Trademark
Encyclopedia
A trademark, trade mark, or trade-mark is a distinctive sign
or indicator used by an individual, business organization, or other legal entity to identify that the product
s or services to consumer
s with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark may be designated by the following symbols:
A trademark is typically a name, word, phrase, logo
, symbol
, design, image, or a combination of these elements. There is also a range of non-conventional trademark
s comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
The owner of a registered trademark may commence legal proceedings
for trademark infringement
to prevent unauthorized use of that trademark. However, in some countries unregistered rights in a sign may also be enforced. These are often known as 'common law' rights. An unregistered sign is usually only protected within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark
, particularly in the United States
.
s attach to a registered mark, which can be enforced by way of an action
for trademark infringement
, while in some countries unregistered trademark rights can be enforced pursuant to the common law tort
of passing off
.
It should be noted that trademark rights generally arise out of the use or to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections.
Different goods and services have been classified by the International (Nice) Classification of Goods and Services
into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea of this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.
In trademark treatises it is usually reported that blacksmiths who made swords
in the Roman Empire
are thought of as being the first users of trademarks. Other notable trademarks that have been used for a long time include Löwenbräu
, which claims use of its lion mark since 1383, and Stella Artois
, which claims use since 1366.
Registered trademarks involve registering the trademark with the government. The oldest registered trademarks in various countries include:
In 1980, there were fewer than ten thousand registered high-tech trademarks in the United States. In 2011, there are more than 300,000.
) and ® (the registered trademark symbol
) represent the status of a mark and accordingly its level of protection. While ™ can be used with any common law usage of a mark, ® may only be used by the owner of a mark following registration with the relevant national authority, such as the U.S. Patent and Trademark Office (USPTO or PTO). The proper manner to display either symbol is immediately following the mark in superscript style.
" and "logo
" are sometimes used interchangeably with "trademark". "Trademark", however, also includes any device, brand, label, name, signature, word, letter, numerical, shape of goods, packaging, colour or combination of colours, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is registered.
Specialized types of trademark include certification mark
s, collective trademarks and defensive trademarks. A trademark which is popularly used to describe a product or service (rather than to distinguish the product or services from those of third parties) is sometimes known as a genericized trademark
. If such a mark becomes synonym
ous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark becomes generic.
The law considers a trademark to be a form of property
. Proprietary right
s in relation to a trademark may be established through actual use in the marketplace
, or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction
. In some jurisdictions, trademark rights can be established through either or both means. Certain jurisdictions generally do not recognize trademarks rights arising through use. If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement
proceedings will therefore be limited. In cases of dispute, this disparity of rights is often referred to as "first to file" as opposed to "first to use." Other countries such as Germany offer a limited amount of common law rights for unregistered marks where to gain protection, the goods or services must occupy a highly significant position in the marketplace — where this could be 40% or more market share for sales in the particular class of goods or services.
In the United States the registration process entails several steps prior to a trademark receiving its Certificate of Registration. First, an Applicant, the individual or entity applying for the registration, files an application to register the respective trademark. The application is then placed in line in the order it was received to be examined by an examining attorney for the U.S. Patent and Trademark Office. Second, following a period of anywhere from three to six months the application is reviewed by an examining attorney to make sure that it complies with all requirements in order to be entitled to registration. This review includes procedural matters such as making sure the applicant's goods or services are identified properly. It also includes more substantive matters such as making sure the applicant's mark is not merely descriptive or likely to cause confusion with a pre-existing applied-for or registered mark. If the application runs afoul of any requirement, the examining attorney will issue an office action requiring the applicant to address certain issues or refusals prior to registration of the mark. Third, and after the examination of the mark has concluded with no issues to be addressed or an applicant has responded adequately to an examining attorney's concerns, the application will be published for opposition. During this 30-day period third-parties who may be affected by the registration of the trademark may step forward to file an Opposition Proceeding to stop the registration of the mark. If an Opposition proceeding is filed it institutes a case before the Trademark Trial and Appeal Board to determine both the validity of the grounds for the opposition as well as the ability of the applicant to register the mark at issue. Fourth, provided that no third-party opposes the registration of the mark during the opposition period or the opposition is ultimately decided in the applicant's favor the mark will be registered in due course.
Outside of the United States the registration process is substantially similar to that found in the U.S. save for one notable exception in many countries: registration occurs prior to the opposition proceeding. In short, once an application is reviewed by an examiner and found to be entitled to registration a registration certificate is issued subject to the mark being open to opposition for a period of typically 6 months from the date of registration.
A registered trademark confers a bundle
of exclusive right
s upon the registered owner, including the right to exclusive
use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or "colourfully" similar to the "registered" products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. An example may be a very large multinational brand such as "Sony" where a non-electronic product such as a pair of sunglasses might be assumed to have come from Sony Corporation of Japan despite not being a class of goods that Sony has rights in.
Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction, a quality which is sometimes known as territoriality. However, there is a range of international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction (see International trademark laws below).
and was using the mark in good faith. The USPTO internally captures more information about trademarks than what they publicly disclose on their official search website. For example, the USPTO collects information about what exactly is shown inside every logo trademark filing.
Trademarks may also be searched on third-party databases, such as LexisNexis
, Dialog
and Compu-Mark.
In Europe and if a community trademark has to be filed, searches have to be conducted with the OHIM (Community Trademark Office) and with the various national offices. An alternative solution is to conduct a trademark search within private databases.
In most systems, a trademark can be registered if it is able to distinguish the goods or services
of a party, will not confuse consumers about the relationship between one party and another, and will not otherwise deceive consumers with respect to the qualities of the product.
All jurisdictions with a mature trademark registration system provide a mechanism for removal in the event of such non use, which is usually a period of either three or five years. The intention to use a trademark can be proven by a wide range of acts as shown in the "Wooly Bull" and "Ashton v Harlee" cases.
In the U.S., failure to use a trademark for this period of time, aside from the corresponding impact on product quality, will result in abandonment of the mark, whereby any party may use the mark. An abandoned mark is not irrevocably in the public domain
, but may instead be re-registered by any party which has re-established exclusive and active use, and must be associated or linked with the original mark owner. If a court rules that a trademark has become "generic
" through common use (such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it), the corresponding registration may also be ruled invalid.
For examples, see trademark distinctiveness
.
Unlike other forms of intellectual property (e.g., patents and copyrights) a registered trademark can, theoretically, last forever. So long as a trademark's use is continuous a trademark holder may keep the mark registered with the U.S. Patent and Trademark Office by filing Section 8 Affidavit(s) of Continuous Use as well as Section 9 Applications for renewal, as required.
Specifically, once registered with the U.S. Patent and Trademark Office the owner of a trademark is required to file a Section 8 Affidavit of Continuous Use to maintain the registration between the 5th and 6th year anniversaries of the registration of the mark or during the 6-month grace period following the 6th-year anniversary of the registration. Note, if the Section 8 Affidavit is filed during the 6-month grace period additional fees to file the Affidavit with the U.S. Patent and Trademark Office will apply.
In addition to requirement above, U.S. trademark registrations are also required to be renewed on or about every 10-year anniversary of the registration of the trademark. The procedure for 10-year renewals is somewhat different from that for the 5th-6th year renewal. In brief, registrants are required to file both a Section 8 Affidavit of Continuous Use as well as a Section 9 Application for Renewal every ten years to maintain their registration.
, famous.
If a trademark has not been registered, some jurisdictions (especially Common Law
countries) offer protection for the business
reputation
or goodwill which attaches to unregistered trademarks through the tort
of passing off. Passing off may provide a remedy in a scenario where a business has been trading under an unregistered trademark for many years, and a rival business starts using the same or a similar mark.
If a trademark has been registered, then it is much easier for the trademark owner to demonstrate its trademark rights and to enforce these rights through an infringement action. Unauthorized use of a registered trademark need not be intentional in order for infringement to occur, although damages in an infringement lawsuit
will generally be greater if there was an intention to deceive.
For trademarks which are considered to be well known, infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner's mark is registered.
A growing area of law relating to the enforcement of trademark rights is secondary liability
, which allows for the imputation of liability to one who has not acted directly to infringe a trademark but whose legal responsibility may arise under the doctrines of either contributory or vicarious liability.
, and fair use. In the United States, the fair use
defence protects many of the interests in free expression related to those protected by the First Amendment
. Fair use may be asserted on two grounds, either that the alleged infringer is using the mark to describe accurately an aspect of its products, or that the alleged infringer is using the mark to identify the mark owner. One of the most visible proofs that trademarks provide a limited right in the U.S. comes from the comparative advertising that is seen throughout U.S. media.
