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A trademark is a brand identification for a product or service, the latter technically called a "service mark." The mark can be written text, text in a particular stylized form or a graphic symbol. Company names and products are often registered with the U.S. Patent & Trademark Organization (USPTO) to help ensure their legal usage. For more information, visit www.uspto.gov.
We Are Not a Source of Trademark Registrations
The purpose of this Encyclopedia is to provide a meaningful definition of computer science, telecommunications, semiconductor and electronics terms and related products, but it is not meant to be a source of trademark registration information. When we know of an origin of a term, we state it. There are thousands of terms in this database that do not include a lineage, because we either did not know of it at the time of writing or felt it was not pertinent.
We Believe Everything Is a Trademark
We believe that every name of a product is a trademark of its respective organization. If a company creates a name for its product and continues to use it, it is a de facto trademark whether or not it is registered. Among other legal reasons, registration serves to officially document how long a name has been in use.
Contact the Company
If a particular technology in this database is attributed to an organization, we do not know if it is a de facto or de jure trademark of that organization. To find out trademark information about a product in this publication, please contact the legal counsel of the organization that is mentioned as its creator. See copyright.
A symbol, word, phrase, logo, or combination of these that legally distinguishes one company's product from any others. Any infringement on a trademark is illegal and therefore grounds for the company owning the trademark to sue the infringing party.
Investopedia Says:
A good example of a popular trademark is Nike's swoosh. If another company tried to confuse consumers by using a symbol that looked like the swoosh, that company would be infringing on the Nike's trademark rights. Nike would therefore has grounds to sue.
Another trademarked logo that is globally recognized is Coca-Cola's wave.
Related Links:
We go over how to determine whether a measure of this important but hard-to-price intangible asset is justified. Can You Count On Goodwill?
Distinctive name, symbol, motto, or emblem that identifies a product, service, or firm. In the United States, trademark rights-the right to prevent competitors from using similar marks in selling or advertising-arise out of use; that is, registration is not essential to establish the legal existence of a mark. A trademark registered with the U.S. Patent and Trademark Office is good for 10 years, renewable as long as used. Products may be both patented and protected by trademark, the advantage being that when the patent runs out, exclusivity can be continued indefinitely with the trademark. A trademark is classified on a Balance Sheet as an Intangible Asset.
Although, like land, trademarks have an indefinite life and cannot technically be amortized, in practice accountants do amortize trademarks over their estimated life, not to exceed 40 years.
Identification mark, as defined by the Lanham Trade-Mark Act of 1946 (effective 1947): "names, symbols, titles, designations, slogans, character names, and distinctive features emphasized in advertising . . . " used by manufacturers, advertisers, and merchants to identify products and to distinguish them from competitive products. Registration of trademarks is handled by the U.S. Patent Office subject to the provisions of the Lanham Trade Mark Act. Under this act, trademarks are protected from infringement by competitors. Trademarks also protect the public, so that consumers can feel confident that, in purchasing a particular product with a known trademark, they will receive the product they desire. There are three basic types of trademarks: brand names, corporate or store names, and symbols. Some other marks, such as certification marks (that certify quality), service marks (that identify services rather than products), and collective marks (that signify organization membership), are also considered trademarks, since they are essentially identifying marks as well, and these are also protected. Trademarks may be registered on a state or federal level, as dictated by the geographical scope of the business. Federal trademarks tend to be more costly and time-consuming to obtain. At the federal level, there are two types of trademarks. Primary trademarks, such as the Nike swoosh, are arbitrary, fanciful, or suggestive and are fully protected under the law. Supplemental trademarks are descriptive or generic and are granted a lesser level of protection. Xerox has exercised vigilance in keeping its trademark from becoming a generic term for photocopying.
Insignia or logo that distinguishes one maker's goods from all others; any mark, word, letter, number, design, picture, or combination thereof in any form that is adopted and used by a person to denominate goods that he makes, is affixed to the goods, and is neither a common nor generic name for the goods nor a picture of them, nor is merely descriptive of the goods. Protection from Infringement upon a trademark is afforded by the common-law action for unfair competition.
