IDENTITY

APRIL 2012

LEGAL ISSUES OF THE DESIGN WORLD (INFORMATIONAL ONLY. PLEASE CONSULT A LAWYER FOR SPECIFIC SITUATIONS)

TRADEMARKS Q & A FOR BRAND DESIGN AGENCIES

INTRODUCTION

Development of a brand through advertising, promotion and sales would be extremely difficult without the concept of trademarks. Put simply, a trademark is a source identifier i.e. it identifies your brand. A trademark identifies goods and a service mark identifies services. The same law applies to both. Trademarks are governed by federal statutes such as the Lanham Act, state statutes such as Ohio Deceptive Trade Practices Act and common law (judge made law based on cases). The law on trademarks in most states is based on the same principles as federal law.

WHAT DOES TM, SM OR MEAN?

TRADEMARKS ARE EVERYWHERE

Use of these symbols puts the world on notice, that the mark is your intellectual property. If a mark is not registered or is in the process of registration, use of the SM symbol (for trademarks) or symbol (for servicemarks) is recommended. An example of such use TM would be TRADEMARK . The use of the symbol is not permitted until the United States Patent and Trademark Office (USPTO) has granted a Certificate of Registration. Once the Certificate of Registration is TM SM obtained, one should replace the or with .

(2) descriptive, (3) suggestive, and (4) arbitary or fanciful. A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods, e.g. BOOK, NEWSPAPER, and is not entitled to trademark protection under any circumstances. A trademark is descriptive if it describes the intended purpose, function, or use of the goods; the size of the goods; the class of users of the goods; a desirable characteristic of the goods; or the end effect on the user. Examples of descriptive terms include HOME-MARKET.COM for internet referral service targeting home owners and e-FASHION for electronic retailing services via the internet. A suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods. An example of a suggestive term is the money store for money lending services. A fanciful mark is a combination of letters or other symbols signifying nothing other than the product or service to which the mark has been assigned e.g. EXXON, KODAK. Arbitrary marks have significance in everyday life, but the thing it normally signifies is unrelated to the product or service to which the mark is attached. E.g. CAMEL for cigarettes or APPLE for computers

DOES THE MARK HAVE TO BE A WORD?

The answer is no. While an overwhelming number of trademarks are usually word marks, there are six types of marks that can form the subject matter of trademarks: word marks, design marks, trade dress, sound marks and fragrance marks.

HOW STRONG IS THE SELECTED MARK?

Whether a mark qualifies for trademark protection is determined by where the mark falls along the established spectrum of distinctiveness. Arranged in order of protection afforded, the categories are: (1) generic terms,

Rayan F. Coutinho, Ph.D. Esq. (rfcoutinho@woodlamping.com) Wood & Lamping LLP| 600 Vine Street, Suite 2500, Cincinnati, Ohio 45202 | phone 513.852.6030 | fax 513.852.6087