An example of the first type is that although Maytag
owns the trademark "Whisper Quiet", makers of other products may describe their goods as being "whisper quiet" so long as these competitors are not using the phrase as a trademark.
An example of the second type is that Audi
can run advertisements saying that a trade publication has rated an Audi model higher than a BMW
model, since they are only using "BMW" to identify the competitor. In a related sense, an auto mechanic can truthfully advertise that he services Cadillac
s, and a former Playboy
Playmate of the Year can identify herself as such on her website.
Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action. In this situation, the party receiving such a threat may seek from the Court a declaratory judgment
; also known as a declaratory ruling.
objective of consumer protection
, by preventing the public from being misled as to the origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the expectations of consumers as to quality and other characteristics.
Trademarks may also serve as an incentive for manufacturers, providers or suppliers to consistently provide quality products or services to maintain their business reputation. Furthermore, if a trademark owner does not maintain quality control
and adequate supervision in relation to the manufacture and provision of products or services supplied by a licensee, such "naked licensing" will eventually adversely affect the owner's rights in the trademark. This proposition has, however, been watered down by the judgment of the House of Lords in the case of Scandecor Development AB v. Scandecor Marketing AB et al. [2001] UKHL 21; wherein it has been held that the mere fact that a bare license (equivalent of the United States concept of a naked license) has been granted did not automatically mean that a trademark was liable to mislead.
By the same token, trademark holders must be cautious in the sale of their mark for similar reasons as apply to licensing. When assigning an interest in a trademark, if the associated product or service is not transferred with it, then this may be an "assignment-in-gross" and could lead to a loss of rights in the trademark. It is still possible to make significant changes to the underlying goods or services during a sale without jeopardizing the trademark, but companies will often contract with the sellers to help transition the mark and goods or services to the new owners to ensure continuity of the trademark.
law generally seeks to protect new and useful inventions, and registered designs law generally seeks to protect the look or appearance of a manufactured article. Trademarks, patents and designs collectively form a subset of intellectual property known as industrial property because they are often created and used in an industrial or commercial context.
By comparison, copyright
law generally seeks to protect original literary, artistic and other creative works. Continued active use and re-registration can make a trademark perpetual, whereas copyright usually lasts for the duration of the author's lifespan plus 70 years for works by individuals, and some limited time after creation for works by bodies corporate. This can lead to confusion in cases where a work passes into the public domain
but the character in question remains a registered trademark.
Although intellectual property laws such as these are theoretically distinct, more than one type may afford protection to the same article. For example, the particular design of a bottle may qualify for copyright protection as a non-utilitarian [sculpture], or for trademark protection based on its shape, or the 'trade dress
' appearance of the bottle as a whole may be protectable. Titles and character names from books or movies may also be protectable as trademarks while the works from which they are drawn may qualify for copyright protection as a whole.
Drawing these distinctions is necessary, but often challenging for the courts and lawyers, especially in jurisdictions where patents and copyrights pass into the public domain
, depending on the jurisdiction. Unlike patents and copyrights, which in theory are granted for one-off fixed terms, trademarks remain valid as long as the owner actively uses and defends them and maintains their registrations with the competent authorities. This often involves payment of a periodic renewal fee.
As a trademark must be used to maintain rights in relation to that mark, a trademark can be 'abandoned' or its registration can be cancelled or revoked if the mark is not continuously used. By comparison, patents and copyrights cannot be 'abandoned' and a patent holder or copyright owner can generally enforce their rights without taking any particular action to maintain the patent or copyright. Additionally, patent holders and copyright owners may not necessarily need to actively police their rights. However, a failure to bring a timely infringement suit or action against a known infringer may give the defendant a defense of implied consent or estoppel
when suit is finally brought.
A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (e.g., just the word Pepsi
spoken, or on a billboard).
Under trademark law, dilution occurs either when unauthorized use of a mark "blurs" the "distinctive nature of the mark" or "tarnishes it." Likelihood of confusion is not required. 15 U.S.C §§ 1127, 1125(c).
Most jurisdictions provide for the use of trademarks to be licensed to third parties. The licensor (usually the trademark owner) must monitor the quality of the goods being produced by the licensee to avoid the risk of trademark being deemed abandoned by the courts. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to quality and the licensor has rights to inspection and monitoring.
has led to attempts by trademark holders to enforce their rights over domain names that are similar or identical to their existing trademarks, particularly by seeking control over the domain names at issue. As with dilution protection, enforcing trademark rights over domain name owners involves protecting a trademark outside the obvious context of its consumer market, because domain names are global and not limited by goods or service.
This conflict was more easily resolved when the domain name user actually used his website to compete with the trademark owner. Cybersquatting
, however, involves no such competition, but instead an unlicensed user registering the trademark as a domain name to pressure a payoff (or other benefit) from the lawful mark owner. Typosquatters
—those registering common misspellings of trademarks as domain names—have also been targeted successfully in trademark infringement suits. Other types of domain name disputes include the so-called "gripe site
," which use a registered trademark in a domain such as "[trademark]sucks.com." There are also disputes arising from the subdomain
, when a third party uses a protected mark in a web address such as "[trademark].[legitimatedomain].com."
This clash of the new technology with preexisting trademark rights resulted in several high profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trademark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so initial interest confusion
was a concept applied instead. Initial interest confusion refers to customer confusion that creates an initial interest in a competitor's "product" (in the online context, another party's website). Even though initial interest confusion is dispelled by the time any actual sales occur, it allows a trademark infringer to capitalize on the goodwill associated with the original mark.
Several cases have wrestled with the concept of initial interest confusion. In Brookfield Commc'ns v. West Coast Ent'mt the court found initial interest confusion could occur when a competitor's trademarked terms were used in the HTML
metatags of a website, resulting in that site appearing in the search results when a user searches on the trademarked term. In Playboy v. Netscape, the court found initial interest confusion when users typed in Playboy's trademarks into a search engine, resulting in the display of search results alongside unlabeled banner ads, triggered by keywords that included Playboy's marks, that would take users to Playboy's competitors. Though users might ultimately realize upon clicking on the banner ads that they were not Playboy-affiliated, the court found that the competitor advertisers could have gained customers by appropriating Playboy's goodwill since users may be perfectly happy to browse the competitor's site instead of returning the search results to find the Playboy sites.
In Lamparello v. Falwell
, however, the court clarified that a finding of initial interest confusion is contingent on financial profit from said confusion, such that, if a domain name confusing similar to a registered trademark is used for a non-trademark related website, the site owner will not be found to have infringed where he does not seek to capitalize on the mark's goodwill for his own commercial enterprises.
In addition, courts have upheld the rights of trademark owners with regard to commercial use of domain names, even in cases where goods sold there legitimately bear the mark. In the landmark decision Creative Gifts, Inc. v. UFO, 235 F.3d 540 (10th Cir. 2000)(New Mexico), defendants had registered the domain name "Levitron.com" to sell goods bearing the trademark "Levitron" under an at-will license from the trademark owner. The 10th Circuit affirmed the rights of the trademark owner with regard to said domain name, despite arguments of promissory estoppel.
Most courts particularly frowned on cybersquatting, and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trademarks) to reach into the area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically, and to provide explicit remedies against cybersquatters.
In the US, the legal situation was clarified by the Anticybersquatting Consumer Protection Act
, an amendment to the Lanham Act, which explicitly prohibited cybersquatting. It defines cybersquatting as "(occurring) when a person other than the trademark holder registers the domain name of a well-known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or using the domain name to divert business from the trademark holder to the domain name holder". The provision states that "[a] person shall be liable in a civil action by the owner of the mark ... if, without regard to the goods or services of the person, that person (i) had a bad faith intent to profit from the mark ...; and registers, traffics in, or uses domain name [that is confusingly similar to another's mark or dilutes another's mark]".
This international legal change has also led to the creation of ICANN
Uniform Domain-Name Dispute-Resolution Policy
(UDRP) and other dispute policies for specific countries (such as Nominet UK
's Dispute Resolution Service) which attempt to streamline the process of resolving who should own a domain name (without dealing with other infringement issues such as damages). This is particularly desirable to trademark owners when the domain name registrant may be in another country or even anonymous.
Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trademarks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names.
As with other trademarks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon.com
is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products.
Terms which are not protectable by themselves, such as a generic term or a merely descriptive term that has not acquired secondary meaning, may become registrable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. An example of such a domain name ineligible for trademark or service mark protection as a generic term, but which currently has a registered U.S. service mark, is "HEARSAY.COM".
