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Before we begin, I would like to acknowledge and thank Autumn's Online Professional Development sponsor, Marshall Gerstein.

We appreciate your ongoing support. I would now like to introduce today's session speaker, Matt Saunders.

Thanks very much. Happy to be here. Welcome, everybody. I'm looking forward to this program. It's, uh.

Um, it's a really interesting one for me, and I'm learning a lot from everybody else who's going to be presenting today, so, um… This is gonna be great, so we'll just, uh, get started. My name is Matt Saunders, I'm a partner at Saunders and Silverstein.

Uh, we are a boutique law firm based in Massachusetts, specializing in trademarks and.

Copyrights. So, my goal today will be, firstly, to give a quick overview of what trademarks are.

Um, and a bit about trademark registration, and then that will lead into some other deeper discussion by the other panelists.

So let's just jump right in. So, the first big question, of course, is what is a trademark? Some of you may.

Or may not know the details of this answer. Certainly, you encounter trademarks every day, we all do, as we go around our daily life. Trademarks are… product and service names, slogans, logos.

Primarily, those are the most common ones that we see. So, Nike.

The slogan, just do it, the Nike swoosh. Those are sort of the typical trademarks that we all encounter every day.

Uh, less common, but still important, are other kinds of trademarks.

Often falling under the category of trade dress, so we could talk about product designs, product packaging, so if you see a package that is.

Distinctive, unique that you see, and you recognize that is functioning as trade dress or as an indicator of source.

Um, also sounds, colors, smells, motion marks. The scent of Play-Doh is one. We all, I think, probably know what that… can recall what that smells like. The We Are Farmers jingle, things like that. All of these function as.

Trademarks in one way or another. So, the purpose of a trademark, ostensibly, is to help identify the source of the product or service in question, right?

And to distinguish those products and services from the competing products and services. So the idea is that you, as a consumer.

Will know by the trademark, who is providing me with this product or this service that I'm using.

Uh, and through that connection, through understanding who the source is.

We can associate the quality of those products or services with that trademark, so we can then return to.

Those products or services, again, because we've had a good experience, or maybe we've had a bad one, and we don't want to return to that.

But that's the overall goal of a trademark is to identify the source of the product or service.

So that consumers understand where those products and services are coming from.

Uh, so, as you might imagine, when we're talking about. Um, you know, sort of common products and services, things that you sort of get off the shelf.

Like apples, which we'll talk about later. The product itself may not… it will have some distinguishing characteristics.

But oftentimes, the products are very similar to each other in terms of their, um, performance and their, you know, their quality and things of that nature.

So in that case, the brand, the trademark, really becomes very important.

So, you know, you may… it may be the case that a Nike sneaker may be not all that much different from a Reebok sneaker, but you have a good association with Nike, the brand is really important to you.

Because you have that association of quality, so you gravitate towards that Nike.

Product. So, branding's trademark has a real importance. For, again, two purposes. One, identifying the source, and two, associating and securing in the mind of the consumer.

The association between the quality and that brand, so they can return to it over and over again.

So, trademarks versus copyrights and patents. This comes up a lot. There's, you know, these are 3 different concepts that I think often get intertwined. Uh, people get confused about what the differences are, so it's worth quickly talking about this.

Copyrights protect copyrightable works, creative works, works of authorship, works of art, musical works, so… books, website content, movies, music, computer programs, all of those sorts of things.

The rights, uh… so, copyright is created through… as soon as the work is created, copyright rights attached to it.

You can register copyrights, just like you can trademarks and patents.

Um, the life of a copyright is intentionally limited, right? That is baked into the Copyright Act.

Um, the duration depends on certain factors, but it is limited in time.

Patents protect inventions, right? So, unique inventions, whether they are business methods or, you know, elements of software, or whatever it might be.

Uh, also limited in time, right? So they have a limited duration after which.

Those products, those inventions fall into the public domain, just like copyrights do eventually. You may hear about.

In terms of copyright, every year, there's always this day when everything is… They give you a list of all the stuff that's falling into the public domain.

By contrast, trademarks can live indefinitely, right? Trademarks are associated with use.

As long as you are using the trademark, meaning you are selling that product.

Providing that service under that trademark. That trademark… those trademark rights will live on. Whether they're registered or not, they will live on. So, that's the only limit is how long you keep using it.

Um, if you use it for 20 years, the trademark's in use for… and the trademark rights exist for 20 years.

Um, so that's… but the core difference is they protect different things.

Copyrights protect creative works, patents protect inventions, trademarks are the brand, protect the brand.

Oh, look at this, it actually has a little… it's a… it's an interactive slide. Uh, so we have different types of trademarks.

Um, and if you… I don't know if you can make them all pop up, uh, that'd be great. Yeah, that'll just be easier. Perfect, thank you. So this is sort of the spectrum of types of trademarks.

And they range from, uh, what we would say strongest to least strong.

Uh, and at the top of the list are what are called fanciful, or coined marks, which are words that don't exist in the English language. They were just made up for purposes of.

Being a trademark, um, Cash e, Expedia, Polaroid, all of those crazy pharmaceutical brands that you see when you're watching television, entirely made-up words, or not really words at all.

The reason that they're strong is because they are made up. There is no other meaning to them other than functioning as the trademark.

Um, arbitrary is a real world, a real word, so a dictionary term, but it is used incongruously. So, it… the word itself does not have any immediate direct connection with the product or the service. So, Apple for computers, there is no reason for Apple to be associated with computers.

Amazon, Vans, Sprite, all real words that function as trademarks. Suggestive terms are.

Um, words, brands where it's a real word, or a sort of a component of a couple of words put together.

That suggests something about a function or a feature of the product or the service, but it doesn't directly describe it, so you need to make a… the consumer needs to make a little bit of a leap to understand.

The connection between the brand and the product or service. So, Netflix, okay, movies on the internet, right? That sort of suggests that that's what that's about.

Airbus, okay, it's a bus in the air, right? It's, you know, travel. That's the idea. These are particularly good if you can come up with a trademark like this, it's particularly good.

Because, unlike the next one, a descriptive mark, um, it's not only describing, but it gives the consumer enough to go on. So descriptive terms are exactly what it sounds like. They just immediately tell the consumer.

The function or the feature of the product or the service, right?