Trademarks or marks are words, symbols, designs, combinations of letters or numbers, or other devices that identify and distinguish products and services in the marketplace. When trademarks are presented to the public via advertising, marketing, trade shows, or other means, they become one of a company's most valuable assets—potential customers identify a company by its trademark. Because certain trademarks immediately create an image of quality goods and services to potential buyers, they are valuable assets that should be protected.
When trademarks are registered at the state, federal, or international levels, their owners are provided the maximum legal protection for company names and/or company products. Thus, in creating or selecting company names and trademarks, a major concern is to design names and trademarks that may be registered with U.S. Patent Office. Today, the feasibility of designing names for products and services as well as trademarks for them is not likely because millions of trademarks are already registered.
The creation of trademarks involves the development of symbols or other devices to identify products and services in the marketplace. Guidelines exist for creating trademarks. Individuals who are developing trademarks must avoid generically descriptive and misleading terms as well as foreign translations. As soon as a tentative trademark has been developed, its creators should consult a patent attorney for assistance making it sufficiently distinctive to be registrable.
After the distinctive trademark has been de signed, the creators need to ascertain that it is available for use; that is, it should not be currently used by another company. Thus, a trade mark search is recommended by a company specializing in trade and service mark law. Once the availability of the proposed trademark has been certified, applications and related artwork are filed with the U.S. Patent Office. On receipt of the application, examiners in the Patent Office con duct a search to validate that the proposed trade mark is not confusingly similar to previously registered trademarks and is thus usable. To receive a filing registration date, the owner must provide all of the following: (1) a written application form; (2) a drawing of the mark on a separate piece of paper; (3) the required filing fee; and (4) if the application is filed based on prior use of the mark in commerce, three specimens for each class of goods or services. The specimens must show actual use of the mark with the goods or services. The specimens may be identical or they may be examples of three different uses showing the same mark.
If the Patent Office search does not yield any conflicting trademarks and the proposed trademark is deemed registrable, it is published for opposition in the Patent Office's Official Gazette. Anyone who believes that a company may be damaged by the registration of the proposed trademark has an opportunity to challenge its registration. If no objection to the proposed trademark is filed, then the registration is allowed and issued. Thus, the trademark is distinctive and the may be used after it. Once the trademark has been issued by the Patent Office, its owners need to watch for inappropriate use of it. In addition, trademark owners need to monitor proposed trademark registrations for similar trademarks.
Trademark maintenance involves periodic filing of documents with the Patent Office to keep the registration active. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is ten years, with ten-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled. A U.S. registration provides protection only in the United States and its territories. The owner of a mark who wishes to protect it in other countries must seek protection in each country separately under the relevant laws. The U.S. Patent Office cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.
[Article by: RANDY L. JOYNER]
A word, symbol, or device assigned to a product by its manufacturer, possibly registered, as a part of its identity.
For more information on trademark, visit Britannica.com.
Trademarks are words or symbols used on goods to indicate source. Merchants and artisans have used trademarks for centuries; the medieval trademark not only allowed artisans to take credit for their work but also permitted guilds to control quality. English common law (the law of court decisions rather than statutes) protected trademarks beginning in the seventeenth century. The colonists brought this law with them from England. George Washington, in 1772, sought to protect the mark "G. Washington" for use on flour. The purpose of trademark law was to prevent consumer deception as to source. This meant that trademarks were local and goods-specific, as was most trade at the time. A trademark of "Washington's" for flour in Virginia would not extend to "Washington's" on silverware or to "Washington's," even on flour, outside Virginia.
Through the nineteenth century, trade became less local, and a system of federal registration was created in 1870. This system, held unconstitutional in 1879 in a series of Supreme Court decisions collectively known as the Trademark Cases, was replaced in 1881, and then in 1905 with a federal trademark registration statute restricted to marks used in interstate commerce, thus rendering it constitutionally valid. The federal scheme became more important during the twentieth century with the rise of truly national commerce and advertising combined with the judiciary's generous views as to what constitutes interstate commerce. Today, trademark law is increasingly governed by the federal Lanham Act, passed in 1946 and amended in 1988, though state law remains important. Unlike patents and copyrights, trademarks have no fixed duration. Trademarks are more valuable than ever; some, like Coca-Cola, are certainly worth tens of millions of dollars.