Among trademark practitioners there remains a great deal of debate around trademark protection under ICANN
's proposed generic top-level domain name space expansion. World Trademark Review
has been reporting on the at times fiery discussion between trademark owners and domainers.
treaties
, foremost amongst which is the WTO
Agreement on Trade-Related Aspects of Intellectual Property Rights
. TRIPS establishes legal compatibility between member jurisdictions by requiring the harmonization
of applicable laws. For example, Article 15(1) of TRIPS provides a definition for "sign" which is used as or forms part of the definition of "trademark" in the trademark legislation of many jurisdictions around the world.
. This international registration is in turn based upon an application or registration obtained by a trade mark applicant in its home jurisdiction.
The primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in many jurisdictions by filing one application in one jurisdiction with one set of fees, and make any changes (e.g. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process. Furthermore, the "coverage" of the international registration may be extended to additional member jurisdictions at any time.
, whereby registration of a trademark with the Office for Harmonization in the Internal Market
(Trade Marks and Designs) (i.e. OHIM, the trademarks office of the European Union), leads to a registration which is effective throughout the EU as a whole. The CTM system is therefore said to be unitary in character, in that a CTM registration applies indivisibly across all European Union member states. However, the CTM system did not replace the national trademark registration systems; the CTM system and the national systems continue to operate in parallel to each other (see also European Union trade mark law).
If you reside outside the EU, you must have professional representative to the procedures before the OHIM. If you are a European resident, you don't have to have professional representation to file an opposition, however, it is strongly recommended by the OHIM.
One of the tasks of a CTM owner is the monitoring of the later applications whether any of those is similar to his/her earlier trademark. Monitoring is not easy and usually requires professional expertise. To conduct a monitoring there is the so-called Trademark Watching service where it can be checked if someone tries to get registered marks that are similar to the existing marks.
Oppositions should be filed on the standard opposition form in any official language of the European Union, however, the substantive part of the opposition (e.g. the argumentations) can be submitted only in the language of the opposed application, that is one of the working languages of the OHIM, e.g. English, Spanish, German. Worth noting that in most of the cases the opponents file their oppositions in English.
Pursuant to Article 6 bis of the Paris Convention
, countries are empowered to grant this status to marks that the relevant authority considers are 'well known'. In addition to the standard grounds for trade mark infringement (same/similar mark applied same/similar goods or services, and a likelihood of confusion), if the mark is deemed well known it is an infringement to apply the same or a similar mark to dissimilar goods/services where there is confusion, including where it takes unfair advantage of the well-known mark or causing detriment to it.
A well-known trademark does not have to be registered in the jurisdiction to bring a trade mark infringement action (equivalent to bringing a passing off
claim without having to show goodwill and having a lesser burden of proof).
Sign (semiotics)
A sign is understood as a discrete unit of meaning in semiotics. It is defined as "something that stands for something, to someone in some capacity" It includes words, images, gestures, scents, tastes, textures, sounds – essentially all of the ways in which information can be...
or indicator used by an individual, business organization, or other legal entity to identify that the product
Good (economics and accounting)
In economics, a good is something that is intended to satisfy some wants or needs of a consumer and thus has economic utility. It is normally used in the plural form—goods—to denote tangible commodities such as products and materials....
s or services to consumer
Consumer
Consumer is a broad label for any individuals or households that use goods generated within the economy. The concept of a consumer occurs in different contexts, so that the usage and significance of the term may vary.-Economics and marketing:...
s with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark may be designated by the following symbols:
- ™Trademark symbolThe trademark symbol, designated by ™ , is a symbol used to provide notice that the preceding mark is a trademark. Use of this symbol does not mean that the trademark has been registered. Registered trademarks are indicated using the Registered trademark symbol...
(for an unregistered trade markUnregistered trade markAn unregistered trade mark is a trademark which does not benefit from the protection afforded to trade marks through registration.They may however benefit from protection due to other features of the law in relation to trademarks, such as protection for unregistered marks in the United Kingdom...
, that is, a mark used to promote or brand goods) - ℠Service mark symbolThe service mark symbol, designated by ℠ , is a symbol commonly used in the United States to provide notice that the preceding mark is a service mark. This symbol has some legal force, and is typically used for service marks not yet registered with the U.S...
(for an unregistered service markService markA service mark or servicemark is a trademark used in some countries, notably the United States, to identify a service rather than a product. When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. Pat & TM Off" may be used...
, that is, a mark used to promote or brand services) - ®Registered trademark symbolThe registered trademark symbol, designated by ® , is a symbol used to provide notice that the preceding mark is a trademark or service mark that has been registered with a national trademark office...
(for a registered trademark)
A trademark is typically a name, word, phrase, logo
Logo
A logo is a graphic mark or emblem commonly used by commercial enterprises, organizations and even individuals to aid and promote instant public recognition...
, symbol
Symbol
A symbol is something which represents an idea, a physical entity or a process but is distinct from it. The purpose of a symbol is to communicate meaning. For example, a red octagon may be a symbol for "STOP". On a map, a picture of a tent might represent a campsite. Numerals are symbols for...
, design, image, or a combination of these elements. There is also a range of non-conventional trademark
Non-conventional trademark
A non-conventional trademark, also known as a nontraditional trademark, is any new type of trademark which does not belong to a pre-existing, conventional category of trade mark, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of...
s comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
The owner of a registered trademark may commence legal proceedings
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
for trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
to prevent unauthorized use of that trademark. However, in some countries unregistered rights in a sign may also be enforced. These are often known as 'common law' rights. An unregistered sign is usually only protected within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark
Service mark
A service mark or servicemark is a trademark used in some countries, notably the United States, to identify a service rather than a product. When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. Pat & TM Off" may be used...
, particularly in the United States
United States trademark law
Trademarks were traditionally protected in the United States only under State common law, growing out of the tort of unfair competition. As early as 1791, Thomas Jefferson proposed that the marks of sailcloth makers could be protected under the Commerce Clause, but it was not until 1870 that...
.
Fundamental concepts
The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rightExclusive right
In Anglo-Saxon law, an exclusive right is a de facto, non-tangible prerogative existing in law to perform an action or acquire a benefit and to permit or deny others the right to perform the same action or to acquire the same benefit. A "prerogative" is in effect an exclusive right...
s attach to a registered mark, which can be enforced by way of an action
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
for trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
, while in some countries unregistered trademark rights can be enforced pursuant to the common law tort
Tort
A tort, in common law jurisdictions, is a wrong that involves a breach of a civil duty owed to someone else. It is differentiated from a crime, which involves a breach of a duty owed to society in general...
of passing off
Passing off
Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill....
.
It should be noted that trademark rights generally arise out of the use or to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections.
Different goods and services have been classified by the International (Nice) Classification of Goods and Services
International (Nice) Classification of Goods and Services
The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. The latest 9th version of the system groups products into 45 classes , and allows users seeking to trademark a good or service to choose from these classes as appropriate...
into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea of this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.
History
Swords
A sword is a cutting/thrusting weapon made of metal. Sword or swords may also refer to:* Swords, County Dublin, Ireland* Suit of swords, a suit in Latin-suited playing cards and Tarot decks* SWORDS, a ground-based military robot...
in the Roman Empire
Roman Empire
The Roman Empire was the post-Republican period of the ancient Roman civilization, characterised by an autocratic form of government and large territorial holdings in Europe and around the Mediterranean....
are thought of as being the first users of trademarks. Other notable trademarks that have been used for a long time include Löwenbräu
Löwenbräu
Löwenbräu is a German brewery in Munich, Bavaria, Germany that produces a traditional Munich-style beer. It is currently owned by the American-Brazilian-Belgian company Anheuser-Busch InBev. Like other premium German beers, it is brewed according to the German "Reinheitsgebot" dating back to 1516...
, which claims use of its lion mark since 1383, and Stella Artois
Stella Artois
Stella Artois is a 5% ABV lager brewed in Leuven, Belgium since 1926. In the UK, Canada and New Zealand a 4% ABV version is also available.-Production:...
, which claims use since 1366.
Registered trademarks involve registering the trademark with the government. The oldest registered trademarks in various countries include:
- United KingdomUnited KingdomThe United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
: 1876 – The Bass Brewery's Red Triangle for aleAleAle is a type of beer brewed from malted barley using a warm fermentation with a strain of brewers' yeast. The yeast will ferment the beer quickly, giving it a sweet, full bodied and fruity taste...
was the first trademark to be registered under the Trade Mark Registration Act 1875.