Uh, park and fly. American Airlines. It's an American airline, right? I mean, that's what it is. It's a frosted Mini Wheat.

These are a double-edged sword. They are good, in one sense, in that the consumer doesn't need to think too hard to understand what the product or the service is that's being offered.

On the downside, they are difficult to enforce, they can be difficult to register with the U.S. Patent and Trademark Office.

Uh, and, you know, you may be… you may be using a trademark that is, you know, commonly used among other third parties, so there's really not a lot of.

Uniqueness to it, so it's harder to… you know, secure this in the mind of the consumer as your trademark. It can be done over time if you use it consistently, even a descriptive term.

If you use it consistently over time, it can become a stronger and stronger.

Trademark. Um, so we don't ignore descriptive marks, we don't… we don't avoid them entirely.

Um, but just understand that they are less, um, easy to.

Protect and enforce. Uh, and generic terms are just not trademarks at all, right? So these are just terms that just mean exactly what they are. They define the category of product or service. So, linoleum.

Aspirin, cellophane, escalator. These cannot become trademarks. They may have been a trademark, by the way, at one point, but they lost their… they may have lost that trademark.

Quality, because people started using the term generically. So…

So, um, just wanted to touch on trademark searches. So, the whole process here is what we're talking about is.

What are trademarks? Do we have trademarks? Are we going to have a trademark associated with a product or service that is coming out of our institution?

Um, and if you… if the conclusion is, yes, there is going to be a brand associated with this, we need to make sure that we can actually.

Use that brand and potentially register that brand without. Fear of something bad happening, right? So, the first step in doing so is to conduct a search of some kind, to understand what's the landscape out there, right?

What other trademarks are out there that are similar to the one we want to use.

And are in use for, or potentially in use for, related products or services, right? So we want to understand the risks to adopting the mark, right, using the mark. That's the first thing, because what we don't want to do is.

Adoptive trademark, start offering the product or service licensing at whatever we're doing, and then we get a demand letter, because if someone popped up that was already using something similar that we didn't know about. We want to know about that so we can make.

Informed decisions. We also want to understand if there are barriers to registration of the trademark.

Um, registration isn't required, as I'll touch on later, but if registration is of interest, we want to know.

Even if there's something… even if there's nothing out there that we think is a real-world risk to our use.

Is there something that could just be a barrier to registration so we spend the money on applying and we just can't get through, and we've wasted that time and money?

Um, so we want to understand that as well. And again, just overall, we want to get what's an overview of the marketplace, of the field here that we're playing in.

Who else is out there? Who are our competitors? What are they doing? What are they using?

Is the brand that we're interested in? Is it something that someone's already thought of, or is it a term of art in the field?

Um, do we need to know that? And all of this is so we can give the client, you know, whoever that may be.

Um, actionable advice, right? Uh, and… So, typically, the process may be, and I know, um, that this is going to be touched on a little bit later.

You know, if you come up with a bunch of ideas about what this brand might be, 5 or 10 of them.

You can do some initial searching on your own, right? Just hop onto Google and do some initial searching on your own.

If you know how to use a trademark Office database, go there as well.

Um, it's not the easiest thing in the world to use, but it's doable.

Uh, but what you want to remember is what you're looking for is not just any result, but results that are related to the product or service in question, right? If your product is software, and you find a similar mark for a pizza shop.

We're not necessarily concerned about that. Um, but you want to get that sense of it. So if you can whittle your list down early.

And then dig deeper into the ones that seem like good candidates. That's an ideal way to go.

So, this is that process, right? So we have the… what we would typically call a high level, some people call it a knockout search.

Just a quick look, so you've got your 10 potentials. You're gonna do quick looks to see if there is some immediate showstoppers you're gonna find, right? I mean, that's inevitable, you'll probably find a few.

Uh, and then you can avoid digging too deep into those unnecessarily, spending money on a deeper search.

You're whittling down that list. Um, and again, you're looking for… at this stage, you're looking for really identical, or almost identical marks for identical or highly related products or services.

Those that remain may be good candidates to move on to a deeper look, a comprehensive search. Now we're looking a little… we're looking wider, we're looking deeper, we want to get a really good picture of what's going on.

Again, to understand risks to use. Barriers to registration, and we're gonna get a really good picture of what's going on.

Now, this is where, of course, sometimes we have the bad news. People like myself have the… and some of you, the bad news of saying to someone.

Sorry, we've… I know you love this trademark, but we found some results that suggest to us that you should absolutely not use it. We gotta move on to.

The next one. Um… All of that comes down to risk tolerance, right? I mean, because there may be things out there that we find that some of us believe are risky, and there's a potential for.

A demand letter later. Others may disagree and think that there's enough of a distinction between the products and services.

Um, that the risk is relatively low. Um, that's a conversation that needs to be had, but that is really where we are focusing on, is.

What's the risk? What is our tolerance for risk, and what does that mean for what we're going to do next?

So, registration. Registration, as I said earlier, in the United States, trademark rights are established through use, so as soon as you start selling the product.

Providing the services, you start to generate and build up rights in the trademark that is associated with those products and services.

There are many trademarks that have never been registered, they just are… they have strong rights through consistent.

You know, country-wide, nationwide use. Registration, though, has many benefits, and so it is worth, if it's, um…

If the trademark and the project in mind merits it, registration is certainly worth pursuing. It has all of these benefits, I'm not going to go through all of them.

Um, but it does bring with it a lot of benefits that can make it worthwhile.

Um, so, it's, again, there may… there are often situations where, whether it's as a result of the search, or just based on what we understand about the project, where we say, you know what?

Registration, probably not worth it in this instance. Maybe it's a descriptive mark, right? And because everybody loves it, and it's just… but it happens to be descriptive, and thus.

Perhaps not registerable, we'll say, you know, we're gonna move on to something else, and we're not gonna worry about registration in this instance.

Uh, but if we are going to register, um, we have, uh, these… these are the things that we need to think about, right? So, we have classes of… products and services are categorized into classes.

Um, this is just for administrative's sake, you know, we, we… we don't necessarily… we are focusing on the products and services, we will figure out what the classes are, but just as some examples.

Mobile apps, downloadable softwares in Class 9, educational services in Class 4.

If we are filing. Um, based on use, or if we are submitting a statement of use later, if we filed what's called an intent to use application, we need to supply evidence showing the use.

Of the trademark for goods and services in each class before we can get that registration.

