• Why be concerned? • How to select a brand • Options for protecting a brand

1. The Law of Branding
Frisina & Smith, LLC
Innovate. Strategize. Succeed. TM
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

2. Introduction
• Why be concerned?
• How to select a brand
• Options for protecting a brand

3. Why Be Concerned

4. Why Be Concerned?
• Standout from the crowd
• Which of these are you more likely to remember?
Or

5. Why Be Concerned?
• Guard your goodwill
• Protect your branding investment
• Reserve your right to expand

6. What Is A Trademark?

7. What Is A Trademark?
• What is the purpose of a brand, i.e. trademark

8. What Is A Trademark?
• What can function as a brand, i.e. trademark?
– Words, tag lines, phrases, letters or other characters, and Acronyms,
– Pictures/graphical elements (e.g. logos),
– Colors (e.g. product or package coloring),
– Smells,
– Sounds (e.g. simple tones, jingles, non-musical sounds, etc.),

9. What Is A Trademark?
Distinctiveness = Strength
• Words
– XEROX (fanciful)
Decreasing Distinctiveness
– APPLE (arbitrary)
– COPPERTONE (suggestive)
– And Sometimes: personal names,
descriptive terms, geographically descriptive terms
– Generic terms can never be trademarks

10. What Is A Trademark?
Inherent Distinctiveness
fanciful/arbitrary suggestive descriptive generic
Distinctiveness

11. What Is A Trademark?
• Pictures/Logos

12. What Is A Trademark?
• Combinations of Words and Graphical Elements

13. What Is A Trademark?
• Examples of Color as a Trademark
– Pink for fiberglass insulation
– Green for various batteries
– Red and gold for prescription medicine spray bottle

14. What Is A Trademark?
• Product Packaging Trade Dress
– Distinctive elements

15. What Is A Trademark?

16. What Is A Trademark?

17. What Is A Trademark?
• Product Design Trade Dress

18. What Is A Trademark?
Scent Marks Goods
Coconut Retail store services featuring sandals and flip flop
sandals, and related accessories
Peppermint Scent pharmaceutical nitroglycerin
Peppermint Scent office supplies, namely, file folders, hanging folders,
paper expanding files
Vanilla office supplies, namely, file folders, hanging folders,
paper expanding files

19. What Is A Trademark?
• Guess The Sound Mark: • Answer:
– Mystery Mark 1 – 20th Century Fox
– Mystery Mark 2 – AAMCO
– Mystery Mark 3 – AOL
– Mystery Mark 4 – Green Giant
– Mystery Mark 5 – NBC
– Mystery Mark 6 – Harley Davidson

20. Selecting A Brand
• What makes a good trademark?
– Has distinctive capacity
– Lacks a likelihood of confusion
– The rest depends on the specific facts of your situation
• Is this a business name, product name, product packaging, the design of a
retail shop, a product design, a distinctive element of your business or
product?

21. Selecting A Brand
• Common Pitfalls
– Personal names
– Names of others, e.g. famous persons
– Geographic locations
– Descriptive Terms
– Generic Terms

22. Identifying and Mitigating Risk

23. Identifying and Mitigating Risk
• Identifying Risks:
– Selecting a weak or difficult mark
– Selecting a mark that will result in litigation and/or forfeiture
• Mitigating Risks
– Availability Searching and Opinions
– Insurance

24. Identifying and Mitigating Risk
• The Search and Opinion
– Scope: federal, all 50 states, common law, business names, domain names
– Purpose: identify the closest marks and evaluate them for registrability

25. Identifying and Mitigating Risk
• Effects of the search/opinion:
– Increases the likelihood of selecting a registrable mark,
– avoid wasting time and money pursuing a difficult or marginal
trademark,
– identify whether your mark is likely to infringe that of another, and
– avoid having to abandon a brand after investing in it

26. Options for Protecting A Brand

27. Options for Protecting A Brand
• Common Law Trademark Rights
• State Trademark Registration
• Federal Trademark Registration
• International Trademarks

28. Federal Trademark Registration
• Benefits:
– Registration imparts presumptions of validity, distinctiveness, ownership…
– Incontestability after five years
– Enforceable nationwide regardless of actual geographic scope of use
– Enhanced damages are available
– The right to use ®
• Approximate Cost:
– $325/class plus attorney time.

29. State Trademark Registration
• Benefits:
– Less expensive and easier to obtain than a federal registration
– Serves as notice to others of your claim to the mark
– Considered “competent evidence of registration”
– Must use TM rather than ®

30. State Trademark Registration
• Approximate Cost:
– Ohio filing fee is $125
– Non-monetary costs:
• No incontestability
• No presumption of validity
• No enhanced damages

31. Common Law Trademark Rights;
the do-nothing option
• Benefit: • Cost:
– Limited enforceable rights exist for “senior – $0. There are no direct costs. You obtain
users” common law rights as soon as you begin
using the mark in commerce.
– Can obtain a registration later if deemed
economically feasible – No incontestability
– No presumption of validity
– No presumption of ownership
– No enhanced damages
– Must use TM rather than ®

32. International Trademarks
• What is it?
– Madrid Protocol versus Nation-by-nation
• Benefit:
– Potential cost savings over nation-by-nation filing
• Approximate cost:
– Varies widely based on:
• The number of nations selected;
• The particular nations selected (each has its own filing fee);
• The nature of the trademark (e.g. whether it is a color or black/white mark); and
• Exchange rates.

33. Conclusion
• Screed trademark candidates with the help of an attorney
• Get a professional search and opinion
• Select the proper form of protection

34. Thank You
Frisina & Smith, LLC
Stow Office Akron Office
4301 Darrow Rd. 39 E. Market St.
Suite 1450 Suite LL-1
Stow, Ohio 44224 Akron, Ohio 44308
Contact Us
(330)777-0063
dominic@IPCorpLaw.com
www.IPCorpLaw.com
© 2009-2012 Frisina & Smith, LLC