- United States: 1884 – A picture of SamsonSamsonSamson, Shimshon ; Shamshoun or Sampson is the third to last of the Judges of the ancient Israelites mentioned in the Tanakh ....
wrestling a lion was registered to Sampson RopeRopeA rope is a length of fibres, twisted or braided together to improve strength for pulling and connecting. It has tensile strength but is too flexible to provide compressive strength...
.
In 1980, there were fewer than ten thousand registered high-tech trademarks in the United States. In 2011, there are more than 300,000.
Symbols
The two symbols associated with U.S. trademarks ™ (the trademark symbolTrademark symbol
The trademark symbol, designated by ™ , is a symbol used to provide notice that the preceding mark is a trademark. Use of this symbol does not mean that the trademark has been registered. Registered trademarks are indicated using the Registered trademark symbol...
) and ® (the registered trademark symbol
Registered trademark symbol
The registered trademark symbol, designated by ® , is a symbol used to provide notice that the preceding mark is a trademark or service mark that has been registered with a national trademark office...
) represent the status of a mark and accordingly its level of protection. While ™ can be used with any common law usage of a mark, ® may only be used by the owner of a mark following registration with the relevant national authority, such as the U.S. Patent and Trademark Office (USPTO or PTO). The proper manner to display either symbol is immediately following the mark in superscript style.
Terminology
Terms such as "mark", "brandBrand
The American Marketing Association defines a brand as a "Name, term, design, symbol, or any other feature that identifies one seller's good or service as distinct from those of other sellers."...
" and "logo
Logo
A logo is a graphic mark or emblem commonly used by commercial enterprises, organizations and even individuals to aid and promote instant public recognition...
" are sometimes used interchangeably with "trademark". "Trademark", however, also includes any device, brand, label, name, signature, word, letter, numerical, shape of goods, packaging, colour or combination of colours, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is registered.
Specialized types of trademark include certification mark
Certification mark
A certification mark on a commercial product indicates five things:* The existence of a legal follow-up or product certification agreement between the manufacturer of a product and an organization with national accreditation for both testing and certification,* Legal evidence that the product was...
s, collective trademarks and defensive trademarks. A trademark which is popularly used to describe a product or service (rather than to distinguish the product or services from those of third parties) is sometimes known as a genericized trademark
Genericized trademark
A genericized trademark is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation as intended by the trademark's holder...
. If such a mark becomes synonym
Synonym
Synonyms are different words with almost identical or similar meanings. Words that are synonyms are said to be synonymous, and the state of being a synonym is called synonymy. The word comes from Ancient Greek syn and onoma . The words car and automobile are synonyms...
ous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark becomes generic.
Registration
Property
Property is any physical or intangible entity that is owned by a person or jointly by a group of people or a legal entity like a corporation...
. Proprietary right
Right
Rights are legal, social, or ethical principles of freedom or entitlement; that is, rights are the fundamental normative rules about what is allowed of people or owed to people, according to some legal system, social convention, or ethical theory...
s in relation to a trademark may be established through actual use in the marketplace
Marketplace
A marketplace is the space, actual, virtual or metaphorical, in which a market operates. The term is also used in a trademark law context to denote the actual consumer environment, ie. the 'real world' in which products and services are provided and consumed.-Marketplaces and street markets:A...
, or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction
Jurisdiction
Jurisdiction is the practical authority granted to a formally constituted legal body or to a political leader to deal with and make pronouncements on legal matters and, by implication, to administer justice within a defined area of responsibility...
. In some jurisdictions, trademark rights can be established through either or both means. Certain jurisdictions generally do not recognize trademarks rights arising through use. If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
proceedings will therefore be limited. In cases of dispute, this disparity of rights is often referred to as "first to file" as opposed to "first to use." Other countries such as Germany offer a limited amount of common law rights for unregistered marks where to gain protection, the goods or services must occupy a highly significant position in the marketplace — where this could be 40% or more market share for sales in the particular class of goods or services.
In the United States the registration process entails several steps prior to a trademark receiving its Certificate of Registration. First, an Applicant, the individual or entity applying for the registration, files an application to register the respective trademark. The application is then placed in line in the order it was received to be examined by an examining attorney for the U.S. Patent and Trademark Office. Second, following a period of anywhere from three to six months the application is reviewed by an examining attorney to make sure that it complies with all requirements in order to be entitled to registration. This review includes procedural matters such as making sure the applicant's goods or services are identified properly. It also includes more substantive matters such as making sure the applicant's mark is not merely descriptive or likely to cause confusion with a pre-existing applied-for or registered mark. If the application runs afoul of any requirement, the examining attorney will issue an office action requiring the applicant to address certain issues or refusals prior to registration of the mark. Third, and after the examination of the mark has concluded with no issues to be addressed or an applicant has responded adequately to an examining attorney's concerns, the application will be published for opposition. During this 30-day period third-parties who may be affected by the registration of the trademark may step forward to file an Opposition Proceeding to stop the registration of the mark. If an Opposition proceeding is filed it institutes a case before the Trademark Trial and Appeal Board to determine both the validity of the grounds for the opposition as well as the ability of the applicant to register the mark at issue. Fourth, provided that no third-party opposes the registration of the mark during the opposition period or the opposition is ultimately decided in the applicant's favor the mark will be registered in due course.
Outside of the United States the registration process is substantially similar to that found in the U.S. save for one notable exception in many countries: registration occurs prior to the opposition proceeding. In short, once an application is reviewed by an examiner and found to be entitled to registration a registration certificate is issued subject to the mark being open to opposition for a period of typically 6 months from the date of registration.
A registered trademark confers a bundle
Bundle of Rights
The bundle of rights is a common way to explain the complexities of property ownership. Teachers often use this concept as a way to organize confusing and sometimes contradictory data about real estate....
of exclusive right
Exclusive right
In Anglo-Saxon law, an exclusive right is a de facto, non-tangible prerogative existing in law to perform an action or acquire a benefit and to permit or deny others the right to perform the same action or to acquire the same benefit. A "prerogative" is in effect an exclusive right...
s upon the registered owner, including the right to exclusive
Exclusive
Exclusive typically means not with other things or not including other things.The terms inclusive and exclusive are contrasting terms, and often appear in the same context to describe contrasting things.Exclusive may refer to:...
use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or "colourfully" similar to the "registered" products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. An example may be a very large multinational brand such as "Sony" where a non-electronic product such as a pair of sunglasses might be assumed to have come from Sony Corporation of Japan despite not being a class of goods that Sony has rights in.
Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction, a quality which is sometimes known as territoriality. However, there is a range of international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction (see International trademark laws below).
Search
In the United States, the USPTO maintains a database of registered trademarks. The database is open to the public; however a licensed attorney may be required to interpret the search results. Furthermore as trademarks are governed by federal law, state law, and common law, a thorough search as to the availability of a mark is very important. In the United States, obtaining a trademark search and relying upon the results of an opinion issued by an attorney may insulate a trademark user from being required to pay treble damages and attorney's fees in a trademark infringement case as it demonstrates that the trademark user performed due diligenceDue diligence
"Due diligence" is a term used for a number of concepts involving either an investigation of a business or person prior to signing a contract, or an act with a certain standard of care. It can be a legal obligation, but the term will more commonly apply to voluntary investigations...
and was using the mark in good faith. The USPTO internally captures more information about trademarks than what they publicly disclose on their official search website. For example, the USPTO collects information about what exactly is shown inside every logo trademark filing.
Trademarks may also be searched on third-party databases, such as LexisNexis
LexisNexis
LexisNexis Group is a company providing computer-assisted legal research services. In 2006 it had the world's largest electronic database for legal and public-records related information...
, Dialog
Dialog (online database)
Dialog is an online information service owned by ProQuest, who acquired it from Thomson Reuters in mid-2008.Dialog was one of the predecessors of the World Wide Web as a provider of information, though not in form. The earliest form of the Dialog system was completed in 1966 under the direction of...
and Compu-Mark.
In Europe and if a community trademark has to be filed, searches have to be conducted with the OHIM (Community Trademark Office) and with the various national offices. An alternative solution is to conduct a trademark search within private databases.
Ability to register
In most systems, a trademark can be registered if it is able to distinguish the goods or services
Trademark distinctiveness
Trademark distinctiveness is an important concept in the law governing trademarks and service marks. A trademark may be eligible for registration, or registrable, if amongst other things it performs the essential trademark function, and has distinctive character...
of a party, will not confuse consumers about the relationship between one party and another, and will not otherwise deceive consumers with respect to the qualities of the product.