Those specimens often are website screenshots these days, very typical. If we're talking about products, for example, you know, it would be product packaging with the trademark on the product packaging, or whatever it might be.

The costs, standard USPTO fee is $350 per class these days. Um, I will say that these surcharges that kicked in earlier this year basically make it so the standard fee is.

$550. Um, because, uh. Um, you have… the only way to use… to get $350 fee is if you use a pre-existing descriptions of products and services, and those are limited. So.

In my mind, I like to say it's really 550, but we might be able to get it down to $350.

Um, after maintenance, after registration, we need to maintain the registration. The first.

Phase of that is between the 5th and 6th year after registration.

Then again, between the 9th and 10th, and then every 9-10 years. That's just, again, showing evidence that the trademark is still in use for all of the products and services.

In the registration. So, two types of trademark applications. There's the use-based and intent-to-use. So, use-based applications are what it sounds like. We are already using this trademark. We are already selling the product.

We're already offering the service. So, as part of that application, we are going to provide that evidence, right, website screenshots, images, whatever it might be.

As well as the dates of first use, meaning. The date that the product was first sold.

Uh, or transported, um, the date that the services were first rendered. This all has to be in.

Commerce, interstate commerce, so it can't just be a token sale to someone, you know, your next-door neighbor. It has to be a legitimate sale across state lines so that Congress can regulate the commerce.

Um, intent-to-use application, very powerful. You can file this application before use commences, but you secure your filing date, which is really key for priority purposes for potential enforcement purposes.

You do have to have a bona fide intent to use the mark for everything in the application.

Document that, if at all possible, right? If you've got a business plan, if you've got other documentation saying, this is what we plan to do.

Great, we want to document that, because it may be necessary later.

In this instance, we would provide that evidence of use later in the process, after the application is otherwise approved for, um, for registration.

We then have this timeframe in which we need to provide evidence of use to the Trademark Office before they will move it on to registration.

It's a great strategic option, particularly when things are early stages in development. You can get an application filed.

You can keep it alive for 3 years or more through extensions of time before you finally have to show that.

Evidence of use. So, this is often the way we go, um, particularly in situations where, again, we've got a project that we know what it's going to be, we know what the trademark is going to be, but we need time to.

Finish the software, to grow the apple tree, whatever it might be, this is the step that we're going to take to secure our place in line.

And that's all I've got about the Trademarks 101. I'm happy to answer questions about that at the end of the program, but now we'll move on to Beth.

Thank you, Matt. Um, I'm Beth Scheckler. I'm a Senior Business Development Manager here at, um, New York University and NYU Langone Health.

And while Matt, um, helpfully outlined for us sort of what trademarks are and what to think about generally for anyone, I want to try to frame it in terms of.

How trademarks function within the university, risks associated with not dealing with them, and then some upsides to thinking about them strategically, um, as part of a TTO.

Slide, please. Thank you. So, um, trademarks… I challenge you today to verify that you have some kind of a policy related to trademarks.

Um, and as intellectual property within your university. Um, if you have a solid, um, trademark policy in.

Um, in your IP policy already, that's great, because it can create benefits for both the TTO and for your university writ large.

Typically, trademarks present themselves in higher education environments as a division between marks that are associated with the core brand, your university's identity, versus marks that might be associated with products and services that come out of your institution.

As innovations, or that are project-based. Um, and so, usually, the TTO doesn't really get involved in the institutional marks for.

The uni, but it can happen, um, and it has happened to me a couple of times, uh, in my career in tech transfer.

Um, if the TTO is leveraged to help with institutional marks, it can be.

A really great kind of partnership, because you have. Ip professionals that think about those assets strategically the same way that we would think about how to leverage other kinds of intellectual property on innovations.

Uh, and you can help your university think about whether or not they have broad and adequate coverage for the identity that they're trying to protect.

Um, you can assist other units that may not have that level of expertise, because often institutional marks are housed in your athletics division, student life.

Or the communications and marketing department. Um, and almost every university, um, has some level of rogue activity going on related to logos and designs and, um, monikers or creative ways of interpreting university.

Identity. Um, and so the TTO can be a huge asset and a great value bringer in terms of enforcing some of the.

Rules related to that kind of behavior. On the flip side, for innovation-based trademarks, it makes really good sense that if you're using trademarks as.

Um, a strategic asset to help protect intellectual property within the university, and I'll get more into, like, what kind we're talking about.

Um, those things should be housed in the TTO. It's just another tool in the TTO.

Toolbox. Um, it keeps, uh, confusion down about. What happens when you have a project that has a… a brand associated with it. You can be clear about revenue share, and you can control registration where it makes sense. And I know there are certain types of innovations that.

Don't lend themselves to having the trademark registered from the TTO directly, but we'll get into that in a minute, too.

Slide. So here's, like, a, like, a cautionary tale, uh, that.

I may have changed the names of an actual situation to protect the innocents and the perpetrators.

Um, so imagine for a minute, that you're dealing with a case in which you have.

Like, a cool new technology. It's a supplemental thing to an existing kind of.

Innovation, and in this case, it's a coating that could be put on a wind turbine that would increase efficiency.

Um, and make that product better. That thing has been discussed, this PI that you're working with, they've published and they've named it this catchy, lovely name, that you agree has value, and people are talking about it, there's a lot of buzz.

About that innovation in this particular field. So you start a startup discussion with this PI, and then you learn that they've already registered that name as a trademark independently of the university.

And they are… they… they've… created this leg-up situation in the negotiation, where you're already feeling a little uncomfortable about ownership rights.

And now you have this other sort of shackle, um, in your negotiation process that's making you feel even worse.

Unfortunately, your uni didn't have any kind of. Policy, um, about trademarks, or the rights of PIs to register trademarks connected to disclosed innovations at your institution, and so you're kind of up a creek, because there's nothing saying that they couldn't do this.

And they did, and now you also recognize that if. The startup even takes the license, and then they fail.

You don't have the rights to that mark when it comes back into the university. So this is a situation that nobody wants to be in, and so.

This is one of the reasons why I am strongly encouraging you to check.

Um, your university's position on trademarks related to innovations. Okay. With that jolly tale out of the way.

Um, also, it's just sort of good to know what position your university has related to trademarks in general. If you do a.

