Bench & Bar

MAR 2018

The Bench & Bar magazine is published to provide members of the KBA with information that will increase their knowledge of the law, improve the practice of law, and assist in improving the quality of legal services for the citizenry.

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| MARCH/APRIL 2018 18 e right to sue for infringe- ment in federal court. Should infringement be found, this provides firm backing to force the infringer to cease and de- sist. e right to use the federal registration symbol ® next to the trademark. Clients typical- ly enjoy displaying this symbol in connection with their regis- tered goods or services. In the absence of such registration, the client will only have the right to use their trademark within the limited geographi- cal area in which its goods or services are sold. 4 is might have had some practical significance decades ago, when almost every business had a physical location and com- petitors were only those businesses within driving distance. Now, many businesses are transient or web-based, offering goods shipped to the customer's doorstep or ser- vices rendered online. Because a company, product, or service name can be Googled, it becomes very important to carve out that unique space online via nationwide regis- tration. is offers legal protection against competitors who might turn up for the same identifying search terms and steer business away from your client. WHEN CAN I FILE? e trademark law is designed to promote business by offering reasonable protection for one's branding. To this end, a trade- mark only protects goods or services that B Y : T E D H O U L E H A N T H E F U N D A M E N T A L S O F Protecting Your Client's Brand: F E D E R A L T R A D E M A R K R E G I S T R A T I O N Features: T rademark is an area of law that clients typically have some notion about. ey are starting or have started a business, would like to protect their invest- ment in branding, and may have been told by their logo designer, Amazon, or someone else that trademark registration is how to secure that protection. The internet has made it possible for individuals to start and operate their own small businesses, and for consumers to purchase products and services originat- ing from outside their local area. ese expanded opportunities make branding more important now than ever. Clients are incredibly enthusiastic about their branding, but understandably care little about filing particulars. A trademark attorney's role is to understand the client's branding and translate the details into a trademark application that will provide broad and accurate protection. If your practice includes any element of business law, you will likely receive occa- sional inquiry about trademarks. The following are questions clients commonly ask and the basic background information needed to answer such questions. WHAT IS A TRADEMARK, EXACTLY? A trademark is an indication of source. It is something that identifies the origin of the good or service upon which it is affixed or advertised. at something might be a few letters, a word, several words, numbers, symbols, a graphical design, or some combi - nation thereof. e source itself is typically a company that has placed the good or ser- vice in commerce and wishes to distinguish its product or service from competitors. 1 It is a bit easier to define "trademark" by noting types of items that are commonly filed as trademarks. Brand names, prod- uct lines, product or service names, brand slogans, product or service slogans, brand logos, and product or service logos are probably the most common, though the federal trademark office also allows more obscure matter to be protected including short videos and sounds. 2 DO I NEED A TRADEMARK? Some degree of common law rights attach to trademarks that have been used in com- merce, irrespective of registration. While it is important to know this as an academic point, the benefits a client might want from a trademark are only available through registration: 3 A legal presumption of exclu- sive ownership of and right to use the trademark nationwide. Public notice of the client's claim of ownership of the mark via listing in the United States Patent and Trademark Office's (USPTO) online, searchable database. is typically deters other would-be competitors from adopting and filing sim- ilar trademarks. 1 2 3 4 ART LAW, COPYRIGHT & TRADEMARK

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