Maintaining rights
Trademarks rights must be maintained through actual lawful use of the trademark. These rights will cease if a mark is not actively used for a period of time, normally 5 years in most jurisdictions. In the case of a trademark registration, failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of "non-use". It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential. This is designed to prevent owners from continually being tied up in litigation for fear of cancellation. An owner can at any time commence action for infringement against a third party as long as it had not previously notified the third party of its discontent following third party use and then failed to take action within a reasonable period of time (called acquiescence). The owner can always reserve the right to take legal action until a court decides that the third party had gained notoriety which the owner 'must' have been aware of. It will be for the third party to prove their use of the mark is substantial as it is the onus of a company using a mark to check they are not infringing previously registered rights. In the US, owing to the overwhelming number of unregistered rights, trademark applicants are advised to perform searches not just of the trademark register but of local business directories and relevant trade press. Specialized search companies perform such tasks prior to application.All jurisdictions with a mature trademark registration system provide a mechanism for removal in the event of such non use, which is usually a period of either three or five years. The intention to use a trademark can be proven by a wide range of acts as shown in the "Wooly Bull" and "Ashton v Harlee" cases.
In the U.S., failure to use a trademark for this period of time, aside from the corresponding impact on product quality, will result in abandonment of the mark, whereby any party may use the mark. An abandoned mark is not irrevocably in the public domain
Public domain
Works are in the public domain if the intellectual property rights have expired, if the intellectual property rights are forfeited, or if they are not covered by intellectual property rights at all...
, but may instead be re-registered by any party which has re-established exclusive and active use, and must be associated or linked with the original mark owner. If a court rules that a trademark has become "generic
Genericized trademark
A genericized trademark is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation as intended by the trademark's holder...
" through common use (such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it), the corresponding registration may also be ruled invalid.
For examples, see trademark distinctiveness
Trademark distinctiveness
Trademark distinctiveness is an important concept in the law governing trademarks and service marks. A trademark may be eligible for registration, or registrable, if amongst other things it performs the essential trademark function, and has distinctive character...
.
Unlike other forms of intellectual property (e.g., patents and copyrights) a registered trademark can, theoretically, last forever. So long as a trademark's use is continuous a trademark holder may keep the mark registered with the U.S. Patent and Trademark Office by filing Section 8 Affidavit(s) of Continuous Use as well as Section 9 Applications for renewal, as required.
Specifically, once registered with the U.S. Patent and Trademark Office the owner of a trademark is required to file a Section 8 Affidavit of Continuous Use to maintain the registration between the 5th and 6th year anniversaries of the registration of the mark or during the 6-month grace period following the 6th-year anniversary of the registration. Note, if the Section 8 Affidavit is filed during the 6-month grace period additional fees to file the Affidavit with the U.S. Patent and Trademark Office will apply.
In addition to requirement above, U.S. trademark registrations are also required to be renewed on or about every 10-year anniversary of the registration of the trademark. The procedure for 10-year renewals is somewhat different from that for the 5th-6th year renewal. In brief, registrants are required to file both a Section 8 Affidavit of Continuous Use as well as a Section 9 Application for Renewal every ten years to maintain their registration.
Enforcing rights
The extent to which a trademark owner may prevent unauthorized use of trademarks which are the same as or similar to its trademark depends on various factors such as whether its trademark is registered, the similarity of the trademarks involved, the similarity of the products or services involved, and whether the owner's trademark is well known or, under U.S. law relating to trademark dilutionTrademark dilution
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
, famous.
If a trademark has not been registered, some jurisdictions (especially Common Law
Common law
Common law is law developed by judges through decisions of courts and similar tribunals rather than through legislative statutes or executive branch action...
countries) offer protection for the business
Business
A business is an organization engaged in the trade of goods, services, or both to consumers. Businesses are predominant in capitalist economies, where most of them are privately owned and administered to earn profit to increase the wealth of their owners. Businesses may also be not-for-profit...
reputation
Reputation
Reputation of a social entity is an opinion about that entity, typically a result of social evaluation on a set of criteria...
or goodwill which attaches to unregistered trademarks through the tort
Tort
A tort, in common law jurisdictions, is a wrong that involves a breach of a civil duty owed to someone else. It is differentiated from a crime, which involves a breach of a duty owed to society in general...
of passing off. Passing off may provide a remedy in a scenario where a business has been trading under an unregistered trademark for many years, and a rival business starts using the same or a similar mark.
If a trademark has been registered, then it is much easier for the trademark owner to demonstrate its trademark rights and to enforce these rights through an infringement action. Unauthorized use of a registered trademark need not be intentional in order for infringement to occur, although damages in an infringement lawsuit
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
will generally be greater if there was an intention to deceive.
For trademarks which are considered to be well known, infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner's mark is registered.
A growing area of law relating to the enforcement of trademark rights is secondary liability
Secondary liability
Secondary liability, or indirect infringement, arises when a party materially contributes to, facilitates, induces, or is otherwise responsible for directly infringing acts carried out by another party. The US has statutorily codified secondary liability rules for trademarks and patents; however,...
, which allows for the imputation of liability to one who has not acted directly to infringe a trademark but whose legal responsibility may arise under the doctrines of either contributory or vicarious liability.
Limits and defenses to claims of infringement
Trademark is subject to various defenses, such as abandonment, limitations on geographic scopeTea Rose-Rectanus doctrine
The Tea Rose-Rectanus doctrine or remote, good-faith user doctrine is a common law rule of United States trademark law that determines the geographic scope of rights. The doctrine allows a junior user of a mark that is geographically remote from the senior user of the mark to establish priority...
, and fair use. In the United States, the fair use
Fair use (U.S. trademark law)
In the United States, trademark law includes a fair use defense, sometimes called "trademark fair use" to distinguish it from the better-known fair use doctrine in copyright. As with copyright law, the trademark fair use doctrine is premised in significant part on the First Amendment guarantees of...
defence protects many of the interests in free expression related to those protected by the First Amendment
First Amendment to the United States Constitution
The First Amendment to the United States Constitution is part of the Bill of Rights. The amendment prohibits the making of any law respecting an establishment of religion, impeding the free exercise of religion, abridging the freedom of speech, infringing on the freedom of the press, interfering...
. Fair use may be asserted on two grounds, either that the alleged infringer is using the mark to describe accurately an aspect of its products, or that the alleged infringer is using the mark to identify the mark owner. One of the most visible proofs that trademarks provide a limited right in the U.S. comes from the comparative advertising that is seen throughout U.S. media.
An example of the first type is that although Maytag
Maytag
Maytag Corporation is an American home and commercial appliance company, headquartered in Newton, Iowa, that is a division of the Whirlpool Corporation.-Company history:...
owns the trademark "Whisper Quiet", makers of other products may describe their goods as being "whisper quiet" so long as these competitors are not using the phrase as a trademark.
An example of the second type is that Audi
Audi
Audi AG is a German automobile manufacturer, from supermini to crossover SUVs in various body styles and price ranges that are marketed under the Audi brand , positioned as the premium brand within the Volkswagen Group....
can run advertisements saying that a trade publication has rated an Audi model higher than a BMW
BMW
Bayerische Motoren Werke AG is a German automobile, motorcycle and engine manufacturing company founded in 1916. It also owns and produces the Mini marque, and is the parent company of Rolls-Royce Motor Cars. BMW produces motorcycles under BMW Motorrad and Husqvarna brands...
model, since they are only using "BMW" to identify the competitor. In a related sense, an auto mechanic can truthfully advertise that he services Cadillac
Cadillac
Cadillac is an American luxury vehicle marque owned by General Motors . Cadillac vehicles are sold in over 50 countries and territories, but mostly in North America. Cadillac is currently the second oldest American automobile manufacturer behind fellow GM marque Buick and is among the oldest...
s, and a former Playboy
Playboy
Playboy is an American men's magazine that features photographs of nude women as well as journalism and fiction. It was founded in Chicago in 1953 by Hugh Hefner and his associates, and funded in part by a $1,000 loan from Hefner's mother. The magazine has grown into Playboy Enterprises, Inc., with...
Playmate of the Year can identify herself as such on her website.