An institutional search, if you've never done it before, you may be shocked to find what's in your institutional portfolio today.

Um, I've uncovered all kinds of interesting activity, um, related to marks that have been granted by the university to.

Pis or labs or centers for what don't seem like strategic business reasons.

Um, sometimes investigators get the idea that if they get a trademark, it can be a vanity asset or something that they can sort of celebrate as part of their overall achievements.

Um, and those aren't good reasons for registering a trademark. They really are another intellectual property asset, and they have business value, and they should be used in a strategic fashion, and not just.

To stroke somebody's ego. Anyway, so, trademarks are appropriate for the institutional brand that we already talked about, which is a commercialized.

A commercialization vector that's very common, particularly for athletics and your communications department, and they're also appropriate for commercialized.

Commercializable innovations that we'll be actively managed or licensed out. Like products or services. They're not great for lab centers, or departments. Um, they're really not great for joint studies, uh, between two universities.

Um, or services or programs that will never, ever be used in commerce, and they won't pass the, um, examination process anyway.

Okay, on the strategic side, where… where does it make sense to register trademarks on innovations? Well, I specialize in creative and digital works, and I can tell you that.

Um, trademarks make a lot of sense on the, sort of, software physical sciences and copyright protectable assets side of tech transfer, particularly in the copyright space, because.

Sometimes those assets, like educational programs that have. Lots of smaller components connected to them.

Uh, they can't, uh, trademark can serve as a kind of umbrella protection over assets they may shift over time. So, one example that we have at NYU is a program called Parent Corps.

It is a, um… It is a program that was started in Harlem in 1999, and their purpose is to provide educational resources to parents, teachers, and kids.

To prevent racism at the earliest levels of formal education, so preschool and kindergarten. And they have, like, a whole slew of things that they consider innovations under this single.

Program that they provide wholesale as a prepackaged offering to a school. So, the trademark in this case made great sense because it helped us keep stability over their.

For educational programs that they offer, all of their assessment tools, plus their website, etc. Everything is packaged up in this one.

Particular bundle under the name of Parent Corps, and it's recognizable, and people understand what it is.

Even if they're getting different materials from that single source. Um, assets like this, like educational technologies.

They often are built this way, like programs, and they take a long time sometimes to de-risk enough to be ready for a startup process.

And so, having that trademark on those assets while you build goodwill around a program, uh, can give that.

Startup company a leg up, as well, when they finally are ready to exit the university and go out on their own.

Okay. Another good example of where a trademark can be useful in terms of an umbrella, um, we have, um, a department here at the hospital called Innovations in Medical Education.

Um, and they are creating a sort of… broad range of software tools that they're using with our students internally, but which they also realize have commercial potential, and they have chosen to.

Market all of them as a package, uh, together under one banner identity. And they, in this case, they chose Chimera, um, as the.

As the name, which was just registered and, like, officially. Published last week, which is very exciting. Anyhow, in this case, we had multiple assets.

And all of them are becoming more synonymous with. Um, that center at NYU, but also, uh.

Could be bundled together if there was an entrepreneurial interest in taking them outside of the university together as a grouping.

Whereas they probably wouldn't do well just by themselves, because they're fairly discrete, small, uh, pieces of software, and wouldn't have, like, strong.

Um, knock off value onto them. One other way that you can use trademarks, and some other universities have already done this, um, is under something called a powered by.

License, so I spoke earlier about the division between institutional trademarks and innovation trademarks.

That's true, and often by design, right? Like, the comms team and the marketing team, they don't necessarily want the TTO.

Um, using the institutional brand for anything related to innovations, because the purpose of transfer is to get it out of the uni and not keep it coupled into our identity forever.

One way you can kind of thread the needle is by developing a mark like this.

Where, um, it's separate. From the core brand. It's separately registerable as its own logo or mark.

And yet, you can offer it to a prospective licensee, like a startup.

Um, to allow them to show their institutional affiliation. As a technology that came from the university in the first place.

This is attractive to undergraduate students who are really proud that they came from the university, and they want to use a mark connected to.

Uh, the school, but policy would never allow them to put the core brand on their software that they're baking for their new company.

Um, this would give them that option. I've also seen these marks used as a, um, sort of a low-bar license, where otherwise you would lose the asset completely, or just walk out the back door. You could do a very, like.

Cheap, low-level, equity-only style license, and require that they take this, um.

Powered by option as a way of, um. Capturing something, um, for the university connection and investment in that thing.

And I'll pass it over to Anne.

Yes.

Great, thanks, Beth. Can you hear me? Okay, awesome. I'm gonna set my timer here. Um, well, thanks, everybody. So, I am Anne Hall, and I am a Senior Technology Portfolio Manager at the University of Minnesota.

And I've been in the office for quite a while, and I think my portfolio is one of the most fun portfolios in the office.

I get to work on not only the agriculture and horticulture side of things, but also in the life sciences more generally, particularly in biotechnology.

And gene editing, gene therapy, and cell therapy. So, um, I have a diverse portfolio.

All right. So today, though, I'm going to talk about, um, some examples of how our office and university are using.

Plant-specific trademarks, um. To commercialize inventions that are coming out of our ag and hort departments. Um, particularly in the area of apples, shrubs, and ornamentals, we file a fair number of trademarks.

And these are often, in our office, associated with a plant patent, so we have kind of a dual asset.

Similar to maybe Beth having, um, registered copyright and or a trademark.

We often will file a plant patent on, um, a plant-related invention if we think it has.

Say, national potential, um. Or significant, um, enough potential to warrant that cost. And so sometimes we take this dual strategy.

But the nice thing about a trademark is, if you have a variety that doesn't have a patent.

Um, the trademark could be your intellectual property asset. Go ahead.

So, here's just a few examples. I hope you all have seen these examples. Well, particularly the top two.

Um, you'll notice Honeycrisp is not on here. I'm gonna talk a little bit more about that later, but Sweet Tango and Rave are two of the national brands that we have for.

Apple's release from our program, as well as First Kiss, is a brand that we use on apples that are specifically grown in the great state of Minnesota.

So there's different ways to use, um, trademarks to identify where those brands are coming from. Go ahead.

We also brand some of our ornamentals, for example, um, and trees.

So, Blue Heaven is a prairie grass, golden sunset, Fireside is a nine bark bush, and Inova Tree is a brand that we use for a hybrid poplar out of our hybrid poplar breeding program.

