Except for the Entrepreneur track, the scenarios concern the relocation from New Zealand of professional rugby player Dev Escary to start a professional league in North America. For legal purposes, the more distinctive the name, the better. Fanciful (made up) names are the strongest because they dont mean anything else in the world. Arbitrary or suggestive names are also strong and registrable. Marks that describe the service or a feature/quality of the service, are considered weak. To review how to select a trademark, watch from the US Patent & Trademark Office. You have your own business going (or expect to launch one). You may search and clear your name for this assignment. Mia Escary, member of a popular New Zealand girl band, wants to launch a fashion line. Brother Dev has promised to let her design his teams uniforms and fan apparel. She wants to project a street chic vibe with her brand. What name would work well for Mias fashion brand? Devs rugby team is launching in your town and youd love to have the team make an appearance at a new festival youre planning. What name will you choose for the festival? You are forming a public relations company and learned about Dev and Mias relocation from your good friend Ebenezer. This presents the perfect opportunity to land Devs rugby league and Mias band as your first clients. What professional, attention-grabbing and memorable name can you come up with? Dev Escary, former captain of the famous NZ Blacks, has been recruited to put together a professional rugby team in the USthe first in the new United Rugby Federation (URF). The NFL is backing the effort and is encouraging him to come up with a quality name for the team. Some of the choices so far: Rough Riders ~ Braves ~ Red Rovers ~ Shrikes ~ Express ~ Rebels. Use one or pick your own name. Ebenezer Nguyen is making a documentary about Dev Escarys move from New Zealand to start a professional team. Hes starting up a production company and has thought of the following names: Polymer ~ 27 Signals ~ Ebenezer ~ Blast ~ EbenEye ~ Nguyen. Do you like any of these or can you think of something else? Response 5 points 0 wordsAttach file(s) Max size 500 MBDRAG & DROP cancel (fanciful, arbitrary, suggestive) marks are those that do not directly describe the goods or services offered under the mark and thus can be easily protected. They make the consumer have to think to make the connection between the brand name and the item itself. (descriptive) marks dont require such thought. They communicate the nature of the products or services immediately. Because little imagination is involved, weak marks are not easily protected. In this regard, marketing and legal departments are often at odds. Marketing likes a descriptive name because it immediately tells the consumer what the product is or does. But such names are usually harder to protect because they typically incorporate words that every competitor in the space needs to describe their product. The law rewards unique, distinctive names. Legal would prefer the brand owner to choose a non-descriptive mark even if it means having to spend more money to educate the public about the connection between the name and the product. Is the mark youve chosen strong (i.e., suggestive, arbitrary or fanciful) or weak (i.e., descriptive of the goods/services)? Response 10 points 0 wordsAttach file(s) Max size 500 MBDRAG & DROP cancel Trademark Clearance SearchGroup 4 questions SEARCH FOR POSSIBLE CONFLICTING MARKS AND DOCUMENT YOUR FINDINGS Once youve selected a name and product description, the next step is to see whether any competitors have a name that might conflict with yours. If they are first (senior) and you are second, you may be an infringer. A clear search is one that uncovers no other marks that are confusingly similar in your product space. In this part, youll conduct and document a trademark clearance search in three databasesUS, State, and Google (representing common law unregistered marks)and let me know whether you think the mark can be used or is blocked from use by a senior user. Consider: 1. Competing goods/services? 2. Similar appearance, sound, meaning? 3. Same stores or channels of distribution? 4. Trying to cash in on good will? 5. Sophisticated target market? 6. Overlapping target market? 7. Strong mark? Well known? 