Wrongful or groundless threats of infringement
Various jurisdictions have laws which are designed to prevent trademark owners from making wrongful threats of trademark infringement action against other parties. These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies.Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action. In this situation, the party receiving such a threat may seek from the Court a declaratory judgment
Declaratory judgment
A declaratory judgment is a judgment of a court in a civil case which declares the rights, duties, or obligations of one or more parties in a dispute. A declaratory judgment is legally binding, but it does not order any action by a party. In this way, the declaratory judgment is like an action to...
; also known as a declaratory ruling.
Public policy
Trademark law is designed to fulfill the public policyPublic policy
Public policy as government action is generally the principled guide to action taken by the administrative or executive branches of the state with regard to a class of issues in a manner consistent with law and institutional customs. In general, the foundation is the pertinent national and...
objective of consumer protection
Consumer protection
Consumer protection laws designed to ensure fair trade competition and the free flow of truthful information in the marketplace. The laws are designed to prevent businesses that engage in fraud or specified unfair practices from gaining an advantage over competitors and may provide additional...
, by preventing the public from being misled as to the origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the expectations of consumers as to quality and other characteristics.
Trademarks may also serve as an incentive for manufacturers, providers or suppliers to consistently provide quality products or services to maintain their business reputation. Furthermore, if a trademark owner does not maintain quality control
Quality control
Quality control, or QC for short, is a process by which entities review the quality of all factors involved in production. This approach places an emphasis on three aspects:...
and adequate supervision in relation to the manufacture and provision of products or services supplied by a licensee, such "naked licensing" will eventually adversely affect the owner's rights in the trademark. This proposition has, however, been watered down by the judgment of the House of Lords in the case of Scandecor Development AB v. Scandecor Marketing AB et al. [2001] UKHL 21; wherein it has been held that the mere fact that a bare license (equivalent of the United States concept of a naked license) has been granted did not automatically mean that a trademark was liable to mislead.
By the same token, trademark holders must be cautious in the sale of their mark for similar reasons as apply to licensing. When assigning an interest in a trademark, if the associated product or service is not transferred with it, then this may be an "assignment-in-gross" and could lead to a loss of rights in the trademark. It is still possible to make significant changes to the underlying goods or services during a sale without jeopardizing the trademark, but companies will often contract with the sellers to help transition the mark and goods or services to the new owners to ensure continuity of the trademark.
Comparison with patents, designs and copyright
While trademark law seeks to protect indications of the commercial source of products or services, patentPatent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law generally seeks to protect new and useful inventions, and registered designs law generally seeks to protect the look or appearance of a manufactured article. Trademarks, patents and designs collectively form a subset of intellectual property known as industrial property because they are often created and used in an industrial or commercial context.
By comparison, copyright
Copyright
Copyright is a legal concept, enacted by most governments, giving the creator of an original work exclusive rights to it, usually for a limited time...
law generally seeks to protect original literary, artistic and other creative works. Continued active use and re-registration can make a trademark perpetual, whereas copyright usually lasts for the duration of the author's lifespan plus 70 years for works by individuals, and some limited time after creation for works by bodies corporate. This can lead to confusion in cases where a work passes into the public domain
Public domain
Works are in the public domain if the intellectual property rights have expired, if the intellectual property rights are forfeited, or if they are not covered by intellectual property rights at all...
but the character in question remains a registered trademark.
Although intellectual property laws such as these are theoretically distinct, more than one type may afford protection to the same article. For example, the particular design of a bottle may qualify for copyright protection as a non-utilitarian [sculpture], or for trademark protection based on its shape, or the 'trade dress
Trade dress
Trade dress is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers...
' appearance of the bottle as a whole may be protectable. Titles and character names from books or movies may also be protectable as trademarks while the works from which they are drawn may qualify for copyright protection as a whole.
Drawing these distinctions is necessary, but often challenging for the courts and lawyers, especially in jurisdictions where patents and copyrights pass into the public domain
Public domain
Works are in the public domain if the intellectual property rights have expired, if the intellectual property rights are forfeited, or if they are not covered by intellectual property rights at all...
, depending on the jurisdiction. Unlike patents and copyrights, which in theory are granted for one-off fixed terms, trademarks remain valid as long as the owner actively uses and defends them and maintains their registrations with the competent authorities. This often involves payment of a periodic renewal fee.
As a trademark must be used to maintain rights in relation to that mark, a trademark can be 'abandoned' or its registration can be cancelled or revoked if the mark is not continuously used. By comparison, patents and copyrights cannot be 'abandoned' and a patent holder or copyright owner can generally enforce their rights without taking any particular action to maintain the patent or copyright. Additionally, patent holders and copyright owners may not necessarily need to actively police their rights. However, a failure to bring a timely infringement suit or action against a known infringer may give the defendant a defense of implied consent or estoppel
Estoppel
Estoppel in its broadest sense is a legal term referring to a series of legal and equitable doctrines that preclude "a person from denying or asserting anything to the contrary of that which has, in contemplation of law, been established as the truth, either by the acts of judicial or legislative...
when suit is finally brought.
Dilution
A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (e.g., just the word Pepsi
Pepsi
Pepsi is a carbonated soft drink that is produced and manufactured by PepsiCo...
spoken, or on a billboard).
Under trademark law, dilution occurs either when unauthorized use of a mark "blurs" the "distinctive nature of the mark" or "tarnishes it." Likelihood of confusion is not required. 15 U.S.C §§ 1127, 1125(c).
Sale, transfer and licensing
In various jurisdictions a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would "be a fraud upon the public". In the U.S., trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods.Most jurisdictions provide for the use of trademarks to be licensed to third parties. The licensor (usually the trademark owner) must monitor the quality of the goods being produced by the licensee to avoid the risk of trademark being deemed abandoned by the courts. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to quality and the licensor has rights to inspection and monitoring.
Domain names
The advent of the domain name systemDomain name system
The Domain Name System is a hierarchical distributed naming system for computers, services, or any resource connected to the Internet or a private network. It associates various information with domain names assigned to each of the participating entities...
has led to attempts by trademark holders to enforce their rights over domain names that are similar or identical to their existing trademarks, particularly by seeking control over the domain names at issue. As with dilution protection, enforcing trademark rights over domain name owners involves protecting a trademark outside the obvious context of its consumer market, because domain names are global and not limited by goods or service.
This conflict was more easily resolved when the domain name user actually used his website to compete with the trademark owner. Cybersquatting
Cybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
, however, involves no such competition, but instead an unlicensed user registering the trademark as a domain name to pressure a payoff (or other benefit) from the lawful mark owner. Typosquatters
Typosquatting
Typosquatting, also called URL hijacking, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser...
—those registering common misspellings of trademarks as domain names—have also been targeted successfully in trademark infringement suits. Other types of domain name disputes include the so-called "gripe site
Gripe site
A gripe site is a type of website devoted to the critique and or mockery of a person, place, politician, corporation, or institution. They are also known as "complaint" or "sucks" sites...
," which use a registered trademark in a domain such as "[trademark]sucks.com." There are also disputes arising from the subdomain
Subdomain
In the Domain Name System hierarchy, a subdomain is a domain that is part of a larger domain.- Overview :The Domain Name System has a tree structure or hierarchy, with each node on the tree being a domain name. A subdomain is a domain that is part of a larger domain, the only domain that is not...
, when a third party uses a protected mark in a web address such as "[trademark].[legitimatedomain].com."
This clash of the new technology with preexisting trademark rights resulted in several high profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trademark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so initial interest confusion
Initial Interest Confusion
Initial Interest Confusion is a legal doctrine under trademark law that permits a finding of infringement when there is temporary confusion that is dispelled before the purchase is made. Generally, trademark infringement is based on the likelihood of confusion for a consumer in the marketplace...
was a concept applied instead. Initial interest confusion refers to customer confusion that creates an initial interest in a competitor's "product" (in the online context, another party's website). Even though initial interest confusion is dispelled by the time any actual sales occur, it allows a trademark infringer to capitalize on the goodwill associated with the original mark.
Several cases have wrestled with the concept of initial interest confusion. In Brookfield Commc'ns v. West Coast Ent'mt the court found initial interest confusion could occur when a competitor's trademarked terms were used in the HTML
HTML
HyperText Markup Language is the predominant markup language for web pages. HTML elements are the basic building-blocks of webpages....
metatags of a website, resulting in that site appearing in the search results when a user searches on the trademarked term. In Playboy v. Netscape, the court found initial interest confusion when users typed in Playboy's trademarks into a search engine, resulting in the display of search results alongside unlabeled banner ads, triggered by keywords that included Playboy's marks, that would take users to Playboy's competitors. Though users might ultimately realize upon clicking on the banner ads that they were not Playboy-affiliated, the court found that the competitor advertisers could have gained customers by appropriating Playboy's goodwill since users may be perfectly happy to browse the competitor's site instead of returning the search results to find the Playboy sites.