So, these are a number of different products that we're using trademarks on. Go ahead.

So, what value does a trademark provide in these instances? Well, so, as Matt, um, had talked about.

Trademarks essentially, um, provide the consumer with an idea of where that brand is coming from, where it's sourced from, the quality of the product.

Um, we all know we've been in, probably, Walgreens, where you've got the idea where you can buy the brand name versus the generic, and you're like.

You go through that mental gymnastics, are they the same? What should I do? Okay, I'm gonna go for the brand, because I think it's potentially a higher quality. I know where it's coming from, right? Um, and so, like, with our apples, for example, it allows us to provide quality control and distinctiveness.

So, you go in the store, there's a lot of different apples, they look maybe very similar, but they have different brand names, but also it allows us in our licenses a level of quality control, so we actually have.

Specific trademark licenses that are distinct from the patent license, where we can say, if you're going to use the brand name Sweet Tango on this Apple, it must have.

This level of sweetness, this level of redness, and that sort of thing, to pres… to, um, ensure high quality.

And, as Matt mentioned, um, trademarks can have an extended lifetime if you're continuing to use them in commerce.

And can then allow for royalties after the patent expires, or if there's no patent, um, possible.

So, um, one thing that's interesting about trademarks is you can have trade… you can have multiple trademarks, actually, on the same product.

So, uh, this is a little story of a tale of three trademarks.

So, for various reasons, we've got an apple in our portfolio that.

That has currently two different trademarks and might even have a third. Um, and the reason for that is, so we had this apple variety, Min55.

Uh, that we think's a great apple variety that has national potential, and so we… came up with, um, Rave as the brand for our national licensee, Stemill growers, who grows the apples in Washington and other places, and.

And… and sells these apples in stores nationwide. It was an exclusive license.

We've got brand standards, and so forth. Well, first KISS is the second brand on this same apple, and that brand is actually restricted just for apples that are grown inside Minnesota.

So, we can denote that these are locally grown apples, and we provide this only to the Minnesota growers.

Who are not part of our exclusive licensee stimilt, who's outside the state. Um… These are not exclusive licenses.

And then we have a third business model we're coming up with more recently, um, where we're… It's called Superior Fruit Innovations, where we're, um, having direct licenses with direct marketers or orchards, where you can go to, say, a pick-your-own and get our apples.

And, um, we think that for one of our apples, or for this apple, we may need to use yet another brand for that, because those will be.

Grown outside of Minnesota, but they're not from our exclusive licensee. So.

A tale of three trademarks, um, kind of a nuance of how they can be used.

Um, this is just a few examples of Apple names kind of showing the practicality of what Matt was talking about earlier, where you've got that spectrum of distinctiveness, um, with trademarks, where it goes every, uh, from, from generic on the left to.

Um, very strong trademark on the right, and you can kind of see that spectrum. Something… an apple called a tart… just called Tart Apple, that would not.

Probably be a registerable trademark. Tart is an adjective, it's in the public domain as an adjective, it's not a brand.

Uh, just like you can't patent a rock or something natural, right? You can't get a trademark out of this kind of.

Descriptive, um, uh, term. But then, as you move towards the right, you can see, well, we've got some marks that are slightly descriptive, right?

Honeycrisp, Evercrisp, and you get into the suggestive ruby frost, sweet tango, okay, Sweet Tango is probably a sweet apple. Cosmic Crisp is probably a crisp apple. Um, but then you move over to names like Snapdragon, Jazz, and Lady Alice.

Those are names that are very strong trademarks because they're arbitrary. They don't have anything to do with the apple.

Um, and then on the right-hand side, extremely strong names that are trademark names that are completely made up, um.

And considered fanciful. Go ahead. So, one of the things I want to talk about today is that selecting strong trademarks is not trivial, at least it hasn't been in my portfolio. Maybe I just haven't figured it out yet, but…

Um, it can be challenging, because who's gonna choose this trademark, right? We come up with this great apple, we're gonna exclusively license it, is it the inventors that are gonna… Pick the name, is it our licensee? Is it us? If we want to own it, we should probably figure it out. Otherwise.

The licensee's gonna try to own it. So, in our Apple, um, portfolio.

It has taken a lot of different approaches to pick good names. So, for the rave example.

We got into this situation where we were trying to brainstorm and do this collaboratively with our commercial partner.

Loves to melt growers and their CEO, but I will not recommend, um, picking trademark names with your.

Your licensee's CEO. It just does not work well. So we had a lot of fails there. Couldn't come up with names everybody agreed on, couldn't.

Couldn't pass the knockout searches. So then we did a bunch of brainstorming on our own.

Again, couldn't come up with a name that was passing the knockout searches. It's actually quite hard.

And so, in this case, what we did was we actually worked with a professional branding firm called Capsule in the Twin Cities, and this was a win for us.

They actually offered to do it for free for us. Um, because everybody likes our apples, and they thought it'd be fun. We did end up paying them a bit, because I told them, like.

Often, in my experience, you get what you pay for when it's free, and so we're gonna pay you, and that… provides a level of service and accountability.

Um, now, Juicy Jewel and Triumph are two other apples which we recently named in the last few years, and… This… these varieties were challenging, too. We just…

The breeders were working with us, and the TTO, we were having a lot of meetings.

So, we kept failing, couldn't find names that we all liked or that passed the knockout search. So we actually did.

A university naming contest, which was really fun, and we solicited names from thousands of people.

Um, across the university, and we ended up finding these two names, and.

The university still owns them, not the person that came up with it, but that was a fun way to get people involved.

And so, one of the things Beth and I were talking about yesterday was, um, I've been putting together a manual on how to come up with names and how this process works, because.

Sometimes you get inventors that are like, we don't want to have anything to do with it. Sometimes they want to have everything to do with it.

Um, and… and how much involvement should the TTO have? I've tended to have a lot of involvement, sometimes more than I want to, so I'm trying to educate our inventors and faculty.

How to do this, so that they can maybe take a bit more ownership.

And so once you pick a name, well, is it protectable? As Matt talked about, these are the steps that you go through.

Um, to determine whether or not it's formally protectable, we actually have our interns do Google searches if your researchers say, I don't have time.

Um, we, we do that. We have a template that they use, and, um, you know.

They also searched the USPTO trademark database for us as a way to start and get an idea.