Bibliography
Chisum, Donald S., and Michael A. Jacobs. Understanding Intellectual Property Law. New York: Matthew Bender, 1996.
McCarthy, J. Thomas. McCarthy on Trademarks and Unfair Competition. 4th ed. St. Paul, Minn.: West Group, 1998.
Bibliography
See M. Wright, Inventions, Patents, and Trade-marks (2d ed. 1933); P. Meinhardt and K. Havelock, Concise Trade Mark Law and Practice (1983).
Distinctive symbols of authenticity through which the products of particular manufacturers or the salable commodities of particular merchants can be distinguished from those of others.
A trademark is a device, word or combination of words, or symbol that indicates the source or ownership of a product or service. A trademark can be a name, such as Adidas, or a symbol, such as McDonald's golden arches, or it can be a combination of the two, such as when the NIKE name is written with the "swoosh" symbol beneath it. In very limited cases, a shape or even a distinctive color can become a trademark.
People rely on trademarks to make informed decisions about the products they buy. A trademark acts as a guarantee of the quality and origin of a particular good. A competing manufacturer may not use another company's trademark. The owner of a trademark may challenge any use of the mark that infringes upon the owner's rights.
The presence of trademark protection for the name or logo of a company or product is often indicated by the small symbol of an R in a circle placed near the trademark. The R means that the mark is a registered trademark and is a warning that the law prevents unauthorized use of it. A party may indicate that it is claiming rights to a particular mark by displaying a TM rather than an R symbol. Marks bearing the TM symbol are not registered, but the presence of the symbol shows an intent to register.
Origins and Development of Trademark Law
Trademark law in the United States is governed by the Trademark Act of 1946, also known as the Lanham Act (15 U.S.C.A. § 1051 et seq). The Lanham Act defines trademarks as including words, names, symbols, or combinations thereof that a person uses or intends to use in commerce to distinguish his or her goods from those made or sold by another. Potential trademarks are categorized by the functions they perform. Within trademark law are several specialized terms used to categorize marks that may be subject to protection. The categories are form, mode of use, and, most commonly, strength. The four subcategories of strength are generic, descriptive, suggestive, and arbitrary or fanciful.
A generic name is the common name for a product and will never be considered a trademark. Shoe, ball, hat, and lightbulb are all generic product names. Some marks that do not begin as generic may later become generic if the public adopts the mark as the general name for that product. Examples of marks that were not originally generic but later became so are cellophane and aspirin. Generic marks are not "strong" because they are not distinctive. To give trademark status to the generic or common name of a product would prevent all other manufacturers of the product from identifying it. To prevent that from occurring, granting trademark status to the generic name of a product is prohibited.
A descriptive term tells the consumer something about the product and may only become a trademark after it has acquired secondary meaning. This occurs after a period of time during which the term's association with that product is exclusive. This acquisition of secondary meaning is sufficient to make a mark distinct, meaning that in the eyes of consumers it has come to represent that products bearing the mark come from a particular source. The mark "Brooklyn Dodgers" is an example of a descriptive mark that is exclusively associated with a professional baseball team formerly from New York.
A suggestive term, rather than describing the product, merely makes a subtle suggestion about the type of product and its qualities. It requires consumers to use their imaginations to make the intellectual jump between the suggestion and the actual product. For those reasons, it can be a trademark immediately upon use. Examples of suggestive marks are Orange Crush (orange-flavored soft drink), Playboy (sexually oriented magazine for men), and Ivory (white soap).
When distinguishing between descriptive and generic terms, courts try to determine the viewpoint of the prospective consumer. Courts look for the meaning that the buyer of a product assigns to the contested word. Courts may also look at the term as used by dictionaries, third parties, trademark owners, texts, patents, newspapers, literature, and surveys. Use of a term as a common name indicates that the word may be the generic name of a product.