In Lamparello v. Falwell
Lamparello v. Falwell
Lamparello v. Falwell, 420 F.3d 309, is a legal case heard by the United States Court of Appeals for the Fourth Circuit concerning cybersquatting and trademark infringement...
, however, the court clarified that a finding of initial interest confusion is contingent on financial profit from said confusion, such that, if a domain name confusing similar to a registered trademark is used for a non-trademark related website, the site owner will not be found to have infringed where he does not seek to capitalize on the mark's goodwill for his own commercial enterprises.
In addition, courts have upheld the rights of trademark owners with regard to commercial use of domain names, even in cases where goods sold there legitimately bear the mark. In the landmark decision Creative Gifts, Inc. v. UFO, 235 F.3d 540 (10th Cir. 2000)(New Mexico), defendants had registered the domain name "Levitron.com" to sell goods bearing the trademark "Levitron" under an at-will license from the trademark owner. The 10th Circuit affirmed the rights of the trademark owner with regard to said domain name, despite arguments of promissory estoppel.
Most courts particularly frowned on cybersquatting, and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trademarks) to reach into the area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically, and to provide explicit remedies against cybersquatters.
In the US, the legal situation was clarified by the Anticybersquatting Consumer Protection Act
Anticybersquatting Consumer Protection Act
The Anticybersquatting Consumer Protection Act ', 15 U.S.C. § 1125, is an American law enacted in 1999 and established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name...
, an amendment to the Lanham Act, which explicitly prohibited cybersquatting. It defines cybersquatting as "(occurring) when a person other than the trademark holder registers the domain name of a well-known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or using the domain name to divert business from the trademark holder to the domain name holder". The provision states that "[a] person shall be liable in a civil action by the owner of the mark ... if, without regard to the goods or services of the person, that person (i) had a bad faith intent to profit from the mark ...; and registers, traffics in, or uses domain name [that is confusingly similar to another's mark or dilutes another's mark]".
This international legal change has also led to the creation of ICANN
ICANN
The Internet Corporation for Assigned Names and Numbers is a non-profit corporation headquartered in Marina del Rey, California, United States, that was created on September 18, 1998, and incorporated on September 30, 1998 to oversee a number of Internet-related tasks previously performed directly...
Uniform Domain-Name Dispute-Resolution Policy
Uniform Domain-Name Dispute-Resolution Policy
The Uniform Domain-Name Dispute-Resolution Policy is a process established by the Internet Corporation for Assigned Names and Numbers for the resolution of disputes regarding the registration of internet domain names...
(UDRP) and other dispute policies for specific countries (such as Nominet UK
Nominet UK
Nominet UK is the .uk domain name registry in the United Kingdom, which was founded by Dr Willie Black and five others on 14 May 1996 when its predecessor, the 'Naming Committee' was unable to deal with the volume of registrations then being sought under the .uk domain. Nominet is a non-profit...
's Dispute Resolution Service) which attempt to streamline the process of resolving who should own a domain name (without dealing with other infringement issues such as damages). This is particularly desirable to trademark owners when the domain name registrant may be in another country or even anonymous.
Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trademarks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names.
As with other trademarks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon.com
Amazon.com
Amazon.com, Inc. is a multinational electronic commerce company headquartered in Seattle, Washington, United States. It is the world's largest online retailer. Amazon has separate websites for the following countries: United States, Canada, United Kingdom, Germany, France, Italy, Spain, Japan, and...
is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products.
Terms which are not protectable by themselves, such as a generic term or a merely descriptive term that has not acquired secondary meaning, may become registrable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. An example of such a domain name ineligible for trademark or service mark protection as a generic term, but which currently has a registered U.S. service mark, is "HEARSAY.COM".
Among trademark practitioners there remains a great deal of debate around trademark protection under ICANN
ICANN
The Internet Corporation for Assigned Names and Numbers is a non-profit corporation headquartered in Marina del Rey, California, United States, that was created on September 18, 1998, and incorporated on September 30, 1998 to oversee a number of Internet-related tasks previously performed directly...
's proposed generic top-level domain name space expansion. World Trademark Review
World Trademark Review
World Trademark Review is a website and magazine covering the commercial and international practice of trademark law. Subscribers receive a print magazine once every other month and a daily email newsletter featuring news stories, feature articles and legal updates from a panel of trademark...
has been reporting on the at times fiery discussion between trademark owners and domainers.
International law
It is important to note that although there are systems which facilitate the filing, registration or enforcement of trademark rights in more than one jurisdiction on a regional or global basis (e.g. the Madrid and CTM systems, see further below), it is currently not possible to file and obtain a single trademark registration which will automatically apply around the world. Like any national law, trademark laws apply only in their applicable country or jurisdiction, a quality which is sometimes known as "territoriality".Territorial application
The inherent limitations of the territorial application of trademark laws have been mitigated by various intellectual propertyIntellectual property
Intellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
treaties
Treaty
A treaty is an express agreement under international law entered into by actors in international law, namely sovereign states and international organizations. A treaty may also be known as an agreement, protocol, covenant, convention or exchange of letters, among other terms...
, foremost amongst which is the WTO
World Trade Organization
The World Trade Organization is an organization that intends to supervise and liberalize international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade , which commenced in 1948...
Agreement on Trade-Related Aspects of Intellectual Property Rights
Agreement on Trade-Related Aspects of Intellectual Property Rights
The Agreement on Trade Related Aspects of Intellectual Property Rights is an international agreement administered by the World Trade Organization that sets down minimum standards for many forms of intellectual property regulation as applied to nationals of other WTO Members...
. TRIPS establishes legal compatibility between member jurisdictions by requiring the harmonization
Harmonisation of law
Harmonisation of law comes from the root word harmonise which under the OED means “make or form a pleasing or consistent whole”. In the case of harmonisation of law, the aim is to make a consistent whole of law...
of applicable laws. For example, Article 15(1) of TRIPS provides a definition for "sign" which is used as or forms part of the definition of "trademark" in the trademark legislation of many jurisdictions around the world.
Madrid system
The major international system for facilitating the registration of trademarks in multiple jurisdictions is commonly known as the "Madrid system". Madrid provides a centrally administered system for securing trademark registrations in member jurisdictions by extending the protection of an "international registration" obtained through the World Intellectual Property OrganizationWorld Intellectual Property Organization
The World Intellectual Property Organization is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world"....
. This international registration is in turn based upon an application or registration obtained by a trade mark applicant in its home jurisdiction.
The primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in many jurisdictions by filing one application in one jurisdiction with one set of fees, and make any changes (e.g. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process. Furthermore, the "coverage" of the international registration may be extended to additional member jurisdictions at any time.
Trademark Law Treaty
The Trademark Law Treaty establishes a system pursuant to which member jurisdictions agree to standardize procedural aspects of the trademark registration process. It is not necessarily respective of rules within individual countries.Community Trade Mark system
The Community Trade Mark system is the trademark system which applies in the European UnionEuropean Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
, whereby registration of a trademark with the Office for Harmonization in the Internal Market
Office for Harmonization in the Internal Market
The Office for Harmonization in the Internal Market , or OHIM is the trademark and designs registry for the internal market of the European Union. It is based in Alicante, Spain, and its president is António Campinos.- Task :...
(Trade Marks and Designs) (i.e. OHIM, the trademarks office of the European Union), leads to a registration which is effective throughout the EU as a whole. The CTM system is therefore said to be unitary in character, in that a CTM registration applies indivisibly across all European Union member states. However, the CTM system did not replace the national trademark registration systems; the CTM system and the national systems continue to operate in parallel to each other (see also European Union trade mark law).
If you reside outside the EU, you must have professional representative to the procedures before the OHIM. If you are a European resident, you don't have to have professional representation to file an opposition, however, it is strongly recommended by the OHIM.
One of the tasks of a CTM owner is the monitoring of the later applications whether any of those is similar to his/her earlier trademark. Monitoring is not easy and usually requires professional expertise. To conduct a monitoring there is the so-called Trademark Watching service where it can be checked if someone tries to get registered marks that are similar to the existing marks.
Oppositions should be filed on the standard opposition form in any official language of the European Union, however, the substantive part of the opposition (e.g. the argumentations) can be submitted only in the language of the opposed application, that is one of the working languages of the OHIM, e.g. English, Spanish, German. Worth noting that in most of the cases the opponents file their oppositions in English.