Is there anything else out there? And then we actually do pay for our trademark attorneys, typically, to do the knockout search.

Um, for us. And then, if it's really an important mark that's gonna be an exclusive brand, um.

Will pay for a professional, comprehensive search that is… is more comprehensive and will let us know if there's anything.

Out there in our way. Um, and this is just an example of the results from the knockout search for Juicy Juul, and the reason I'm just showing you this is.

Like, even when our interns do these searches to figure out, like, well, is there anything else out there that is similar?

A lot of times, you come up with these names, like, these are all the things that were found in a knockout search, or the most similar to Juicy Jewel.

It's like, well, is that a knockout? Is that a problem? If there's a Juicy Gem pomegranate? I actually thought it… what a problem, but our… Trademark attorney didn't, because GEMS is… it looks and sounds distinct enough from Juul. Um, it's on a pomegranate, which is pretty separate. You don't…

You usually see that in the store very often. I guess, and so he didn't think that was a knockout.

Juicy, actually, you might be like, why did they get a mark on Juicy? That actually, um, I believe is just a design mark.

And it… because the word juicy is not trademarkable, uh, registerable, and um… that he felt that that… just that juicy with an I was distinct enough from Juicy Jewel that it wouldn't confuse consumers.

So anyway, this is just an example. We've found that having… I guess this is a plug for the attorneys, in the trademark, um, arena.

Having, um, somebody with expertise in the nuance of this interpret results for you is important.

Go ahead. And then, um, in terms of when we register plant trademarks, typically in the apples, it's after years of testing, but before it goes to market, like Matt was saying, we file those intent-to-use marks, so we haven't used it yet, but we intend to.

And you have up to 3 years before you start using it in commerce. I will caution you.

That for apples and things like that, that have a long life cycle to develop.

Um, we have mistimed this before, and we have had marks that have gotten registered, but then we couldn't show the bona fide use in commerce with our licensee yet, and we've lost marks.

So that can happen. You can refile them if that happens.

Um, but it's kind of… it's kind of annoying. So you try to time that.

Go ahead. And then, very quickly, I guess I'm airing our dirty laundry. A tale of lost trademark rights. I would just caution that you can lose trademark rights.

And Honeycrisp, our favorite name in the world. Everybody knows it, it's a top Apple worldwide, we do not have a trademark on it. And that is because.

Um, in those days, in the early 90s, I was not there. Everybody was doing their best, but we didn't know a lot about this, and a lot about trademarks on plants.

And so, Honeycrisp was used in the plant patent as a varietal name, so we lost the ability to use it as a brand.

And so, anybody can use this name. But there was a saving grace, um, that you should be aware of, is that.

You know, like patents, trademarks are jurisdiction-specific. So, um, we have an exclusive licensee for the Honeycrisp variety.

Um, in Europe, and we actually have been able to register the trademark Honey Crunch in Europe. And so the Honeycrisp variety is marketed under the Honey Crunch.

Brand in Europe, and we are still receiving royalties on apples sold.

Um, so that's… that's, uh, I guess a cautionary, but also kind of a good story in the end.

Go ahead. And then, um, just wrapping up here, trademarks, um, like the others were saying, can cover collections of products.

Um, and can also be used in concert with your licensee's brand. So, um… In this example, Bailey's Nursery is one of our licensees. They have a first editions brand for shrubs and trees.

That is their brand, they own it, they have a number of plants under that umbrella brand.

One of ours was this, uh, electric lights double pink azalea, and so there's multiple trees and shrubs underneath this. We own the electric lights trademark that we've licensed to them, but they use it under their umbrella brand.

So… go ahead. And then some… a couple things, just the last few slides that I, um, learned maybe sometimes the hard way, is that you do have to enforce your trademarks.

To prevent confusion and keep competitors at safe distance. Um, it's also important to register relevant domain names, so, like, when we picked the Sweet Tango Apple, we looked with SweetTango.com on the internet available.

Um, because, um, obviously it's nice to have that name. Go ahead.

And then, a couple other last learnings are that important, specifically a really important, valuable marks create a set of responsibilities.

That I didn't always appreciate in the beginning. One of the things is that law firms can set up monitoring for possible infringers.

There's a yearly fee, it's not that expensive. They like it, too, because it creates opportunities for them.

Um, and you can… you can monitor who else is filing marks that might be similar.

But you have to send, then, cease and desist letters to people who are possibly infringing.

And then in international marks, um, one of the big learnings I had is that every country's different. Um, Europe in particular is different.

They basically rubber stamp a trademark application. So, you apply, you get it registered, and you think, hey, we're doing great. We've got our Sweet Tango, um.

Trademark in Europe, but actually, um, you have to police it then if there's other confusingly similar marks through opposition and things like that. Um, the other thing we've learned is that names mean different things in different countries.

And so, for example, Rave has something to do with a beetroot in some European language.

So, we market that apple under a different name in that… in those countries. So, some international laws are more strict, some less, so it's… it's really important.

To understand those as well. Um, and with that, let's move on to, um, Bithley.

Okay. Thanks, Anne. Um, I'm Ashley Schroff, and I'm a licensing Manager at the University of New Hampshire.

Go Wildcats, right? There's ever a good time to use a… a trademark, um, on stage. It's now.

Um, thank you to Matt, Beth, and Anne for providing some wonderful insights into.

Forced to fall trademarks 101 and providing some really. Um, nuanced examples.

Um, I will share a couple of examples. Of how we've used trademark protection here at UNH. So…

Very briefly, as my fellow panelists have mentioned, trademarks are really a shorthand for trust.

In university commercialization, they help your audience, whoever it may be, growers, distributors, or consumers.

Know what they're getting, even as maybe the formulations or the partners evolve.

So, to give you one example, um… Loy's Choice is one of our proofs.

This variety is dedicated to the late. Dr. J. Brent Loy, that led the nation's.

Longest-running squash, pumpkin, and melon reading program. So, this program actually produced more than 100 commercial varieties.

And since 2015. These varieties have generated.

Over 1.6 million in royalties for the university. Deloitte's Choice Mark really honors.

The legacy and signals consistent quality in the marketplace. Which really makes it easier, not just for us in the TTO and the marketing office.

But as well as licensees to promote. And for buyers to trust.

Thereby allowing the university to sustain value over time. Right? So, what's in a name?