The strongest marks are arbitrary and fanciful marks, which need not acquire secondary meaning. They are strong because they bear little or no relationship to the products with which they are affiliated, and thus their use is not unfair to others trying to compete in the marketplace with similar products. Arbitrary marks are common words used in an uncommon way and are used in connection with the goods in a way that does not describe the goods or suggest anything about them. Examples include Camels in reference to cigarettes and Dial as the name of a brand of soap. Fanciful words, on the other hand, are invented and (at least at the time they are first applied to the goods) have no dictionary meaning. Examples of fanciful marks are Kodak, Exxon, and Rolex.
These considerations force a producer to select or create a symbol or name for its product that is suitable for trademark protection. A producer labors to create a good name for a product, and a protected trademark prevents competitors from unfairly capitalizing on the reputation of that name. When trying to decide what mark is appropriate, the potential trademark owner should keep in mind a fundamental rule of trademark selection: in most situations, one will not be allowed to use a trademark that another entity already uses. Before an entity incorporates under a certain name, or attempts to sell a service or product bearing a particular name, it should conduct a search or hire an attorney to investigate prior or existing use of the name. Those companies that fail to conduct this kind of a search or blatantly ignore existing use of a trademark are likely to face a lawsuit by any existing owner of the mark. Such a lawsuit may lead to a court order to stop any infringing use and an award of damages to the holder of the mark.
Uniqueness is a major consideration to the potential trademark owner, regardless of whether the mark is descriptive, suggestive, and arbitrary or fanciful. The fewer unique characteristics a mark possesses, the less legal protection it receives. The potential trademark owner must consider whether others need to use a particular mark in conjunction with a product in order to compete. A unique mark that bears little relationship to the product is preferred over a mark that is more generic.
A company has a better chance of procuring protection for a mark when, by using the mark, it is the first to cause consumers to see an association between the mark and the product.
The Lanham Act distinguishes trademarks from trade names and service marks and also addresses certification marks and collective marks. A service mark is used to identify and distinguish the services of one company from another, such as Sears for retail stores, and American Express for credit cards. A trade name or commercial name distinguishes and identifies a business. The same name or portion of a name may also serve as a trademark, trade name, or service mark. An example is the name Ford Motor Company, which is the trade name of a company that builds and sells cars and trucks that bear the trademark "Ford." In short, trademarks apply to products, service marks to services, and trade names to businesses. Certification marks endorse products and certify approval of their origin, quality, or authenticity. A certification mark is not the property of the maker of the products upon which the mark will be affixed. Examples are the Union Label in garments and various seals of approval. When the provider of goods or services belongs to an association, it often advertises or attaches a collective mark to announce that relationship. The mark is used on products or services not provided by the owner of the mark, typically as a symbol guaranteeing quality and taking advantage of the supposed benefits to the consumer that stem from the product's association with the owner of the mark.
Trademark Registration
Traditionally, trademark rights had depended on prior use, but since 1988 a party with a genuine intent to use a mark may apply for trademark registration. The applicant must intend to use the mark in commerce and must intend to do so in order to sell a product, not merely to reserve rights for future use.
Registration begins with application to the commissioner of patents and trademarks in the Patent and Trademark Office. Registration of a mark means that others will be presumed to know that the mark is owned and protected. By itself, registration is considered evidence that the registrant has ownership and that the registration is valid.
Registration benefits the trademark owner because it suggests that the registrant did everything necessary to protect its mark. While trademark rights actually stem from use, a party may have difficulty convincing a court that it had good reasons to not register a mark for which it now claims a protected right. This is particularly so when a claimed symbol's status as a trademark is uncertain, such as in a dispute over the design of a product as a trademark.
One may apply with either the principal register or supplemental register of the Patent and Trademark Office. The principal register is for arbitrary, fanciful, suggestive, or descriptive marks that have acquired secondary meaning or distinctiveness. The supplemental register is for descriptive terms capable of acquiring secondary meaning. Once a mark establishes secondary meaning, it can be transferred to the principal register.
