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  TRADEMARK Legal Care For Your Business And Product Name Trademark
Legal Care For Your Business & Product Name
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by Stephen Elias
New 7th Edition!
Quality Paperback, 340 pages, 7 x 9 inches
Publisher: Nolo; ISBN: 1413303587; Pub date: Sep 2005; ©2005-1992
Catalog# 3587-2
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The name and logo you choose for your business or products is an important asset--don't let competitors capitalize on your good name. Especially designed for small businesses this is a very comprehensive do-it-yourself trademark reference. All the forms and instructions necessary to register with the US Patent & Trademark Office are included.

In plain English the authors explain the ins and outs of trademark law. They offer advice on choosing an effective and protectable trademark and then explain, step-by-step, how to protect these names and graphics used to market services or products. This 5th edition features an easier-to-use format, extended Internet resources, and a step-by-step guide through the registration process.

Topics covered include how to...

    • Find out if someone is already using the name you want to use -- hire someone to search for you, or conduct your search yourself in a Patent and Trademark Depository Library or online
    • Protect your mark by registering it with the U.S. Patent and Trademark Office
    • Keep the registration up-to-date
    • Look up trademark laws yourself
    • Handle trademark disputes out of court
    • Find a good trademark attorney if necessary

The authors readily point out that some less-common topics are beyond the scope of this particular book, such as: the legal details involved in defending a trademark law suit in court without a lawyer; some situations brought before the USPTO; all the details involved in international trademark registration; and transfers/assignments of trademarks or business names. With that said, this book provides a wealth of information on the subjects most people are most likely to need.

Some excerpts...

"The first date on which you used your mark anywhere establishes the beginning of your legal rights to the mark. It is important to know and be able to prove this date because the business that has been using the mark the longest will usually be given priority in case a conflict develops."

"...In short, trademark litigation is so expensive that the little guy seldom benefits, no matter what the law says and how the judge decides. And even if it's two little guys going head to head, it's too often only the lawyers who benefit financially. For this reason, whether you or the other party has the perceived legal edge, we strongly recommend that you apply a cost-benefit approach in deciding how to resolve the dispute. That is, add up the cost of preparing new packaging and marketing materials and any anticipated loss of market share because of the change in your mark, and compare this total against the probable cost of litigation."

Table of Contents

Introduction--How to Use This Book

1. A Trademark Primer

Alan Introduction to Business Names
B. An Introduction to Trademark Law
C. Trademark Compared to Copyright and Patent
D. Sensible Strategies for Protecting Trade Names and Trademarks
E. Some Common Business Name Issues and Their Solutions

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

A. Anatomy of a Trademark
B. Distinctive Terms Make Legally Strong Trademarks
C. Ordinary Words as Trademarks
D. Why Does a Trademark Have to Be Distinctive to Be Protected?
E. How Do You Make a Mark Distinctive?
F. Marketing Considerations
G. Summary

3. Protecting and Registering Trade Names

A. Mandatory Registration Requirements for Trade Names
B. The Legal Effect of Corporate and Fictitious (Assumed) Business Name Registrations
C. Legal Protection for Trade Names
D. Domain Names: Trade Names on the Internet

4. How to Tell If Two Marks Are Confusingly Similar

A. Introduction to Analyzing Marks for Potential Customer Confusion
B. How to Evaluate a Competing Mark for Potential Customer Confusion

5. Preparing for a Trademark Search

A. Three Kinds of Searches
B. Planning Your Trademark Search

6. How to Do a Trademark Search

A. Selecting an Approach
B. How to Search

7. State Trademark Registration

A. What State Registration Accomplishes
B. How to Register Your State Trademark

8. Federal Trademark Registration

A. Is Your Mark Eligible for Federal Trademark Registration?
B. Gather Information for Your Trademark Application
C. Completing the Registration Application
D. The Drawing
E. Filing Your Application
F. Communicating With the PTO
G. Amending the Application
H. If the Examiner Rejects Your Application
I. Publication and Opposition
J. Receiving Your Certificate of Registration
K. Follow-Up Activity Required for ITU Applications

9. How to Use and Care for Your Mark

A. Use of the Trademark Registration (R) Symbol
B. File Your Sections 8 and 15 Affidavit
C. Renew Your Registration
D. Use It or Risk Losing It
E. Maintain Tight Control of Your Mark
F. Use the Mark Properly--Avoid Genericide
G. Keep Track of the Mark's Ownership

10. Evaluating Trademark Strength

A. A Brief Review of What Makes a Strong Mark
B. Identify the Trademark Part of Your Product or Service Name
C. Classify the Trademark Aspect of Your Product or Service Name
D. Beyond Names: Graphics, Packaging, Color and Product Designs as Trademarks

11. Sorting Out Trademark Disputes

A. A Word of Warning
B. When Do Trademarks Legally Conflict?
C. The Legal Framework for Solving Trademark Conflicts
D. Disputes Under State Dilution Laws
E. Disputes That Involve Customer Confusion
F. How to Use the Rest of This Chapter
G. If Your Unregistered Mark Conflicts With a Federally Registered Mark
H. Your Unregistered Mark Conflicts With Another Unregistered Mark
I. Your Federally Registered Mark Conflicts With Another Federally Registered Mark
J. Your Federally Registered Mark Conflicts With an Unregistered Mark

12. If Someone Infringes Your Mark

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

13. If Someone Claims That You Infringed Their Trademark

A. What the Complaining Party Can Do to You
B. Steps You Should Take

14. International Trademark Protection

A. A General Approach to International Trademark Protection
B. Reciprocal Rights
C. Deciding to Register Abroad

Help Beyond the Book

A. Doing Your Own Research
B. Finding a Lawyer

Appendix

  • International Schedule of Classes of Goods and Services
  • U.S. Schedule of Classes of Goods and Services
  • Descriptions of Goods and Services (From USTA-International Classes)
  • State Trademark Agencies and Statutes
  • Patent and Trademark Depository Libraries
  • Trademark/Service Mark Application, Principal Register, With Declaration
  • Amendment to Allege Use Under 37 CFR 2.76, With Declaration
  • Statement of Use Under 37 CFR 2.88, With Declaration
  • Request for Extension of Time Under 37 CFR 2.89, to File a Statement of Use, With Declaration
  • Combined Declaration of Use and Incontestability Under Sections 8 & 15 of the Trademark Act of 1946, as Amended
  • Application for Renewal of Registration of a Mark Under Section 9 of the Trademark Act of 1946, as Amended
  • Sample Request to Divide Application
  • Sample Assignment

Index

The author...

Stephen Elias is an attorney and writer for legal publishers. Elias is an Associate Publisher with Nolo Press. He is author, co-author, or editor of several Nolo books.

What others say...

"...excellent step-by-step instructions for registering a mark, written in plain English with clear examples. Recommended for all collections." --Library Journal

"[There is] no other text on the market to compare." --Legal Publishing Review

(The description above is from a previous edition. Updated description available soon.)

Trademark: Legal Care For Your Business & Product Name
Our price: $31.99

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Catalog# 3587-2

 

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