Well, before we systematize the use of the mark. Um, our different partners really describe lines.

Inconsistently, and the packaging varied. There was really no link between.

The brand value that Dr. Loy had created. Over the years, um.

With any of the varieties that he's generated. So, by anchoring around Loy's choice.

The name really did the heavy lifting here. The distributors could market confidently, and the end buyers knew.

What to expect? Quality assurance also became simpler. And really, having that umbrella mark, um, as Beth mentioned earlier.

Let's just harness the individual pulling power of perhaps some standout varieties.

And it allows us to collectively lift the brand. You know, it enables us to cross-promote new releases, we sustain recognition.

Between seasons, and there is some merit, also, to have a simplified retail story to tell.

Right. So… It really emphasizes the power of continuity.

A trademark brings to… Perhaps living iterative assets, like Anne mentioned.

And because trademarks can outlast patents, when properly used and policed.

They're really a durable complement. To the plant IP.

So, Loy's choice as a mark really shows. Um, scientific quality.

Another example that I would love to share with you. Is how a cause-driven, co-branded mark scale.

And reaches beyond, um, and provides impact beyond the university setting.

So, this is the story about Operation Hat-trick. That really just began with a hat.

And it became a national movement. It's a co-branded licensing program, where the royalties fund.

Recovery programs for wounded veterans. So, today, um, there are more than 400.

Participating universities, millions of dollars raised. An expanded partnerships with corporate collaborators, including the NHL and NBA.

So, how do you go from a cap to a cause?

Right? So, just to provide a little context and a little story behind this.

Operation Hat Trick was really founded. At UNH by Dot Sheehan, who was then a leader within UNH Athletics.

Um, the program was launched in the memory of two Navy SEALs with ties to the university, Nate Hardy and Mike Cock.

Who lost their lives in the Iraq War in 2008. So this was done for…

The veterans that returned from the Iraq War. With head injuries, right?

Uh, and it was a way to provide them with a baseball cap.

A simple thing to enable them to hide their wounds and their bandages.

And swellings and other things. So OHT really took shape inside the UNHSDDO, which is unusual. It was really a true spin-in.

Um, which… not only gave it immediate credibility.

But it also provided the technical and operational support. That gave it the ramp that it needed to grow.

So, as the brand standards. Cool branding approvals and quality control processes took hold.

Oht scaled nationally. And through collegiate licensing and other retail partners.

It ultimately matured into an independent non-profit platform. The co-branding model actually created 3 different wins in my eyes.

For OHD. One, the friends purchased the products because the look and feel was kind of on-brand.

The cause is front and center, which resonates with a lot of people, and it unlocks new channels.

And the program itself funds real services for veterans. So there's really a cause to get behind, right?

And the trademark framework of it all. The consistent logos, the quality control, the approvals, and the enforcement.

Really makes it possible to scale. On a national level, without diluting the core brand.

All right. So… With my two examples, with lowest choice, you saw how an umbrella brand, um, turns a collection of varieties.

Into a single kind of promise of quality. Right? And from operational hat-trick, we saw a causaligned mark.

And how it can scale nationally without losing its identity. So together, in my mind, they really amplify the point that university.

Trademarks, um, are the credibility engines that help these campaigns propel forward.

So, when I'm thinking of credibility. It's really when a university mark.

Sits next to a program, or a product line, or a cause.

It really signals that the work has been vetted. Buyers, partners, and owners don't have to decode the story from scratch.

The mark is really a shorthand for standards and for quality control and accountability.

That trust compresses the time from, hmm. This is interesting, too. Yeah, I'm in.

Right? Um. Secondly, in terms of value alignment.

The marks don't just stand for our name. They stand for institutional Values.

There's legacy service, honor, patriotism, right? With both Loy's Choice and OHD.

These values stand out. Oht brings those values into the retail market.

With Loy's Choice, they ride along with every new variety that comes.

Into the market. So. It makes it possible, the mark makes it possible for the mission to be legible.

In a way. Third. There's pride in community, so… I see it so many times when students, alumni, and local partners see their university marks.

Used well. It creates a sense of belonging. Um, people share, they wear it.

They gift it, and they talk about it. And that pride is a flywheel. It really brings audiences back, and it brings new audiences in.

Um, and lastly, um, it's revenue with purpose, right? Smart trademark use.

Generates licensing income. But it also helps fulfill our social and land-grant mission.

The dollars that are earned can support research programs, scholarships, and outreach.

While the market sells, keeps the attention anchored. To the public good that those dollars serve.

So, um, lastly, there's all… there are also opportunities for partnership.

So, when you have clear brand guidelines. You have pre-approved lockups.

You know, everything is… is finalized and ready to go. You have predictable approvals.

It gives retailers and your co-brand partners the confidence to say yes.

It's… you're consistent, um, and… it just helps you step into broader channels without diluting the brand identity.

And give partners a clear playbook. For speed and for scale. You can really accelerate.

And catapult a brand. So… just as a kind of…

Final point, I'd like to reiterate that trademarks are more than legal assets.

They're really a shorthand for quality. Mission and community. Um, Loy's choice shows how Amark preserves and amplifies a scientific legacy.

On the other hand, Operation Hatrick shows how co-branding can align values with real-world impact.

While still driving revenue and visibility. So, I'm gonna hand it over to Matt for some final thoughts.

Great, thank you very much. So, yeah, just to sum up, uh, at least in my idea, what the summary might be, there's a lot to.

To digest here. But the key things, I think, that are important is that.

It's just important at a fundamental level to understand, obviously, what trademarks are, how they're used, their value, and convey that to the people, to all the stakeholders, right?

Uh, and, um, that may mean having this sort of a presentation for people, so they know what's… what is a trademark, what's the difference between trademarks, copyrights, and patents, because all of these things may be at play at any given time.

So having that understanding, I think, will inform how you work with.

All the stakeholders involved. Um, having trademark search clearance processes, registration processes, costs, and all of that, part of your process, part of your plans.

That should all be a part of what you are thinking about, even if.

You don't necessarily do all of these things, right? We don't necessarily apply to register every mark, but all of that should be at least.

On the potential checklist. Um, planning ahead is really key, right, as we talked about. You don't necessarily want to wait until the product or the service is.

Is, uh, out in the wild. You want to think ahead, to clear your trademarks, to potentially apply to register those trademarks.

