trademark

(trād'märk')

1. (Abbr. TM) A name, symbol, or other device identifying a product, officially registered and legally restricted to the use of the owner or manufacturer.
2. A distinctive characteristic by which a person or thing comes to be known: the shuffle and snicker that became the comedian's trademark.

1. To label (a product) with proprietary identification.
2. To register (something) as a trademark.

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For more information on trademark, visit Britannica.com.

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.

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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.

A trademark is a word, phrase, symbol or design—or a combination of words, phrases, symbols, or designs—adopted and used by a manufacturer or merchant to identify its goods and distinguish them from those manufactured or sold by its competitors. In recent years, colors (such as John Deere green), sounds (such as the National Broadcasting Company's use of distinctive chimes), and scents have also been registered as trademarks. Service marks, meanwhile, are identical to trademarks except that they identify and distinguish the source of a service rather than a product. The term "trademark," however, is commonly utilized to refer to both trademarks and service marks.

Whereas exclusive rights to other items of intellectual property such as copyrights and patents eventually expire, trademark rights can last indefinitely, provided the owner of the mark continues to use it to identify its goods or services. The initial term for a federal trademark registration is ten years, but the owner has the option to renew for additional ten-year terms. The Patent and Trademark Office (PTO), however, has stipulated that between the fifth and sixth years of the initial registration term, the registrant must file an affidavit confirming the need to keep the registration alive. If no affidavit is filed, the registration is canceled, and other companies can pursue the mark for their own use if they so desire.

Other Types of Trademarks

In addition to trademarks and service marks, there are two other kinds of marks that generally fit under the generic "trademark" umbrella: certification marks and collective marks.

CERTIFICATION MARK. A certification mark, explained Richard Levy in his Inventor's Desktop Companion, "is a mark used upon or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization." Examples of certification marks include the UL symbol of Underwriters Laboratories (for quality), "Made in the U.S.A." designations (for place of origin), and the Motion Picture Association of America's movie ratings (for service).

COLLECTIVE MARK. Collective marks are trademarks or service marks used by members of an association, cooperative, or other group. Organizations as diverse as the National Rifle Association, the Big Ten Athletic Conference, and the Sierra Club all utilize collective marks.

Trademark Rights

Trademark rights to an identifying word, phrase, symbol, design, sound, or color can be secured either by actually using the mark in commerce or by registering the mark with the Trademark Office, a division of the Patent and Trademark Office (PTO). "Federal registration [with the PTO] is not required to establish rights in a mark, nor is it required to begin use of a mark," noted the PTO in its booklet, Basic Facts About Registering a Trademark. "However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide." In addition, owners of federal registration for a trademark often enjoy an advantage if legal disputes over use of a trademark arise.

THE "RIGHT TO REGISTER". According to the Patent and Trademark Office, the ultimate right to register a trademark generally belongs to the first party—whether it is a small business or a large corporation—to use a trademark "in commerce" or file a trademark application with the PTO. ("Commerce" in this situation means commerce regulated by the U.S. Congress, i.e., interstate commerce or commerce between America and another nation; use of a trademark in purely local commerce within a state does not qualify as "use in commerce.")

THE "RIGHT TO USE". As the PTO itself admitted in its Basic Facts About Registering a Trademark, "the right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement." As indicated above, possession of federal registration can be a valuable weapon if a court fight erupts over use of a disputed trademark.

Trademark Searches

A small business owner who has come up with a trademark that he or she wishes to use may want to conduct a trademark search before going to the trouble and expense of sending an application to the PTO. As Thomas Field remarked in Avoiding Patent, Trademark and Copyright Problems, "one can infringe on another's marks without copying them or even being in direct competition with their owner. All that is necessary is to use the same or a similar mark under circumstances in which consumers may be confused as to the source or sponsorship of the goods or services." A trademark search can uncover whether the mark (or a similar one) has already been registered with the PTO. But even if a search turns up nothing, that does not necessarily mean that the business owner is guaranteed untroubled use of the mark. "In the United States, it is unnecessary for a firm to do more than use a good mark to have trademark rights in its market area," explained Field. "Consequently, a search may not locate all such prior users. Second, people may be able to prevent the use of a potential mark without having used it as a mark themselves; for example, when a trademark can be associated with others in such a way that consumers might presume that some kind of relationship might exist."