Registration with the principal register is preferable to supplemental registration for many reasons. Principal registration is proof that the mark is valid, registered, and the intellectual property of the registrant, which has exclusive rights to use the mark in commerce. Further, a registered mark is presumed to have been in continuous use since the application filing date. After five years of continuous use, a registered mark may not be contested. Registration with the principal register means that a potential infringer will be considered to know about the registrant's claim of trademark ownership. The owner of a mark registered with the principal register has the right to bring suit in federal court. Those who counterfeit registered marks face criminal and civil penalties. The owner of a trademark that registers with the principal register and deposits the registration with the U.S. Customs Service can prevent goods bearing infringing marks from being imported.
A mark on the supplemental register may become a trademark, but its status as such has not yet been determined. For this reason, the presumption created by registration with the principal register, that the registrant can be the only valid owner, does not apply to supplemental registration.
The owners of registered trademarks can lose their rights in a number of ways. When a trade or the general public adopts a trademark as the name for a type of goods, the mark is no longer distinctive and the rights to it are lost. The owner of trademark rights must be vigilant to ensure that this does not occur. For instance, the Rollerblade company introduced a new product of roller skates where the wheels are arranged in a single line (offering performance similar to the blade on an ice skate) rather than side by side. Initially Rollerblade was the only company selling this type of skates, and the name Rollerblade became widely known. When competing producers of this new skate emerged on the marketplace, the consuming public often used the word rollerblade to describe the type of skates, no matter what company was making and selling them. Further, the public often called the activity of using such skates, no matter the manufacturer, rollerblading. The Rollerblade company spent millions of dollars in advertising and lawsuits to ensure that the trademark Rollerblade was not used to describe a product whose proper generic name is in-line skates. To protect its rights to the trademark, the Rollerblade company must actively oppose any use by competitors or consumers of the words rollerblade or rollerblading to describe generic in-line skates and the activity of in-line skating.
Registrants forfeit rights to their marks if they use them deceptively, use them in fraudulent trades, or abandon them. Registrants abandon their marks by failing to renew within ten years or by deliberately transferring rights with consent.
Trademark Infringement
Once they have established their trademarks, owners have the duty to guard against infringement and to be vigilant to preserve and protect their rights. The Lanham Act aids owners in protecting their rights and protects consumers from being tricked or confused by misleading marks.
The six most common causes of action in infringement lawsuits charge that a defendant has infringed on a plaintiff's registered trademark; undermined a plaintiff's unregistered mark in a manner that affects commerce; violated common-law trademark infringement standards and unfair competition principles; violated state deceptive trade practice laws; diluted a plaintiff's trademark; and misappropriated a plaintiff's mark.
Trademark infringement claims generally involve the issues of likelihood of confusion, counterfeit marks, and dilution of marks. Likelihood of confusion occurs in situations where consumers are likely to be confused or misled about marks being used by two parties. To constitute infringement, this confusion must be probable, not merely possible. The complaining party must show that because of the similar marks, many consumers are likely to be confused or misled about the source of the products that bear these marks.
In a likelihood of confusion cause of action, the defendant can defend on the basis that confusion is not likely or that although confusion may be likely, the plaintiff has behaved improperly regarding the mark or the mark is somehow defective.
The Lanham Act defines a counterfeit mark as being "identical with, or substantially indistinguishable from, a registered mark." All counterfeits are infringements. The product or service bearing the counterfeit mark must be of the same type of product or service bearing the protected mark. The defendant must have knowingly produced or trafficked a counterfeit mark.
Dilution is lessening the individuality or impact of a mark. The usefulness of a trademark depends on its recognizability and individuality. In cases of dilution, the challenged mark does not necessarily have to be used on products in direct competition with the products of the complaining party, nor is it necessary that the mark is causing confusion. The complaining party only needs to show that the strength and impact of the registered mark is somehow lessened by the presence of similar marks. A trademark owner uses its mark as a means of recognition and as a symbol representing its goodwill, and when similar marks flood the marketplace, this message is considered to be diluted. The product or service thus becomes psychologically less identifiable and less distinguishable. Trademark law prohibits this dilution and prevents the infringing party from unfairly profiting from an association with an established name.