Get that done sooner rather than later, and use that process strategically.

Uh, licensing builds value, right? I mean, that's what we… what, what, uh… mightily was just talking about. This is the, sort of, the key, right?

But, we also don't want to ignore the fact that. You can't just license it out and then let it roll. You have to exercise quality control at all times. This is your trademark.

This… you are the source that people are going to associate with the quality of the product or the service.

So quality control and exercising quality control, not just, you know, lip service for it, but actually exercising it is really, really important.

Um, and… I would just say, as a general notion.

You know, we, as a lawyer, my job is to be a little cautious, right, and to understand risk, and to talk about risk tolerance, so it can be a challenge to be cautious about all of this while also still fostering innovation.

And I think that understanding this process and what we're talking about here, the more people understand that, the more they'll trust the process.

Uh, and I think that sort of helps, um, avoid situations where everybody's sort of afraid to do things. If they understand what the process is, they will be more likely to work within it, and that will help foster all of that.

Innovation. Um, that's all I have to say there. I know we, uh, we are… we have… we're at the end of our time, but I'm hap… we're happy to answer some questions if we have some… some more questions. We had a few in the Q&A feature and in the chat.

But happy to do more. Ashley, I'll leave it to you to how long we're gonna do that for.

Mm-hmm. Yeah, other questions. I answered a question, um, and…

Beth answered a few questions in the chat, but if others have questions, happy to stick on for a few minutes.

I think it's worth raising, um, there was one that I kind of half-answered.

So, it might be for… for Matt, actually. Um, it… The attendee said, if someone has a trademark that probably won't result in a successful registration due to many similar-looking marks for services in the same domain.

But the jurisdiction varies. Can they continue to use the trademark?

Without registration. Um, just…

Mmm, that's a really good question.

Uh, yeah, I mean, so let's just… leaving all things. Leaving the… okay, let's just say it this way.

Just as a fundamental point, yes, you can absolutely use a trademark even if you can't register it, but the reasons.

Right.

That will depend on the reasons why you can't register it, right? Because it is very… it's not uncommon.

For there to be a registered mark that would block your application, but in the real world.

It is not a potential risk, right? Because. Trademark applications identify things very broadly, so there could be a registration for marketing services that broad, or financial services, that broad, whereas.

In reality, what you're doing and what the owner of that registered Mark are doing are very, very different. So, there is a very low risk to your use of the trademark, even if you could not register the trademark. So you'd have to understand the… the scope of that, and that's our job, oftentimes, is.

Yeah.

We face that a lot, where we say, oh, listen, there's a registration that's absolutely going to be a barrier, but.

We don't think that they're… they're gonna be a problem for you to use the trademark, so you can just go ahead and use it and build up those common law trademark rights.

And maybe things change, and later you can apply to register it.

Maybe just a quick, um, add-on to that, Matt. We ran into that recently in one of our plants, our ornamentals that we were trying to name, and it took a while to find a name we liked, and then.

After the searches, we saw, oh gosh, one of our licensees actually.

Has that for a different plant species that's. Distinct enough we didn't think they'd get confused, or it was broad enough. It was… it was… they had it for very broad.

Usage, and they weren't… they were only using it on a tree.

Mmm.

And so, we actually reached out to them and said, hey, can you… can we coexist on this? And so you can make deals.

Yeah.

And kind of say, I know you guys are only using it on a tree, we want to use it on this flower, we don't think it's gonna… Um, interfere, but the Patent Office isn't letting ours register. Are you willing to disclaim flowers and just have yours on trees?

Right.

Because all you sell is trees. And yeah, and they said, well, yeah, I think so, so…

Right? Yeah, yeah, there's definitely… I mean, it's, you know, sometimes there's an opportunity to reach out, particularly if you have a relationship like that.

Yeah.

If… and again, the real world, there is… you think there is no real confusion, likely of confusion there.

Maybe the other side will consent to your registration, right? And you can get that in writing, and you submit that to the Trademark Office, and say, hey, listen.

The parties at issue here agree that there is no likelihood of confusion, despite what you, the Trademark Office, might think.

And they will typically accept that. So keep in mind that the Trademark Office is only looking at what's in front of them in their database, right? They look at.

Only what's registered or what's pending. They don't go and… I mean, they probably do Google things, but they are not supposed to use that in, uh, as part of their examination process, so if they see something registered for marketing and advertising services.

It doesn't matter what they're actually doing, all they care about is it says marketing and advertising services, or, you know, fruits, right? What fruit? I don't know, it just says fruit.

Um, so that's the distinction between the registration piece and the real-world use piece.

Yeah. Oh, and I see that, um…

Andrea asked a question, is it possible to have a trademark linked to a tech process.

That is not patentable. I would say yes.

Yeah. Yes, it can be on any kind of good or service, yeah.

That's the beauty.

Sure, yeah. Yeah, yeah, absolutely. I mean, most of the things that we, um… I mean, there's plenty of times when the trademarks that we are dealing with for our clients are for technology, you know, software, whatever it might be, that will never get patented, for one reason or other, because patent… I mean, that's a whole different…

Process and, um, a much more difficult thing to do. Uh, so yeah, absolutely, yeah, absolutely. And that's why I say, like, trademarks can, in… in…

You know, if you can't prevent others from selling the same product, you are then competing with them, and one way to win in that competition is to have the brand.

That everybody gravitates towards, right? You have a better brand, you're presenting it better, and a better product.

But if all things are equal, the better brand will win.

Yeah, and I think protocols are, um, actually a pretty, um, good candidate for this kind of protection, because.

Sometimes they can be fattenable, but if it comes down to it, that that's not possible.

You could still put a trademark over something that represents, like, a specific way of doing something that's related to.

Mm-hmm.

Quality and comes from an evidence base. From your university. We have a couple of those in our dentistry, uh, unit.

Right.

Yeah, and actually, that would be good too, Beth, because process patents can often be really weak patents, because they're not very enforceable. You can't… see if somebody's doing the process. So.

Exactly. For sure.

That trademark would add an extra layer of nice protection.

Okay, thank you everyone, and presenters for their time. On behalf of Autumn, I would like to thank our panelists for this informative presentation.

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And thank you again for being part of today's presentation, and have a great afternoon, everyone!

Thanks, everybodyYeah.Thanks, everyone