Applications for Federal Registration

There are two primary ways in which a U.S. applicant can apply to register his or her trademark with the PTO, depending on whether or not the mark has already been used in commerce. An applicant who has already begun using the trademark in commerce may file with the PTO based on that use. This is commonly known as a "Use" application. If an applicant has not yet used the trademark in question in commerce, but has an honest intention to do so, he or she may file an "Intent-to-Use" application with the PTO. A third option, which can only be used by applicants from outside the United States, allows the applicant to file in the United States based on an application or registration made in another country.

Applications for federal registration should include the following:

• PTO Form 1478—this application, also known as "Trademark/Service Mark Application, Principal Register, with Declaration," should be carefully completed and fully signed.
• Drawing of the mark—this drawing must be included on a separate piece of paper; the specifications for the drawing—and the paper itself—are quite extensive, so make sure that the drawing adheres to all guidelines. If a separate drawing page is not included, then the application will be returned to the applicant without a filing date.
• Filing fee—For current information on the application filing fee for trademarks, call the Patent and Trademark Office or consult its Web site ("Intent-to-Use" applications are more expensive). If the full amount of the fee is not included in the application, then the application will not be considered. Fees are not refundable, even in instances where trademark ownership applications are turned down.
• Specimens—These are actual samples of how the mark is actually used—or will be used—in commerce. "If the mark is used on goods," wrote Levy, "examples of acceptable specimens are tags or labels which are attached to the goods, containers for the goods, displays associated with the goods, or photographs of the goods showing use of the mark on the goods themselves…. If the mark is used for services, examples of acceptable specimens are signs, brochures about the services, advertisements for the services, business cards or stationery showing the mark in connection with the services, or photographs which show the mark as it is used either in the rendering or advertising of the services." Each application must include three specimens, but they do not necessarily have to be of three different uses.

PTO ACCEPTANCE AND REJECTION. The federal registration of trademarks is governed by the Trademark Act of 1946 (and amendments thereof), the Trademark Rules, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure. When the PTO receives an application for trademark registration, it checks the application in accordance with the above-mentioned guidelines. First, the Office reviews it to see if it meets the minimum requirements for receiving a filing date. If it meets those requirements, the PTO assigns it a serial number and sends the applicant a notification of receipt. If the minimum requirements are not met, the entire thing (including the filing fee) is returned to the applicant.

Applications that pass this first stage are then reviewed by an examining attorney at the PTO, who determines if there are any reasons why the mark cannot be registered. Levy noted that a mark may be turned down for any of the following reasons:

• The mark too closely resembles a mark already registered in the PTO
• The mark's capacity for causing confusion among relevant consumers with goods or services associated with other parties
• The mark includes a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased president of the United States during the life of his wife, except in instances where the widow has given her written consent to such use
• The mark includes the flag or coat of arms or other insignia of the United States or any of its states or municipalities, or of any foreign nation, or any simulation thereof
• The mark has immoral, deceptive, or scandalous connotations
• The mark disparages or falsely suggests a connection with persons (living or dead), institutions, beliefs, or national symbols
• The mark brings such persons, institutions, beliefs, or national symbols into contempt or disrepute

Objections raised during this stage of the review are sent along to the applicant. Remedies that might make the mark acceptable are sometimes suggested in these letters as well. The application will be deemed abandoned if the applicant does not respond within six months of the mailing date of that letter. In cases in which the applicant's response does not sway the PTO examiner to give approval for the mark, the applicant can turn to the PTO's Trademark Trial and Appeal Board.

"If there are no objections, or if you [the applicant] overcome all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO," wrote Levy. "Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process."