Well-known status
Well-known trade mark status is commonly granted to famous international trade marks in less-developed legal jurisdictions.Pursuant to Article 6 bis of the Paris Convention
Paris convention
The Paris convention might refer to:* The Paris Convention on Third Party Liability in the Field of Nuclear Energy* The Paris Convention for the Protection of Industrial Property...
, countries are empowered to grant this status to marks that the relevant authority considers are 'well known'. In addition to the standard grounds for trade mark infringement (same/similar mark applied same/similar goods or services, and a likelihood of confusion), if the mark is deemed well known it is an infringement to apply the same or a similar mark to dissimilar goods/services where there is confusion, including where it takes unfair advantage of the well-known mark or causing detriment to it.
A well-known trademark does not have to be registered in the jurisdiction to bring a trade mark infringement action (equivalent to bringing a passing off
Passing off
Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill....
claim without having to show goodwill and having a lesser burden of proof).
See also
- Intellectual property organizations
- International Trademark AssociationInternational Trademark AssociationThe International Trademark Association is a worldwide not-for-profit association of member companies and firms that supports and advances trademarks and intellectual property as elements of fair and effective global commerce.- History :...
- List of generic and genericized trademarks
- Merchant's markMerchant's markMerchants' marks are as old as the sealings of the third millennium BCE found in Sumer that originated in the Indus Valley. Impressions of cloth, strings and other packing material on the reverse of tags with seal impressions indicate...
- Office for Harmonization in the Internal Market
- Service markService markA service mark or servicemark is a trademark used in some countries, notably the United States, to identify a service rather than a product. When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. Pat & TM Off" may be used...
s - Trade dressTrade dressTrade dress is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers...
- Trademark classificationTrademark classificationA trademark classification is a way the trademark examiners and applicants' trademark attorneys arrange documents, such as trademark and service mark applications, according to the description and scope of the types of goods or services to which the marks apply...
- Trademark Counterfeiting Act of 1984Trademark Counterfeiting Act of 1984The Trademark Counterfeiting Act of 1984 is a United States federal law that amended the federal criminal code to make it a federal offense to violate the Lanham Act by the intentional use of a counterfeit trademark or the unauthorized use of a counterfeit trademark...
- Trademark dilutionTrademark dilutionTrademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
- Trademark symbolTrademark symbolThe trademark symbol, designated by ™ , is a symbol used to provide notice that the preceding mark is a trademark. Use of this symbol does not mean that the trademark has been registered. Registered trademarks are indicated using the Registered trademark symbol...
- United States Patent and Trademark OfficeUnited States Patent and Trademark OfficeThe United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
- Board of Patent Appeals and InterferencesBoard of Patent Appeals and InterferencesThe Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
- Board of Patent Appeals and Interferences
- Unregistered trademark
- World Intellectual Property Organization
Law
- Australian trade mark law
- Canadian trade-mark lawCanadian trade-mark lawCanadian trade-mark law provides protection to marks statutorily under the Canadian Trade-marks Act and also at common law. Trade-mark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark...
- European Union trade mark law
- Hong Kong trade mark lawHong Kong trademark lawThe trade mark law of Hong Kong is based on the Trade Marks Ordinance Cap. 559, which came into force on 4 April 2003 and repealed the Trade Mark Ordinance Cap 43. The system established by this legislation is entirely separate to the system used in the People's Republic of China, pursuant to the...
- Japanese trademark lawJapanese trademark lawJapanese trademark law is mainly enacted by of 1959, while protection for unregistered trademarks is carried out by .Under Japanese trademark law, only registered trademarks establish a trademark right , and examination procedure is necessary for trademarks to be registered...
- People's Republic of China's trademark lawPeople's Republic of China's trademark lawThe system of trademark law in mainland China is administered by the China Trade Mark Office or CTMO...
- Philippine Trademark LawPhilippine Trademark LawR.A. 8293, otherwise known as the Intellectual Property Code, defines a trademark as “any visible sign capable of distinguishing goods”. Early jurisprudence has taken it to mean “a sign, device or mark by which the articles produced or dealt in by a particular person or organization are...
- United Kingdom trade mark lawUnited Kingdom trade mark lawA trademark is a way for one party to distinguish themselves from another. In the business world, a trademark provides a product or organisation with an identity which cannot be imitated by its competitors....
- United States trademark lawUnited States trademark lawTrademarks were traditionally protected in the United States only under State common law, growing out of the tort of unfair competition. As early as 1791, Thomas Jefferson proposed that the marks of sailcloth makers could be protected under the Commerce Clause, but it was not until 1870 that...
Non-standard variations
- Certification markCertification markA certification mark on a commercial product indicates five things:* The existence of a legal follow-up or product certification agreement between the manufacturer of a product and an organization with national accreditation for both testing and certification,* Legal evidence that the product was...
s - Chartered markChartered markIn the USA, a chartered mark is a trademark or service mark which is given special statutory protection separate from the usual registration of trade marks and service marks. A chartered mark, in effect, is a type of trademark/servicemark in which the organization is granted the mark "by charter",...
s - Collective trademarks
- Defensive trademarks
- Electronic registration markElectronic registration markAn electronic registration mark is a proposed category of trademark that would restrict the use of trademarked words and phrases in online advertising....
s - Geographical indicationGeographical indicationA geographical indication is a name or sign used on certain products which corresponds to a specific geographical location or origin...
- Protected designation of originProtected designation of originProtected Geographical Status is a legal framework defined in European Union law to protect the names of regional foods. Protected Designation of Origin , Protected Geographical Indication and Traditional Speciality Guaranteed are distinct regimes of geographical indications within the framework...
Non-conventional and non-traditional examples
- Colour trademarkColour trademarkA colour trademark is a non-conventional trademark where at least one colour is used to perform the trademark function of uniquely identifying the commercial origin of products or services....
s - Hologram trademarkHologram trademarkA hologram trademark is a non-conventional trademark where a hologram is used to perform the trademark function of uniquely identifying the commercial origin of products or services....
s - List of fictional brands
- Sound trademarkSound trademarkA sound trademark is a non-conventional trademark where sound is used to perform the trademark function of uniquely identifying the commercial origin of products or services....
s
Other
- Company Names TribunalCompany Names TribunalThe Company Names Tribunal was created on the 1st October 2008 in the United Kingdom and is a direct result of the coming into force of Section 69 of the Companies Act 2006...
- Copyright infringementCopyright infringementCopyright infringement is the unauthorized or prohibited use of works under copyright, infringing the copyright holder's exclusive rights, such as the right to reproduce or perform the copyrighted work, or to make derivative works.- "Piracy" :...
- Entertainment lawEntertainment lawEntertainment law or media law is a term for a mix of more traditional categories of law with a focus on providing legal services to the entertainment industry. The principal areas of Entertainment Law overlap substantially with the well-known and conventional field of intellectual property law...
- Genericized trademarkGenericized trademarkA genericized trademark is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation as intended by the trademark's holder...
s - Ghost markGhost markGhost marks are trade marks which closely simulate ordinary words or phrases used in the course of trade, and which are not intended to be used as genuine trade marks.In the case of Imperial Group v...
s - Intellectual propertyIntellectual propertyIntellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
- Madrid systemMadrid systemFor the Madrid Protocol relating to mining in the Antarctic see Protocol on Environmental Protection to the Antarctic TreatyThe Madrid system for the international registration of marks, also conveniently known as the Madrid System, is the primary international system for facilitating the...
- Proper adjectiveProper adjectiveIn English usage, a proper adjective is an adjective that takes an initial capital letter. A common adjective is an adjective that is not a proper adjective...
- Trademark attorneyTrademark attorneyA trademark attorney is a person who is qualified to act in matters involving trademark law and practice and provide legal advice on trade mark and design matters....
External links
- Directory of trade names in Webster's Online Dictionary - The Rosetta Edition
- Trademark Fact Sheets by the International Trademark AssociationInternational Trademark AssociationThe International Trademark Association is a worldwide not-for-profit association of member companies and firms that supports and advances trademarks and intellectual property as elements of fair and effective global commerce.- History :...
- Patent and Trademark Information from UCB Libraries GovPubs
- USPTO.gov US anti-piracy and IP resources for small business
- Canadian Trade-marks Database at the Canadian Intellectual Property Office
- Industrial Property Digital Library (IPDL) Japan, National Center for Industrial property Information and training(INPIT)
- World Trademark Review magazine, a website and magazine dedicated to trademark law and practice