides her business with some kind of competitive advantage over others.
So this is extremely broad and The nice thing about trade secrets is that there's nowhere will you need to file and register to prove that you have this trade secret at a certain time, That's all part of the internal documents within your company.
Something like the Coca-Cola recipe or the recipe for KFC's Fried Chicken batter, of course and so One of the advantages of having an asset that is a trade secret.
Is that it essentially remains confidential and it has the protection of a trade secret until it is revealed publicly.
There's no timeline there's no deadline upon which you are forced to reveal your trade secrets to the public at large.
You can just keep that within your company forever essentially.
In contrast, we have patents.
This is another area of intellectual property law that would essentially Give your business a monopoly over certain inventions Some kind of useful invention that you created that you come up with There are also other patents around designs or dimensional features that make your product look aesthetically pleasing perhaps.
And of course, there are also plant patents around certain strains of genetically modified plants or naturally created strains that are hybridized together, But for most businesses they have the main, the thing that you would think of what do you think patents would be the utility patent, which covers inventions.
And in exchange for? applying for this patents for Revealing to the public how to Describing this invention and how to creat this invention for themselves The government grants the patent holder essentially its 20-year monopoly on being able to make, use, sell, offer to sell, or import that invention.
So the whole patent regime is around Trying to reward the inventors for their creativity, for their efforts at coming up with this new and useful invention To ensure that they can reap the profits from that image.
Next up we have copyright law.
This refers to or this Protects the, what we call the creative expressions that are fixed in a tangible medium.
So these have to do with Ensuring that whoever is putting down these Creative thoughts onto paper on to you something that is tangible, it doesn't have to be like a stone.
Like a piece of paper I could be literally written on this whiteboard.
If I were to draw a doodle, I would need to receive copyright protection However, it does need to be recorded somewhere if we're not being recorded on video my words as they come out would not be copyright protected, but now that they are, Is stored in some kind of hard drive mixed with tangible medium and therefore I would own the copyright to that to that work.
Additionally copyright, things that are covered in copyright You would receive copyright protection and immediately once it is fixed in a tangible medium.
However, in order to Really enforce have some legal teeth them behind the enforcement mechanism against copyright infringement You'd want to register with the U.
copyright office, and this is in contrast to the trade see and where they keep that all internal.
Then finally we have trademarks, which is why you're all here, which have some trademark registration.
Unlike the other areas of IP law where the goal is to ensure, business practices or rewarding financially that the creator of that work, trademarks actually stem from this desire to protect consumers.
And the goal is really to protect against customer confusion because as you can imagine if businesses were naming similar goods and services in a similar manner then many consumers would be very confused why there are so many different versions of Apple phones And some of them are terrible and some of them are really great.
And so the idea is that We as a society want to make sure that customers can, if they, if there is some kind of distinct symbol or phrase Some something that signifies the source or origin of a particular service, why not create the system so that Other players within that marketplace aren't able to ride on the coattails of other companies reputations without some kind of Assurance that the goods and services are actually from that origin.
So the question is you know, whether your company actually needs a trademark or service mark? One of the stakes you want to make is that the trademarks themselves generally protect goods that you are using.
So if you know something, a good that is Where you're using a certain mark, whether it's a logo or a slogan a phrase, catchphrase, in selling a good, that would be a trademark, whereas if you are using a symbol or a logo, word ,or phrase in connection with selling a service, that would be a service mark.
But in practice, there's not a real distinction.
Both would be referred to as trademarks, just for ease of talking about it.
and You'd be going through the same process do the registration process, but there are certain differences in the type of evidence you have to show to back up that you're actually using this mark as we'll see it later slides.
And so this process itself, you can complete this registration online It's a fairly streamlined process there are different tiers of pricing where you would file these applications, depending on how well the session that you fit into the streamline process that the USPTO has set up.
We'll see differences in later slides, but it essentially boils down to whether the USPTO would have to deploy additional resources to Essentially make a custom job evaluating your trademark registration.
And so you might be running why should I get a registered trademark? Yeah? The bottom line is that It kind of all goes back to this protection against customer confusion.
The goal is to provide notice to the public that you are using this particular mark in commerce For, in connection with this particular good or service and you want to declare that nationally.
Ideally, you'd be able to carve out that brand for yourself across the country However there are There might be some unfairness if there weren't a registration Because if you're based in California, and someone else is using that mark in a similar way all the way in, Florida It might not necessarily be the case that they should have been on notice Prior to using that mark.