To establish an infringement cause of action based on dilution, the plaintiff must initially show that its trademark is genuinely unique. Similar to the standard for confusion, dilution because of defendant's conduct must be likely or probable, rather than merely possible.
The defendant in an infringement case can invoke any of several affirmative defenses. An affirmative defense is a response that attacks the plaintiff's legal right to bring an action, as opposed to attacking the truth of the claim. The defendant can argue that the plaintiff abandoned the trademark or that the mark is generic. Defendants may claim that they made "fair use" of the mark, in that their purpose for using the mark did not unfairly compete with the plaintiff. Another affirmative defense is that the plaintiff has "unclean hands" from acting in an unfair or deceptive manner. The defendant can charge that the plaintiff engaged in trademark misuse and used the mark in a manner that went against the public policy that allowed the trademark to be granted in the first place. The defendant may charge the plaintiff with fraudulent use of a trademark. The defendant can argue that the plaintiff violated antitrust laws, which are designed to protect commerce and trade against unlawful restraints, price fixing, and monopolies. Finally, the defendant can offer the affirmative defense of laches, which provides that the party that unreasonably delays in asserting legal rights forfeits them.
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A trademark or trade mark[1] is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to uniquely identify the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. A trademark is a type of intellectual property, and typically comprises a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories.
The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required. The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only 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.
Trademark law is primarily derived from the English common law relating to goodwill and the tort of passing off, which has been recognized in England since at least 1585. In the mid-19th century the Parliament of the United Kingdom recognized an increased use of standard marks as badges of origin. After appointing a select committee to investigate that business practice the Parliament passed the Merchandise Marks Act in 1862. The Act met with much criticism including that it confused the public and the legal fraternity who were used to the common law approach.[clarify] In response the Parliament passed the Trade Mark Registration Act in 1875 which is widely recognized as the first system of trademark registration.
The system of registration of trademarks is now used throughout the world and has been incorporated into international law by, among other things, the Madrid Protocol.
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. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while unregistered trademark rights may be enforced pursuant to the common law tort of passing off.
It is important to note that trademark rights generally arise out of the use and/or registration (see below) of a mark in connection only with a specific type or range of products or services. Although it may sometimes be possible to take legal action to prevent the use of a mark in relation to products or services outside this range (eg. for passing off), this does not mean that trademark law prevents the use of that mark by the general public. A common word, phrase, or other sign can only be removed from the public domain to the extent that a trademark owner is able to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections. For a case study in both concepts, see Apple Corps and its disputes with Apple, Inc.
Terms such as "mark", "brand" and "logo" are sometimes used interchangeably with "trademark". However, the terms "brands" and "branding" raise distinct conceptual issues and are generally more appropriate for use in a marketing or advertising context.
Specialized types of trademark include certification marks, 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 synonymous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark has become generics.
As any sign which is capable of performing the essential trademark function may qualify as a trademark, the trademark concept extends to include a range of non-conventional signs such as shapes (three-dimensional trademarks), sounds, smells, moving images (e.g., signs denoting movement, motion or animation), taste, and perhaps even texture. Although the extent to which non-conventional trademarks can be protected or even recognised varies considerably from jurisdiction to jurisdiction,[2] shape marks and sound marks are examples of non-conventional marks which are in the process of migrating out of this category.
The ™ symbol may be used when trademark rights are claimed in relation to a mark, but the mark has not been registered with the government trademarks office of a particular country or jurisdiction, while the ® is used to indicate that the mark has been so registered. It is not mandatory to use either symbol, although the force of convention is such that the symbols are widely used around the world. However, in various jurisdictions it is unlawful to use the ® symbol in association with a mark when that mark is not registered. Either symbol is typically placed in the top left- or right-hand corner of a mark.