8. Actual confusion? (irrelevant to a product that hasnt launched) NOTE: If your search returns few or no results, broaden the parameters to see if there are any spelling variations that might be soundalikes for your mark (think of how your mark sounds in a radio ad). The point is not simply to run the search, but to look for other marks that may be confusingly similar enough to block your use. This is a search of all applications and registrations of trademarks where the service is offered across state lines or internationally. For a quick video how-to, (but note the USPTO home page has changed so use the link below to get to the correct database) Search your exact term along with soundalikes Screen shot your results page (No TESS Results Found means no matches existsa good thing) If any marks are similar, screen shot those pages and analyze whether they could block your mark on grounds of confusing similarity Response 10 points 0 wordsAttach file(s) Max size 500 MBDRAG & DROP cancel Repeat your search on the STATE level. Here is a list of links to the state trademark registries: . Choose your states database or use the Florida database at if your state database is not online or charges for access, or you are in another country (unless your national or provincial registry displays results in English). Response 10 points 0 wordsAttach file(s) Max size 500 MBDRAG & DROP cancel Repeat your search on Google ( ) or another search engine. Review the search results to determine whether there are any unregistered uses that might post a risk to using the name. Remember, trademark rights begin with useeven unregistered marks can block you! NOTE: For better results when conducting this search, include a generic term that describes the product or service your mark represents along with your proposed brand name. For example, instead of searching GoFast for writing services, search on GoFast writing. This makes the results more relevant to your purpose. You can even do a second search (optional) in a broader product category, such as GoFast media to ensure no one is even close to you. Response 10 points 0 wordsAttach file(s) Max size 500 MBDRAG & DROP cancel Based on your clearance search results, do you believe your mark is or that its use would to where youd be better off selecting a different mark? Why? Response 15 points 0 wordsAttach file(s) Max size 500 MBDRAG & DROP cancel Trademark RegistrationGroup 3 questions Trademarks do not have to be registered to be enforceablethe owner of an unregistered mark can sue an infringer for unfair and deceptive trade practices based on state law. However, registration with the state or federal government offers benefits such as expanding the geographic territory where the mark is protected. A business geographical reach (where the business markets the activity and where its customers come from) determines the appropriate registry for the trademark. Please match the following market reach to the correct registry. Matching 5 pointsa. Trademarks used only locally or within a single state can only be registered on the: Choose an answerb. Trademarks used in multiple states or internationally can be registered on the: Choose an answer When registering a trademark, you will be asked to describe the goods or services youll be selling. The Trademark Office will then compare your mark to senior users (competitors in your category) to see if it is already taken. Your description may be broad or narrow, but should represent your product or service. To help you, the Trademark Office made a database of (the ID Manual) and the of products or services related to the description. If you use one of their descriptions, you will save money on your registration application! Lets try it out Search the to find a good description for your service. Input search terms such as sport or photography or public relations etc., that directly describe what your business does. If you dont find an applicable result at first, try a different search term. If you find a good description but it has { in it, the brackets and words that fit your service. Finally, copy the class of goods/services for your response. Response 10 points ID Manual Search Results Example 0 wordsAttach file(s) Max size 500 MBDRAG & DROP cancel Trademark rights only arise when the mark is actually used in connection with goods or services in commerce (e.g., the business has launched). When you register the mark with the government, you have to prove to them that you are using the name. This is done by submitting a specimen showing that the mark is actually being used. Watch this video from the USPTO regarding specimens: Response 5 points 0 wordsAttach file(s) Max size 500 MBDRAG & DROP cancel Trademark SymbolsGroup 4 questions What do the symbols TM, SM and ® mean? Matching 5 pointsa. Symbol for an unregistered mark for goods. Choose an answerb. Symbol for an unregistered mark for services. Choose an answerc. Symbol for a mark that is registered with the US Patent & Trademark Office. Choose an answer If a company does NOT use TM SM or ® with their mark, is it still a legally protected trademark? Choose one 5 points Yes, unregistered marks are protected under common law and can sue infringers for unfair or deceptive trade practices in state court. No, a mark must be registered to have any protection. The logo designer wants to know whether to put a TM or circled R on the logo. Since your new mark has NOT been registered with the USPTO yet, which trademark notice should be used initially TM or circled R? Choose one 5 points TM or SM ® How much does it cost to use the TM or SM symbol on your trademark? Choose one 5 pointsNothingany brand owner can use these symbols for free! $400
