Differences Between Trademarks and Copyrights and the Trademark Filing Process I would like to thank Sovereign Visual

for asking me to develop a primer article on trademark law for web professionals. I will first discuss the differences between trademark and copyright as there are many common misconceptions regarding the two, then I will describe the process in which a trademark is registered. Over the years many clients have asked me the same question. I have a new business, which I plan to build and grow so I want to protect my brand identity, the good will associated with that. So, do I get a copyright or a trademark on my name, or slogan or logo? What does each protect? What are the differences between trademark and copyright. Often this is a company engaged in brand development with a company such as Sovereign Visual, developing a new logo, name, slogan, etc. The answer to this question is not always an easy one, however, as we delve into the labyrinth of intellectual property there are some very important differences and some clear guidelines which help us select the appropriate vehicle for you. Copyrights are typically related to original works of authorship, like a book or poem or screenplay or music (lyrics or music), while a trademark relates to brand names, slogans and logos. The easiest way to conceptualize trademarks is to consider that their purpose is to differentiate goods or services in the marketplace. Once the appropriate vehicle has been selected the most important thing to consider is the use of the proposed trademark. Users of a trademark have rights whether a trademark is registered or not. However, trademark registration will give you an exclusive right to use the trademark nationwide, certain overseas rights, and a legal presumption of ownership. Registration of your trademark is only the start of defending your company name and goodwill. For your rights to a trademark to continue, you have to use it, protect it against infringers, and renew it. The history of trademark law is fraught with marks that lost their protection because they failed to maintain them. However, if properly maintained trademark protection can be perpetual. An additional concern, in the realm of trademark in the modern age, is keyword advertising. Companies buy ads that appear in search engines, when a consumer searches for a competitors trademark. For example, a consumer might search for Coke and an ad for Pepsi would appear, because Pepsi had purchased the right to place an ad there that says Buy Pepsi. There continues

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to be a considerable amount of litigation on this subject with differing results throughout the many federal court districts. Copyright protection affords the creators of original works protection against unauthorized use of their work. This also provides a vehicle for licensing or assignment or sale of rights to an original work. For the most part, copyright protection provides protection during the life or lives of the author(s) and an additional 70 years after the death of the final author. Publication of the work is not required to display the copyright symbol, however, federal registration does afford the owner remedies not available without registration. As you can see, with regard to the question of copyright vs. trademark there are specific reasons to select one of these over the other in an effort to protect your rights. Another question from new clients arises often. They ask me: what does the process of filing a trademark consist of? Briefly, I will lay out the process we use here at the Roe Law Firm. First, when developing a trade or services name, logo or slogan you should have a consultation with a qualified trademark attorney specializing in intellectual property. They should have a discussion with you regarding the nature of the business, which is being developed and the nature of the intellectual property, which your client wishes to protect. He should also discuss an overall comprehensive IP strategy, including trademark surveillance and enforcement. Second, trademark attorney will perform an extensive search for potentially conflicting trademarks, whether in or outside of the industry or geographic area in which the business operates. International searches are not necessary unless the trademark filing is part of a comprehensive global IP strategy. Global searches can be performed upon request. Third, if a conflicting trademark is not discovered, your trademark attorney will proceed to the next step in the process; if a conflicting trademark is discovered, your trademark attorney will determine if the conflicting trademark has priority over the proposed trademark or if the trademark can be licensed or determine if any potential future dispute can be resolved before it becomes a problem. Your trademark attorney will then provide you with an opinion letter. Fourth, provided the search does not uncover any conflicting trademarks, which create a prohibition to filing, your trademark attorney will process the trademark filing (application) within 5 days of our retention. Fifth, the United States Patent and Trademark Office (USPTO) will examine the trademark filing and may approve it or request additional information via an office 2 2011 Theodore M. Roe

action. Unlike other law firms and trademark registration service (s) we handle basic office actions at no additional cost (additionally, so as to ensure enforcement of your trademark we also provide one free cease and desist letter should someone else start using your trademark). Most office actions are favorable resolved and the trademark goes on to be registered. Sixth, there is then a period for others to register oppositions to the filing of the proposed trademark. This occurs infrequently and when it does occur it can often be resolved with the party filing the opposition. Seventh, the time between the submission of the trademark filing with the USPTO and their recording of the trademark on the principal register is currently somewhere between 7 months to 1 year. Once, the trademark is recorded on the principal register you may use the symbol (and in fact must use the symbol) in conjunction with your trademark. The client must also renew the trademark periodically. If properly renewed, the client can maintain exclusive use of the trademark indefinitely. For more information regarding trademarks or copyrights please contact us directly at www.tmroe.com.

The following is my bio: Ted Roe is the senior attorney at the Roe Law Firm, a law firm specializing exclusively in trademark and copyright. From pre-registration advice to registration to surveillance, licensing and enforcement of IP owners rights in court. Mr. Roe has over 13 years experience providing clients with the highest level of advice on every aspect of trademark and copyright issues. Mr. Roe has represented individuals and small to large businesses across the United States as well as internationally. Just a few of the industries he works with are: manufacturers, distributors, retailers, film, musicians, photographers, wine makers and many more. Mr. Roe's goals are to assist his clients in building their businesses by securing the exclusive use of their brand name or other intellectual property at an affordable rate. He sees his job as an educator, presenting the possible options available to his clients highlighting the pros and cons of each and making a recommendation. Mr. Roe is professional, highly experienced, prompt, economical and easy to work with.

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Mr. Roe is also a regular guest speaker to trade groups, associations and schools on intellectual property issues. Mr. Roe and the Roe Law Firm can be contacted directly via website at www.tmroe.com or email at info@tmroe.com or via telephone toll-free at 877636-6275 for a free consultation.

2011 Theodore M. Roe