Okay, so we have this Trademark system.
the major downsides of not registering I kind of boiled down to Essentially not be able to carve out that that logo or symbol or words for your particular business.
and at the Far end of the negative spectrum is the potential for pivoting in terms of renaming All the marketing materials that you've produced especially physical tangible ones that require investment in hardware and operational expenses to actually rebrand all of the physical signs and flyers and stuff, but Ideally a little bit of preventative medicine in the form of trademark research could have prevented that.
As well as just switching cost for your existing loyal customer base They might be confused if you were called one business one day and you change your name There's a lot of goodwill reputation that might have been lost in that exchange.
Additionally, you have this presumption of ownership if you are the registered owner of that work.
So this can help first deter potential bad actors who might want to ride in on your reputation, but also there's to give notice to everyone that you are using that market a certain way so that you can better ensure a virtuous cycle of friendly business competition without relying on potential customer confusion – So in terms of the steps to file a trademark we're gonna dive into the application itself So that'll be exciting as you'll see the Web Design of the USPTO registration process.
It's a bit dated But it's loads very quickly.
Very good First thing that we want to mention though is when it comes to the marks themselves, there's the spectrum of Degree of protection you'll probably get from a mark from high to low.
So the types of marks that We must talk about having very strong protections would be arbitrary and fanciful works.
So an arbitrary use of a mark would be using a real-world word, something that exists with the English dictionary to describe your product or service.
For example Apple computers in a way that is not where it's not used in every day.
So if Steve Jobs and Steve Wozniak didn't start an Apple computer and become widely successful This company that we know it today is Apple Computer There's no reason for there would be no reason for us to associate the Apple the fruit with computer hardware Similarly in terms of fantasy words, these made up words like Kodak Xerox for Google they have no Customers themselves when they hear these made-up words, there's no reason for them to think of that particular good or service other than their prior experiences with the company that is using that mark, for example Google as a search engine or Xerox the photocopier.
No customer would say Xerox.
Oh, of course.
That's a copying machine unless they have experienced somehow The Xerox company has particular issue.
As a photocopying machine in the past.
Next up we have suggested marks, marks that would suggest some kind of connection with the goods or service but doesn't I guess hit the nail on the head too hard.
For example this Ford Mustang as a fast car, Mustangs were fast horses, but there's you know Yes, there is a Very attenuated logical leap that a customer could save themselves Mustang that must refer to a car because those are also very fast It's it's you can see that the relationship is just more distant.
In Contrast we have descriptive marks where this it does suggest the the connection between This this mark and the corner service provided an example might be cold and creamy for ice cream it Describes exactly what the texture is on that good.
And so In general what happens is that the mark itself has to acquire secondary meaning within the marketplace so In order to for you to receive federal trademark protection over that work so essentially you have to do like surveys to make sure that these Certain customers when they hear cold and creamy Ice cream that must mean Kevin's ice cream company or ice cream that comes from Kevin's ice cream company.
Another example would be things that are location-based, So Mendelson vineyards, this is a vineyard within the city or county of Mendelson or Having the last name of someone whose names Mendelson, there might be many Mendelson's out there who also wanted to start vineyards.
And so you wouldn't actually receive protection of that unless in demonstrate these customers have this logical kind of connection between those marks.
Then finally we have purely generic works These just wouldn't be protectable as if as if I started a chair manufacturing company And I want to trademark the word chair for the type of goods that I sell that would be unfair to everyone else who wants to produce and sell chairs because if I would receive the federal trademark registration before the board chair, none of my competitors could use the word chair and describing their four legged platform on which people sit.
So, that would not work.
Ideally, you'd be in the arbitrary, fanciful, or suggestive side of the spectrum in filing this.
So an additional factor to consider when you're choosing the type of walk to register is Whether there's a likelihood of customer confusion if you were to register.
So if there already exists a mark in the marketplace, so if you were trade, registering the trademark for your particular mark you do some searching you see that It exists in other forms and other goods and services that are completely separate from yours? Totally fine.
That's why we have Dove chocolate That company that makes those delicious chocolate Vs.
Those are fully separate categories It's very unlikely that customers would be confused and sleekcraft is One of the seminal cases around this area that go through the different analysis A court would use to see if there would be a likelihood of customer confusion.
As we mentioned similar in the Marks obviously the goods to each other in the marketplace What they were to precise here is that the type of good and degree of care likely to be exercised by the purchaser If the purchaser is likely very sophisticated if let's say if dove soap were a industrial, where the only buys of that soap, would be essentially people who have been working on construction jobs Last 10 to 15 years for know exactly what chemical composition they want in a particular surfactant It's very unlikely that they would think that dove soap had to do with a particular or dove That would be very likely that these purchasers would zero in on exactly The correct product and therefore there would be less of a likelihood of customer confusion even if there were kind of similar sounding names for the same types of words, so Another thing to watch out for there.
