- Trademarks, service marks, certification marks and collective marks
A trademark is any word, phrase, symbol or combination of words and symbols adopted and used by a business or individual to identify and distinguish one party’s source of goods or services from those of others. For example, NIKE®, DOVE®, and STARBUCKS® are all well-known trademarks that identify the source of the products.- A service mark identifies and distinguishes the source of a service. Usually, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the service. For example, STATE FARM®, WELLS FARGO®, and UPS® are well-known service marks.
- A certification mark is used to show consumers that particular goods and/or services or their providers have met certain standards in association with the mark. The manufacturer claims that the product has been tested to verify compliance with a set standard. For example, “UL LISTED”, “Asthma & Allergy Friendly”, and “GOOD HOUSEKEEPING PROMISES”, are well-known certification marks.
- A collective mark is owned by an organization and used by its members to identify themselves with a level of quality or accuracy, geographical origin or other characteristics set by the organization. For example, “CPA” is used by the Society of Certified Public Accountants and “FTD” is used by a group that participates in a national flower delivery service.
- Trademark search – an activity engaged in prior to filing a trademark application to determine if any other entity is using the trademark or a similar trademark in commerce. The search may include the USPTO, state registrations in the US, international registrations, domain names and common law use in commerce.
- State registration – trademark registrations in any of the 50 states in the U.S.
- United States Patent and Trademark Office (USPTO) Registration – a certificate of registration that grants the presumptive exclusive right to use the mark in commerce in the class of goods and/or services noted in the registration and the right to exclude the importation of counterfeit goods.
- United States Patent and Trademark Office (USPTO) – the federal agency tasked with granting U.S. patents and registering trademarks. Authority is granted by the US Constitution Article I, Section 8, Clauses 3 and 8
- Trademark Trial and Appeal Board (TTAB) – the administrative board within the USPTO that handles appeals involving trademark applications, appeals from expungement or reexamination proceedings involving registrations and trial cases involving oppositions to applications and cancellations of registrations
- Trade Dress – the total image and overall appearance of a product or the totality of the elements, and may include features such as size, shape, color, or color combination, texture and graphics
- International Trademark Protection – trademark registrations obtained through the World Intellectual Property Organization with grants of protection in specific countries or trademark registrations obtained directly from foreign countries intellectual property offices
- Copyrights – a form of statutory protection provided to original works of authorship fixed in a tangible medium of expression, including literary, musical, dramatic, choreographic, pictorial, graphic and sculptural, motion picture and audio visual, sound records and architectural works
- Trade Secrets – all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or not stored, compiled or memorialized physically, electronically, graphically, photographically, or in writing IF:
- The owner has taken reasonable measures to keep such information secret; AND
- The information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by another person who can obtain economic value from the disclosure or use of the information.
- Cybersquatting and Domain Name Disputes – the practice of registering, trafficking in or using an internet domain name, with a bad faith intent to profit from the good will of a trademark belonging to another entity or individual
- Due Diligence Regarding IP Assets – monitoring the marketplace to make sure no one is infringing on your company trademarks, copyrights or patents; maintaining all registrations by filing the appropriate maintenance documents when due; maintaining a current inventory of all registered and common law IP assets and preparing and filing proper assignments of IP assets when a company is sold or purchased
- Patent Prosecution – preparing a patent application and defending it throughout the examination process with the USPTO
- Patent Post-Grant Proceeding – defending patent registrations in Inter party Review Proceedings before the Patent Trial and Appeal Board
Giselle Carson | April 2024 Q&A | Corporate Immigration & Compliance
Welcome to 'Q&A with Giselle,' your go-to source for navigating the intricate landscape of U.S. corporate immigration. Giselle Carson, a trusted leader and attorney in Corporate Immigration and Compliance, draws from her extensive experience to address the most...