Silicon Valley Business School

Patents & IP: Trademarks
Free Extracts from the Patents & Intellectual Property Course
Below you are free to explore extracts of the learning materials included in this course. If you're interested in educating yourself on these topics, we recommend that you review all these materials. If you're looking for a credential, please take a look at the certificate version of this course which will test your understanding of the materials and track your progress through the course until you have completed it and earned your certificate.

  • Video ~ What is a Trademark?
A trademark identifies the source of a good or service. Trademark rights come from actual use in commerce or by registering your trademark with the USPTO.

  • Video ~ Basic Facts About Trademarks
This video highlights the importance of trademarks for a business that sells products or offers services.

A trademark is generally a word, phrase, symbol, or design, or a combination of these elements, that identifies and distinguishes the source of one party's goods from those of others.

How do trademarks, copyrights, and patents differ from each other?

Although this is not a requirement before you file your trademark application, it is useful to search the USPTO database to find out if any mark that already has been registered or applied for, is similar to your mark, and if it has been used on related product or for related services.

A trademark gives the trademark owner the exclusive right to use the mark. It also allows the owner to prevent others from using a similar mark that can be confusing for the general public.

As a business, you want your products or services to not only stand out from the crowd but also identifiable through a distinctive brand. These slogans, symbols, and designs are collectively known as a "mark," either a trademark (for products), a service mark (for service-based businesses), or a trade dress (distinctive packaging, for example).

  • Video ~ What makes a Good Trademark?
What is a trademark? What should you consider when choosing a trademark? What are the different types of trademarks? Why are some trademarks refused registration? What makes a trademark a good one to register?

In this article, you will understand the differences between trademark protection by use and trademark protection by registration.

Are some trademarks stronger than others? Can a business name be trademarked? Can a website or domain name be trademarked? Are trademarks governed by federal or state law?

This article outlines the process for applying for, and maintaining your trademark.

This article provides information that will enable you to file your trademark application online.

An examining attorney sends an Office action to notify an applicant about issues with his or her application. This type of action will include the reason why registration is being refused or what requirements must be satisfied. In most cases, the applicant must respond to an Office action within 6 months from the date the Office action is issued or the USPTO will abandon the application, the application fee will not be refunded, and your mark will not register.

To keep a registration alive, the registration owner must file required maintenance documents at regular intervals. Failure to file the required maintenance documents during the specified time periods will result in the cancellation of the U.S. trademark registration or invalidation of the U.S. extension of protection.

During the examination of a pending trademark application as well as after a trademark has registered, the owner of a trademark may change for various reasons. Some trademark owners transfer their ownership of a mark to another entity, which is called an assignment. In addition, some trademark owners change their names while retaining ownership. In both instances, the USPTO advises trademark owners to record the ownership transfer (assignment) or (name change) with the Assignment Recordation Branch of the USPTO.

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks -- the Madrid Protocol -- is one of two treaties comprising the Madrid System for international registration of trademarks. The protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders -- individuals and businesses -- to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.

What are the benefits of a federal trademark registration? How much does it cost to apply for a trademark application? What is the Trademark Electronic Application System (TEAS)? You will get answers to these questions and more in this piece prepared by the USPTO.

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

A cease and desist (or demand) letter/email is correspondence that states or suggests that you are potentially infringing the trademark of another and demands that you stop using, or consider stopping use of, the accused mark.

A trademark lawsuit begins when the trademark owner files a complaint with a court alleging trademark infringement. Among other things, the complaint names the parties involved and sets forth the allegations that form the basis of the lawsuit.

The Guardian’s article on a trademark case: Nestlé, and Cadbury have been in a tit-for-tat battle over the distinctiveness of their chocolate products.

BBC’s article on a trademark case involving Lindt & Spruengli and Haribo: Swiss chocolate maker Lindt & Spruengli has defeated a legal challenge from rival confectioner Haribo, which sought to stop it making its gold chocolate bears. Haribo claimed the Lindt version was a violation of its "Gold Bear" logo. Germany's Federal Court of Justice ruled Lindt's bear was neither a violation of Haribo's trademark or an imitation of its fruit gum sweets.

BBC’s article on a trademark case involving Apple, and a Chinese company, Xintong Tiandi: Apple has lost a trademark fight in China, meaning that Xintong Tiandi, a firm which sells handbags and other leather goods can continue to use the name "IPHONE".

BBC’s article on a trademark case: A Beijing court has ruled in favor of Facebook and against a Chinese company which had registered "face book" as a separate trademark.

NPR’s article on a trademark dispute involving the National Park Service, and its former contractor, Delaware North as well as Yosemite Hospitality: Delaware North had trademarked many of the names of properties it managed at the Yosemite National Park. When Delaware North, lost its bid for a new contract to manage the properties at the Yosemite National Park, to Yosemite Hospitality, Delaware North requested Yosemite Hospitality to pay for the trademarked names in order for the properties to continue to “bear” the trademarked names.

Apple, and. Apple Corps, a multimedia corporation, were the main participants of a legal battle that lasted from 1978 until 2006 when the High Court of Justice in England ruled in favor of Apple (known as Apple Computer at the time).

The Supreme Court finds it unconstitutional that the USPTO blocks marks such as "the Slants" from federal trademark registration on the grounds of freedom of speech.

  • Video ~ Oral Argument in "Slants" case.
Oral argument in U.S. Supreme Court. The office cited the Disparagement Clause of the Lanham Act of 1946, which prohibits trademarks that “[consist] of or [comprise] immoral, deceptive, or scandalous matter"..



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