The law considers a trademark to be a form of property. Proprietary rights 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, e.g., the U.S. Patent and Trademark Office. In many jurisdictions, trademark rights can be established through either or both means. Certain jurisdictions generally do not recognize trademarks rights arising through use (e.g. China or European Union). 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.
A registered trademark confers a bundle of exclusive rights 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 similar to the "registered" products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services.
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).
To avoid conflicts with earlier trademark rights, it is highly recommended to conduct trademark searches before the trademarks office (or "trademarks registry") of a particular jurisdiction - e.g. US Patent and Trademark Office. It may also be advisable to conduct a broader search as well, including databases that contain names of registered companies and also an Internet search to determine if the desired trademark is either already registered as a domain name or otherwise being used. The reason for this is because trademark offices typically only search issued trademarks and pending applications in order to determine whether a trademark should issue..[3] For business reasons, however, an applicant may want to consider a different trademark even if it could be registered if the domain name is taken or other businesses are using the trademark as an unregistered name or slogan.
In the United States, obtaining a trademark search and relying upon the results is also very important because it can insulate the applicant from any future finding that you willfully infringed the trademark of another. Essentially, if you obtain a search and in good faith feel the use of a mark would not be infringing it will be virtually impossible for anyone to prove later that you purposefully engaged in infringing activities.[4]
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 (for free search see Eurimark).
A trademark may be eligible for registration, or registrable, if amongst other things it performs the essential trademark function, and has distinctive character. Registrability can be understood as a continuum, with "inherently distinctive" marks at one end, "generic" and "descriptive" marks with no distinctive character at the other end, and "suggestive" and "arbitrary" marks lying between these two points.
It can be seen from the examples above that the distinctive character of a term is closely related to the products or services in relation to which the term is used.
A general method for assessing the distinctive character of a mark is to consider a consumer's reaction to a mark. The mark may only be inherently registrable if the consumer has never encountered the mark before. On the other hand, the mark is unlikely to be inherently registrable if it informs him about any characteristic of the relevant products or services (eg. whether they are delicious, large, spicy, black or sweet, in the case of fruit). In any other case the mark may not be registrable.
Another example of a descriptive mark would be a geographical word or phrase that merely indicates the origin of the product or service. For example, Houston based ice cream might find that the name "Houston ice cream" is denied trademark protection on the grounds that the word Houston is merely descriptive. However, they might have better luck with the name "North Pole ice cream". In the latter case, although North Pole is a geographical location, the ice cream is not actually made at the North Pole, and no reasonable person would assume that the phrase North Pole is literally descriptive.[5]
Therefore marks that identify or describe a product or service, or that are in common use, or that are used as geographical indications, generally cannot be registered as trademarks, and remain in the public domain for use by anyone. For example, a generic term such as "apple", or descriptive terms such as "red" or "juicy" could not be registered in relation to apples.
Primary consideration in the selection and use of trademarks should be given to marks which are inherently distinctive, as they possess the strongest distinctive character and do not require evidence of use to establish acquired distinctiveness. A fanciful, arbitrary, or suggestive term can be inherently distinctive and registrable without proof of acquired distinctiveness. Although these categories are most easily applied in relation to trademarks comprising words, the same general principles are applied in relation to all kinds of trademarks. For example, a pine tree shape is descriptive when used on pine-scented products.
A trademark with no distinctive character (ie. a mark which is not inherently distinctive) is prima facie unregistrable. However, most jurisdictions may still allow such marks to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (ie. the trademark owner). "Use" may include authorized use by a licensee or other party. If the trade marks office is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness.
The nature and extent of acceptable evidence of use varies between jurisdictions, although the most useful evidence usually includes sales figures, details of advertising and promotional expenditure, and examples of promotional material. Consumer surveys may also help establish that consumers chiefly associate an otherwise non-distinctive mark with the trademark owner and its products or services. Generally, evidence of use may only be acceptable or relevant if it covers a certain period of time (eg. three years prior to the filing date of the trademark application) and originates from within the jurisdiction where registration is sought.
