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thank you everybody for joining us for today's phone conference series today is the first in our series of trademark clone conferences and we're going to be discussing ten essential trademark tips my name is Eric Pelton and we are attorneys at the firm of Eric Templeton and associates in Falls Church Virginia I've been a trademark attorney for 12 years now 10 years in private practice after starting my own firm and prior to that I spent two years working at the US Patent and Trademark Office our firm has registered more than a thousand trademarks for clients from 48 states and all around the world and also joining us is our associate Marc Donna hey hello I'm Marc Dunham a I'm second year trademark attorney associated here with Eric Felten associates I graduated from George Mason University School of Law and also started working here during my third year as a student there and then prior to law school went to University of Notre Dame undergrad and have a master's in systems engineering from George Mason as well it's gonna be a pleasure speaking with you today we've got a lot of really valuable and useful trademark information to share with you today in addition to the ten different trademark essentials that we've got we've got a bonus tip for each section and we're going to take questions at the end so hopefully save up your questions for the end we will unmute the lines and take questions then we want to remind you briefly that this is not formal legal advice this is merely for informational purposes if you have any specific trademark or other legal questions please consult an attorney and we're going to jump right in now Marc will cover the first of our essentials well the first issue is is the fact that not all trademarks are created there are strong trademarks and weak trademarks and the strength of a trademark dictates how well it can be enforced against others and how close others can get to you in competition with their services so this scope of protection that you're getting with your trademark is often dictated by the words you select for the mark itself and they're classified on this scale of strong to weak and I'll go through the categories here so just a brief rundown you have your fanciful marks your arbitrary marks your suggestive marks those are the strongest and then your weakest are your descriptive marks and your generic marks so a fanciful mark is an invented term and something created just to be a trademark it doesn't have a dictionary definition isn't something someone else with have a legitimate reason to use so for example Verizon or singular are terms those companies created today does a to designate their services to others if someone else goes out and tries to sell cell phones with a word it's very close to the horizon the Verizon would have a pretty good argument that those people are trying to trade off of the goodwill and reputation of Verizon and so those those fanciful you know invented terms have got a very strongest protection there's also next unless they're arbitrary marks now these aren't inventive terms invented terms but they are terms that have no direct meaning in relation to the goods or services that they're used with so a good example here is Apple Apple computers it apples exist it's a word it's dictionary familiar with but it's not something that has anything to do with computers and so that's also a very strong term someone else is using the word Apple with computers it's a pretty good argument that they're encroaching in on Apple's protected source space now if someone used the word Apple for an orchard it'd be a different deal they'd have some legitimate reason to be using that term and so it would be less strong if it's used on goods or services that are connected with the word in some way now the third of the strong ones are our suggestive marks and those are marks that don't immediately describe the services or goods or something about them but they but they give an impression about the goods and services to the customer as soon as they see them a great example of this is the new car from Nissan called the leaf it's an electric car and leaf carries with it a message about the environment and having a light carbon footprint and and being environmentally responsible that in and that's an impression that they chose that mark convey to their customers know that does have some bearing on the product you know to that extent but it still is a pretty strong mark with you know a good suggestive quality so the meaning of the mark the mark has some meaning on its own it doesn't have to be conveyed entirely through the advertisement people get it right away now those are all strong marks but below those in the level of protection there's two other categories the first of those is descriptive marks and descriptive mark is something that directly says something about the services so an example of a really descriptive mark would be like Bank of America it's a bank and it's in America descriptive marks generally aren't allowed to be registered in the US Patent and Trademark Office the only way they can be registered is if the applicant shows that through advertising and efforts people have begun to associate that descriptive term only with them and so Bank of America had to do some extra work in order to to get a registration for their mark and their mark gives them a narrower scope of protection if you opened up a bank tomorrow and called it America's Bank Bank of America might complain but they might have some you know they might have weaker rights to stop somebody because America's Bank is also in America and it's also a bank whereas you know if you had if they had a stronger mark their rights would be would be better and easier to enforce now finally their generic terms generic terms can never serve as a trademark they are terms that are intended to be available to any anyone in the public because competitors need them to survive their services and generic terms are the name of the goods and services car for cars banked for banking no one can claim exclusive rights to those marks because they don't designate the specific provider of services and they need to be made available to others and so that's kind of a continuum and then there's other factors that can affect the strength of your mark like if you've become famous through large sales or advertising the earmark is stronger and if other people are using similar marks for similar goods or services or markets weaker and these are all the factors that come up when someone gets into a trademark dispute and when someone's deciding whether or not a trademark is available so a bonus tip on the strength of Mars is at least we believe that suggestive trade of Mars you know like lease for an electric car are probably the best marks out there you want to carefully pick something that is available isn't like others but also gives that Impressionists gives an impression about your goods to customers so that you don't have to do all the late through your marketing tell them what your what your mark means a good example this would be the new Starbucks and v
Thanks for your comment Lino Prater, have a nice day.
- Robbi Gaughan, Staff Member
Thanks for this interesting article
Thanks Milly your participation is very much appreciated
- Robbi Gaughan
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I've studied esotericism at The University of Alabama in Huntsville in Huntsville and I am an expert in aquaculture. I usually feel full. My previous job was irradiated-fuel handlers I held this position for 27 years, I love talking about urban exploration and geography. Huge fan of Ryan Kwanten I practice short track and collect scouting memorabilia.
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