Register and protect ASU marks

The Office of General Counsel and the Trademark Licensing office jointly oversee the filing and maintenance of ASU trademark and tradename registrations at the state, federal and international levels.

Only authorized signatories may sign trademark and tradename applications. Filings with the United States Trademark Office or any foreign trademark office may be made only by legal counsel engaged by ASU’s Office of General Counsel. 

ASU departments or schools interested in filing United States federal trademark applications to protect any trademarks should follow these steps.

1. Complete the application form with all necessary supporting documentation for the Trademark Licensing office. Be sure to include the mark, a detailed description of the relevant goods and services the department provides or intends to provide in connection with the mark, and samples of how ASU uses the mark where available.
2. The Trademark Licensing office reviews the information and provides an initial analysis of whether the mark is suitable for registration. A helpful resource for determining the strength of a trademark is the United States Patent and Trademark Office.
   
   This tool provides more information on what constitutes an acceptable versus unacceptable trademark, and how ensuring your trademark is "inherently distinctive", provides the strongest possible legal protections. Some of the criteria used in making an initial determination include:
   1. A mark is not suitable for registration if it is generic or if it is descriptive of the goods or services with which it is being used by ASU. The most protectable and registrable marks are arbitrary, such as APPLE for computers, or fanciful, such as ADIDAS for athletic apparel. 
      1. Strong to acceptable trademarks include: fanciful trademarks, arbitrary trademarks, suggestive trademarks
      2. Weak to unacceptable trademarks include: descriptive trademarks, generic trademarks
   2. A mark must be used as a brand name rather than as a noun. Below are examples of proper and improper trademark use of ASU registered trademarks:

1. A mark may not be confusingly similar to any other party’s use of the same or similar marks, whether or not registered, for similar goods and services. The Trademark Management Office conducts a preliminary screening search online with the United States Trademark Office for any registered or filed trademark applications for the same mark in connection with similar goods and services.
2. If the proposed mark is suitable for registration, the Office of General Counsel will engage outside counsel to run a full trademark search and provide an opinion as to the registrability of the mark. 
3. If the trademark search and opinion are clean, outside counsel would then work with the department to determine the content of the trademark application. 

Resources

• Purchasing and Business Services Manual | PUR 222: Trademark Licensing
• Trademark applications
• United States Trademark Office webpage