Tantalizing Trademark To-Do’s
April 12, 2013
Timothy M. Donoughue
Intellectual Property Senior Counsel
But first, a word from our sponsor:
All this is Tim’s opinion only, not the view
of BHI, and not on the record.
Trademarks
TM

Definition of Trademark:
 Any mark which
 Identifies and distinguishes goods
or services
 Indicates source of good or services
®
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
Trademark v. Service Mark
 A “Service Mark” is a mark that
designates services only
 A “Trademark” is a mark that
designates goods
 However (just to be confusing),
“Trademark” can also be a mark that
designates services or both goods and
services
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
1. Don’t Miss a Mark!
 Definition of mark is very broad.
 Marks can now include sounds, colors
 Marks can be found
within other marks
 Logos or slogans
 Stylizations
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
2. Do Know Your Country
 In US, trademark rights are acquired by
use—no registration required
 In RU, trademark rights are acquired by
registration—use gives no rights
 In BR, the trademark office does not
send notices, they publish them
 In EP, the trademark office covers
several countries
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
3. Do Understand the Goods/Services
 Trademarks’ effects are limited to their
particular goods and services
 In US, limited to actual use
 Can be multiple goods/services
 Part of a clearance search
 Example:
 DELTA faucets
 DELTA power tools
 DELTA airlines
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
4. Do Docket, Docket, Docket
 Accurate docketing is critical
 Avoids
loss of rights in dates
 Lowers cost
 Critical to double check automatic
docketing
 Ensure that the country selection is
correct
 Make sure the dates look right
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
5. Don’t Ever Abuse Marks
 We must be models to our clients of
how to use trademarks correctly
 Brochures
 Emails
 Memos
 Letters
 How the clients see the mark used
influences how they in turn use it
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
Grammar Lesson
 All trademarks are adjectives
 Use with generic name of
product/service
“We ran the XMAC tool.”
Not -- “We will ship ten XMACs.”
 Never use as a possessive, plural, verb
or noun
Don’t “xerox it”; make a
“photocopy”
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
Proper Use of Marks
 Distinguish in print
CAPS or italics
 Include trademark notice
TM, SM or ®
 ® only
marks
for registered
 Give notice of company
ownership if not obvious
Footnote with “TESTRAK is
a service mark of Baker
Hughes Incorporated”
SM
™
®
6. Do Know Trademark Infringement

Likelihood of confusion
 Exact match not required
 Must be within same market

Similar to unfair competition

If you suspect something
see your attorney!
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
8. Do Learn the USPTO Online
 www.uspto.gov
 Under Trademarks
 TESS – to
search
 TEAS – to file
 TSDR – to check the status
 Then under Manuals, Guides…
 TMEP
 Acceptable ID of Goods/Services
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
7. Do Keep Your Attorney Informed
 Attorney-Client privilege
 Extends
to “one employed by the
lawyer to assist” with legal services.
TRE 503
 Attorney work product
 Extends to the work product of an
“attorney’s representative”. TRCP
192.5
 For those to apply, you must be under
the supervision of the attorney!
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
9. Do Know a Proper Specimen
 In US (Office is very particular on this)
 Specimen must show the mark
 Used
on or in connection with the
sale of goods
Label, tag, stamp
Not an ad, website except in
limited cases!
 In the sale or advertising of the
services
 TMEP 904.07(a)
© 2013 Baker Hughes Incorporated.
All Rights Reserved.
Licensed for educational use only.
10. Do Ask for Help!
 Very complex area
 Particularly in docketing
 Especially with new jurisdictions
 A question now saves much grief later!
Questions?
Tantalizing Trademark Tidbits
April 12, 2013
Timothy M. Donoughue
Intellectual Property Senior Counsel