(a.k.a. How to Keep Peace With Your Marketing Department)

1/20/2012
(a.k.a. How to Keep Peace With
Your Marketing Department)
Jennifer L. Barry
LATHAM & WATKINS LLP
January 24, 2012
 Trademark: a
word, phrase, symbol, logo or
design used to identify the source of goods and
distinguish them from goods manufactured by
others.
• Words, names, symbols, devices, pictures, designs, numerals,
abbreviations, acronyms, slogans, phrase, fragrance, color, a sound
combination, label, container, package, product shape, building shape,
telephone number, geographical name, grade designation, or any
other combination.
 Service
mark: essentially the same as a
trademark, but relates to services, such as a
restaurant, a bank, or a law firm.
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1/20/2012
 “A
man is only as good as his name.”
 Trademarks
are one of the most valuable
assets of a company.
 Consumer
brand recognition and
recognition of product lines.
 Goodwill
 Creativity
 Communication
 Clearance
 Continuous
Use
 Consistency
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 Original
and creative
 “Strength” =
protection
 DISTINCTIVENESS

is key
Five “classes” of marks, from strongest (very good at
distinguishing one source of that product from all
others) to weakest (not very good at distinguishing one
source of that product from all others):
• Fanciful
• Arbitrary
• Suggestive
• Descriptive
• Generic
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
Fanciful marks are marks that have no meaning in ordinary
language usage – it is a word that has been conjured up to be a
trademark.
• KODAK for film
• EXXON for oil/gas
• REEBOK for shoes
• XEROX for copiers

Arbitrary marks are marks where common words are applied in an
unfamiliar manner.
• CAMEL for cigarettes
• IVORY for soap
• APPLE for computers

A suggestive mark is one for which a “consumer must use imagination . . .
to understand the mark’s significance . . . the mark does not describe the
product’s features, but suggests them.”
•
•
•
•

MICROSOFT for computer software products
SKINVISIBLE for transparent medical adhesive tape
VERICHECK for financial transaction verification services
HABITAT for home furnishings
Descriptive marks directly convey some quality, characteristic, purpose,
component or other property of the product.
•
•
•
•
RAPID RESPONSE for emergency medical services
PUBLIC STORAGE for storage facilities open to the public
HONEY-BAKED HAM for hams
SPEEDY PRINT for copy services.
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
A generic term is the common name for a type of product made
my many companies. A generic term cannot be a trademark.
• LITE for low-calorie beer
• URGENT CARE for medical services
• YOU HAVE MAIL for phrase to alert of an email arrival

Trademarks can become “genericized”
• ASPIRIN
• THERMOS
• CELLOPHANE
It is very important for the marketing department
to communicate with its legal team when
creating a new brand. The legal team can help
marketing accomplish its goals.
 Marketing department should keep in touch with
the legal team – if the marketing department
decides to stop using a brand, or decides to go
in a different direction, they must alert the legal
team.
 Communication between the marketing
department and the legal team is key to protect
and promote brands.

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 Make
sure that the mark can be “registered”
with the United States Patent & Trademark
Office to ensure greater legal protection.
 The following can be registered as a
trademark:
•
•
•
•
•
•
•
Words/combinations of words
Logos
Colors
Fragrances
Three-Dimensional Shapes
Sounds
Names
 The
following subject matters cannot be
registered as a trademark:
• Marks that consist of immoral, deceptive or
•
•
•
•
scandalous matter;
Flag, coat of arms or other insignia of the United
States, any State or any foreign nation;
Name, portrait or signature of a living person unless
that person gives written consent;
Name, portrait or signature of a deceased President
of the United States during the life of a surviving
widow, if any, unless with that widow’s written
consent; or
Generic marks.
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
Conduct a U.S. Full Search to make sure no one else is using the
mark.
• If someone is already using a mark (a “senior user”) that is similar to the
mark you are considering, be aware that the following factors are evaluated
in determining whether the two marks are likely to cause confusion in the
marketplace (which could lead to your use of the mark as trademark
infringement).
 Strength of the senior mark;
 Degree of similarity between the senior mark and your proposed mark;
 Proximity of the products and services and the likelihood that the senior
user could reasonably be expected to expand into substantially similar
products
 The junior user’s “good faith” in adopting the mark
 Evidence of actual confusion;
 Sophistication of the buyers; and
 Whether the products are advertised/marketed/distributed through the
same channels.


Use The Mark Continuously
• Save samples of use
 Keep track of how the mark was created, what it
means, why it was chosen and date of first use
• Save (off and online) catalogs
• Create use files
Risks of Non-Use
• Abandonment of mark
• Cancellation of mark
• False affidavits / declarations
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Although this seminar presentation may provide information concerning
potential legal issues, it is not a substitute for legal advice from qualified
counsel. This presentation is not created or designed to address the
unique facts or circumstances that may arise in any specific instance. You
should not, nor are you authorized to, rely on this content as a source of
legal advice. This seminar material does not create any attorney-client
relationship between you and Latham & Watkins LLP.
Jennifer L. Barry
Partner
Latham & Watkins LLP
600 West Broadway, Suite 1800
San Diego, CA 92101
(619) 238-3024
jennifer.barry@lw.com
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