If the application is approved and no opposition is filed, applicants may have a little or a lot to do, depending on their situation. For applicants who filed "Use" applications, most of the work is over. The PTO will register the trademark and issue a registration certificate a few months after the date the mark was published in the Gazette. Applicants who filed based on their intent to use the trademark down the line, though, need to attend to several matters to make sure that their rights do not slip away. In situations where it has approved an "Intent-to-Use" application, the PTO issues a Notice of Allowance approximately 12 weeks after the mark was published. After receiving the Notice, the applicant has six months to either use the trademark in commerce and submit documentation of that use or request a six-month extension. If the documentation of use—called the Statement of Use—is filed and approved, then the PTO will issue the registration certificate for the trademark.

Even if the PTO grants an applicant a trademark registration, however, business experts warn that such registration only provides protection to the owner in the United States and its territories. "If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws," warned the PTO in its Basic Facts About Registering a Trademark. "The PTO cannot provide information or advice concerning protection in other countries."

Further Reading:

Basic Facts About Registering a Trademark. U.S. Patent and Trademark Office, 1995.

Field, Thomas. Avoiding Patent, Trademark and Copyright Problems. Small Business Administration, 1992.

Levy, Richard C. The Inventor's Desktop Companion. Visible Ink, 1995.

Miller, Arthur R., and Michael H. Davis. Intellectual Property: Patents, Trademarks and Copyright. West/Wadsworth, 2000.

Schoell, William F., and Joseph P. Guiltinan. Marketing: Contemporary Concepts and Practices. Allyn and Bacon, 1992.

See also: Brands and Brand Names; Copyrights; Corporate Logos

noun

A name or other device placed on merchandise to signify its ownership or manufacture: brand, colophon, label, mark. See marks.

verb

To set off by or as if by a mark indicating ownership or manufacture: brand, identify, label, mark, tag. See marks.

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.

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.

See: copyright; patents.

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?

A word, symbol, or device assigned to a product by its manufacturer, possibly registered, as a part of its identity.

• Fashion, Trim, and Sewing - trademark: logo or name of designer or manufacturer
• Customs, Formalities, and Practices - trademark: distinguishing design, symbol, or words used by manufacturer or dealer to identify product or service from competitors, registered by its owner and designated ^TM
• Commerce and Trade - trademark: symbol, design, or name used to distinguish product from its competitors, designated^TM

For other uses, see Trademark (disambiguation).

For guidelines on using trademarks within Wikipedia, see Wikipedia:Manual of Style (trademarks).

This article may be too technical for most readers to understand. Please help improve this article to make it understandable to non-experts, without removing the technical details. The talk page may contain suggestions. (October 2011)

Intellectual property law
Primary rights
Copyright · authors' rights · related rights · moral rights · patent · utility model · trademark · geographical indication · trade secret
Sui generis rights
Database right · indigenous intellectual property · industrial design right · mask work · plant breeders' rights · supplementary protection certificate
Related topics
Societal views · orphan works · public domain · outline of intellectual property
v d e

A trademark, trade mark, or trade-mark^[1] is a distinctive sign or indicator, used by an individual, business organization, or other legal entity, to identify that the products or services 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:

• ™ (for an unregistered trade mark, that is, a mark used to promote or brand goods)
• ℠ (for an unregistered service mark, that is, a mark used to promote or brand services)
• ® (for a registered trademark)

A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements.^[2] There is also a range of non-conventional trademarks 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.^[2]

Contents 1 Fundamental concepts 2 History 3 Symbols 4 Terminology 5 Registration 6 Search 7 Ability to register 7.1 Distinctive character 8 Maintaining rights 9 Enforcing rights 9.1 Limits and defenses to claims of infringement 9.1.1 Wrongful or groundless threats of infringement 10 Other aspects 10.1 Public policy 10.2 Comparison with patents, designs and copyright 10.3 Dilution 10.4 Sale, transfer and licensing 10.5 Domain names 11 International law 11.1 Territorial application 11.2 Madrid system 11.3 Trademark Law Treaty 11.4 Community Trade Mark system 11.5 Well-known status 12 See also 12.1 Law 12.2 Non-standard variations 12.3 Non-conventional and non-traditional examples 12.4 Other 12.5 Related concepts 13 Notes 14 External links

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 rights 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.