And of course we have some tips for doing that preliminary trademark search.
You could go through the Usual search engines to see if there are similar uses or uses in similar industries or goods or services Or social media accounts also a good source for that.
When it comes to domain names, that could also be a good way to find out who owns the competing use of that mark and it might be a good opportunity for use against negotiations to see if there's some way both Your use and the other users use for the market could coexist Oftentimes those are worked out by agreement so that both parties agree that they will start encroaching onto the other person's territory You can also run an actual search within a trademark electronic search database called TESS And it's pretty easy to do At least for basic board mark search.
And you can see at least whether someone else has done a federal registration of that board work and so you What will be spat out is a list of other marks that are similar either using your word in different context Within a larger phrase, but it will also state whether the registration is live or dead.
It could be abandoned it could be Expired for some other reason and you'd also be able to see which class your good or service falls under.
And so if they are completely different Uses different different industries that they've been used, different goods, Then you're probably okay But if it's very similar that we might be a good time to think brainstorm about other mark ideas.
And so here's our table of the different filing fees involved.
One thing we want to show is that if you only want to correspond with the USPTO through physical snail-mail You'll have to go through the $40 to use regular form But if you line up better with their more automated systems Systems that don't require human beings on USPTO side you could qualify for reduced fees.
And yeah here we're gonna dive into the application process itself as you can see you have the biggest investment of web development here, but And of course yeah step one you'll be writing down who the owner of the mark is, whether its corporate or LLC entity or individual.
Here you'll also choose whether this is a mark for Word mark, that's actually a slogan name phrase that is Purely the text or if there's a logo at all And then we want to make on this that if you have the choice between well I'd say that you have a logo that consistent words, but it was in a stylized fashion right that you have a Arranged in an arc and there's a pictorial representation of your company as well this logo You would have like the broadest protection if you were to Register the word mark separately from the logo Because you would be able to protect essentially every iteration or any variation of that word mark whereas if you were to Trademark just the logo itself.
You'd have to the court would look at the Similarity between the design of the logo as well.
And so that would reduce your Surface area to have some protection but if you weren't a separate, but if you were to Register the trademark for the logo and the word more separately.
Those are two different filing fees to consider there.
and here's where you'd actually specify Whether this is a standard character mark, so the basic word mark or a special forms, okay? This is for the logo itself You can attach an image of the logo and if there are words from the logo you type it out there Oh, one thing we want to point out here is that for Certain types of applications you would need to provide evidence that you are using this market commerce already.
I will have a slide that expands on that later.
But this is why you present evidence showing that you have indeed used this market commerce.
And so here you attach some kind of image showing that it could be Your mark on your sign post just outside of your brick-and-mortar retail store.
That would show that there is something Service that you're providing and you're using that mark in connection with that service.
You don't want to just reattach your the image of the logo or word mark by itself because that's not actually Demonstrating that you're using or in connection with selling your goods or service.
What's the mean that if a mark is used in commerce currently now, so under the Lanham Act This is what allows the US government the federal government to regulate trademarks in general and so what happens is that Congress Is able to create this trademark registration system federal because there's this impact on Interstate Commerce And crucially in order to register federally for federal trademark protection you need to make sure that you have used the mark in commerce in such a way that Congress can actually regulate it and Typically what this means is that you have made some kind of foreign goods, then you've made some kind of sale across state lines so you can demonstrate that you in California sold a good to someone in Arizona or for services This is somewhat of lower bar You offer your service across state lines and you are actually able to deliver on that service on that particular date Then here is right so had another component on your trademark application would be these Selecting a material cost of goods or services Yeah, a list of different classes and future slides here, but they will Delineate or describe though the broad categories that your goods or services fit in it's like Here's a list of examples there You have a full list through the USPTO website some of the resources that I will share And then you contact information, you'll know whether you're approved or if additional information is needed And by that time hopefully, we'll be all done you can just make your credit card payments Hopefully for that $2 to $25 and that is the trademark registration process.
If you have future questions we're always happy to chat.
I probably should put my email on that.
we also have our website: OLLIELEGAL.
Com so should put that It's spelled O-L-L-I-E-L-E-G-A-L Dot Com.
For additional resources around this topic.
But yeah, we'd always be happy to chat and I hope that helps! Yeah, if you have any questions from any the viewers online or Sounds good Thanks a lot.