Table of Contents

20 Frequently Asked Trademark Questions

Introduction

1. A Trademark Primer

Trademarks and Trademark Law
Basic Principles of Trademark Law
The Role of Federal Registration in Protecting Trademarks
Not All Business Names Are Trademarks
Trade Name Formalities
Trade Dress and Product Designs
Sources of Trademark Law
The Difference Between Trademark and Copyright
The Difference Between Trademark and Patent

2. Trademarks, Domain Names, and the Internet

How to Clear and Register Domain Names
What to Do If the Domain Name You Want Is Already Registered
Domain Names and Trademarks
Other Trademark Issues in Cyberspace

3. How to Choose a Good Name for Your Business, Product, or Service

Anatomy of a Product or Service Name Trademark
Distinctive Names Make Legally Strong Trademarks
How Trademark Law Treats Marks With Common Terms
What Makes a Distinctive Trademark a Legally Strong Trademark?
Guidelines for Making a Mark Distinctive
Marketing Considerations When Choosing a Name Mark

4. Trademark Searches -- What They Are and Why You Should Do One

What Is a Trademark Search?
Why Do a Trademark Search?
What Resources Are Used in a Trademark Search?
Where Are Trademark Search Resources Located?
Different Levels of Trademark Searches -- What They Are; When They're Appropriate
Planning Your Trademark Search
Using a Professional Search Service
Using a Patent and Trademark Depository Library to Do Your Own Search
Does Your Failure to Search Mean You Acted in Bad Faith?

5. How to Do Your Own Trademark Search

Meet TESS -- The Trademark Electronic Search System
Getting Started With TESS
Understanding the TESS Structured Form Search
Tips on Using the TESS Structured Form Search
Trademark Searching With TESS: An Example
Understanding the TESS Free Form Search
Understanding the Results of Your Search
An Introduction to SAEGIS -- A Great Fee-Based Search System
Searching for Designs
Searching State Registered Trademarks and Trade Names
Searching for Trade Names and Unregistered Marks

6. How to Evaluate the Results of Your Trademark Search

What's Involved in Evaluating Trademark Search Results?
What Is the Likelihood of Customer Confusion?
An Overview of How Marks Are Evaluated for Their Potential to Cause Customer Confusion
How Closely Related Are the Goods/Services?
Do the Goods or Services Compete?
How Similar Are the Marks?
Additional Factors
Final Factors
How to Read a Trademark Search Report

7. Federal Trademark Registration

Brief Overview of Federal Registration
What Marks Qualify for Federal Registration
If You Haven't Started Using Your Mark, Should You File an Intent-to-Use Application?
What Examples of Your Mark Will You Submit With Your Application?
What International Class Is the Best Fit for Your Product or Service?
Deciding How Many Marks You Want to Register
Applying for Registration Online
If You Are Filing by Mail
What Happens Next?
Communicating With the PTO
If the Examiner Issues a Rejection Letter
Follow-Up Activity Required for Intent-to-Use Applications
Follow-Up Activity Required After Registration

8. How to Use and Care for Your Trademark

Use of the Trademark Registration ® Symbol
Use of the TM or SM Symbol for Unregistered Trademarks
File Your Section 8 and 15 Declarations
File Your Section 8 Declaration and Section 9 Application for Renewal
Use It or Risk Losing It
Maintain Tight Control of Your Mark
Use the Mark Properly -- Avoid Genericide
Transferring Ownership of a Trademark

9. Evaluating Trademark Strength

A Brief Review of What Makes a Strong Mark
The First Step: For Marks Consisting of Words, Identify the Distinctive Part of the Mark
Assess the Legal Strength of the Trademark Aspect of Your Word Mark

10. Sorting Out Trademark Disputes

Trademark Infringement
Determining Priority in an Infringement Dispute
Dilution
Cybersquatting

11. If Someone Infringes Your Mark

What Litigation Costs
How Much Is Your Mark Really Worth to You?
Negotiate -- Don't Litigate
How to Handle an Infringer

12. If Someone Claims That You Infringed Their Trademark

What the Complaining Party Can Do to You
Steps You Should Take

13. International Trademark Protection

Where Will You Seek Protection?
How Will You Register Abroad?

14. Help Beyond This Book

Doing Your Own Research in a Law Library
Finding Trademark Laws and Information on the Internet
Finding a Lawyer

Appendixes

A. International Classification of Goods and Services

B. Glossary of Terms

C. Selected Pages from Thomson CompuMark Trademark Search Report

Index

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