The terminology of acquired distinctiveness is accepted in the European Union and Commonwealth jurisdictions such as Australia, Hong Kong and the United Kingdom, and the common law jurisdiction of the United States (which also uses the term secondary meaning). In the U.S., if a trademark has been used for a continuous period of at least five years after the date of registration, the right to use the mark and the registration may become "incontestable" (eg. invulnerable to cancellation for non-use, but not for becoming generic). In such cases the USPTO checks and confirm whether the request for incontestability meets formality requirements, but whether a registration is incontestable at law can only be determined during legal proceedings involving the registration.
Most jurisdictions totally exclude certain types of terms and symbols from registration as trademarks, including the
emblems, insignia and
Trademarks rights must be maintained through actual use of the trademark. These rights will diminish over time if a mark is not actively used. In the case of a trademark registration, failure to actively use the mark, or to enforce the registration in the event of infringement, may also expose the registration itself to removal from the register after a certain period of time.
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. Further, 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 example, the Bayer company's trademark "Aspirin" has been ruled generic in the United States, so other companies may use that name for acetylsalicylic acid as well (although it is still a trademark in Canada). Xerox for copiers and Band-Aid for adhesive bandages are both trademarks which are at risk of succumbing to genericide in certain countries, which the respective trademark owners actively seek to prevent. In order to prevent marks becoming generic, trademark owners often contact those who appear to be using the trademark incorrectly, from web page authors to dictionary editors, and request that they cease the improper usage. The proper use of a trademark means using the mark as an adjective, not as a noun or a verb,[6][7][8][9] though for certain trademarks, use as nouns and, less commonly, verbs is common. For example, Adobe sent e-mails to many web authors using the term "photoshopped" telling them that they should only use the term "modified by Adobe® Photoshop® software." Xerox has also purchased print advertisements declaring that "you cannot 'xerox' a document, but you can copy it on a Xerox Brand copying machine." Another popular example is the use of the word "frappuccino" by Starbucks customers to mean any blended coffee beverage, though employees are instructed to only say "frappuccino blended coffee" or "frappuccino blended cream" when referring to such drinks. Such efforts may or may not be successful in preventing genericism in the long run, which depends less on the mark owner's efforts and more on how the public actually perceives and uses the mark. In fact, legally it is more important that the trademark holder visibly and actively seems to attempt to prevent its trademark from becoming generic, regardless of real success.
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 and/or services involved, and whether the owner’s trademark is well known.
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.
Trademark is subject to various defenses and limitations. In the United States, the fair use defense protects uses that would be otherwise protected by the First Amendment.
Various jurisdictions have laws which are designed to prevent trademarks' 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; also known as a Declaratory Ruling.
Trademark law is designed to fulfill the public policy 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 in order 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 impact on the owner’s rights in the trademark.
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 and/or services to the new owners to ensure continuity of the trademark.
While trademark law seeks to protect indications of the commercial source of products or services, patent 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. A trademark also does not expire, whereas international copyright law (which varies from country to country) usually lasts the duration of the author plus 70 years. This can lead to confusion in cases where a work passes into the public domain but the character in question remains a registered trademark.[10]
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 when they 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 applicable jurisdiction's trademarks office. This often involves payment of a periodic renewal fee.
As a trademark must be used in order 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).
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.
The advent of the domain name system 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 in order 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." [1]
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. Infringing domain names were analogized to a sign identifying one store but falsely placed in front of another, in the hopes that customers will in the end not care that they were duped or will at least give up on trying to reach the right store. 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.
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 DRS) 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, do not become registrable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. Examples of such domain names ineligible for trademark protection would be "SOFT.COM" (merely descriptive when applied to a product such as facial tissue), or "BANK.COM" (generic for banking services).
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 (eg. 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".
The inherent limitations of the territorial application of trademark laws have been mitigated by various intellectual property 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.
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 Organization. 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 (eg. 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.
The Trademark Law Treaty establishes a system pursuant to which member jurisdictions agree to standardize procedural aspects of the trademark registration process.
The Community Trade Mark system is the supranational trademark system which applies in the European Union, 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).