History

Bass Brewery's logo became the first image to be registered as a trademark in 1875

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.^[3] Other notable trademarks that have been used for a long time include Löwenbräu, which claims use of its lion mark since 1383,^[4] and Stella Artois, which claims use since 1366.^{[citation needed]}

Registered trademarks involve registering the trademark with the government. The oldest registered trademarks in various countries include:

• United Kingdom: 1876 – The Bass Brewery's Red Triangle for ale was the first trademark to be registered under the Trade Mark Registration Act 1875.^[5]

• United States: 1884 – A picture of Samson wrestling a lion was registered to Sampson Rope.

In 1980, there were fewer than ten thousand registered high-tech trademarks in the United States. In 2011, there are more than 300,000.^[6]

Symbols

The two symbols associated with U.S. trademarks ™ (the trademark symbol) 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.

Terminology

Approximate drawing of Burberry check pattern. The pattern is a registered trademark of Burberry Ltd.

Terms such as "mark", "brand" 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 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 becomes generic.

Registration

Wikipedia® is a registered trademark of Wikimedia Foundation, Inc.

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. 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.^[7] First, an Applicant, the person or persons 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 it complies with all requirements in order to be entitled to registration.^[8] 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.^[9] 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.^[10] 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 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 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 diligence 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.

Ability to register

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.

Distinctive character

Main article: Trademark distinctiveness

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, 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.^[11] 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.^[12]

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.^[13]

Enforcing rights

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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 dilution, 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.^[14]

Limits and defenses to claims of infringement

Trademark is subject to various defenses, such as abandonment, limitations on geographic scope, 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.^[15] 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.^[16]

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" as long as they are not making items that are similar to Maytag.

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 Cadillacs, and a former Playboy Playmate of the Year can identify herself as such on her website.^[17]

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.^[18] In this situation, the party receiving such a threat may seek from the Court a declaratory judgment; also known as a declaratory ruling.

Other aspects

Public policy

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 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.

Comparison with patents, designs and copyright

See also: Functionality doctrine

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. 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.^[19] 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.

Dilution

Main article: Trademark 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 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 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 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."^[20]

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".^[21] 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]".^[22]

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".^[23]

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.^[24]

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 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.

Madrid system

Main article: 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 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 (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.^[25]

Community Trade Mark system

Main article: Community Trade Mark

The Community Trade Mark system is the 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).

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,^[26] 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.^[27]

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).^{[citation needed]}

See also

• Intellectual property organizations
• International Trademark Association
• List of generic and genericized trademarks
• Merchant's mark
• Office for Harmonization in the Internal Market
• Service marks
• Trade dress
• Trademark classification
• Trademark Counterfeiting Act of 1984
• Trademark dilution
• Trademark symbol
• United States Patent and Trademark Office
  • Board of Patent Appeals and Interferences
• Unregistered trademark
• World Intellectual Property Organization

Law

• Australian trade mark law
• Canadian trade-mark law
• European Union trade mark law
• Hong Kong trade mark law
• Japanese trademark law
• People's Republic of China's trademark law
• Philippine Trademark Law
• United Kingdom trade mark law
• United States trademark law

Non-standard variations

• Certification marks
• Chartered marks
• Collective trademarks
• Defensive trademarks
• Electronic registration marks
• Geographical indication
• Protected designation of origin

Non-conventional and non-traditional examples

• Colour trademarks
• Hologram trademarks
• List of fictional brands
• Sound trademarks

Other

• Company Names Tribunal
• Copyright infringement
• Entertainment law
• Genericized trademarks
• Ghost marks
• Intellectual property
• Madrid system
• Proper adjective
• Trademark attorney

Related concepts

• Brand
• Emblem
• Logo
• Visual brand language

Notes

1. ^ The styling of trademark as a single word is predominantly used in the United States and Philippines only, while the two-word styling trade mark is used in many other countries around the world, including the European Union and Commonwealth and ex-Commonwealth jurisdictions (although Canada officially uses trade-mark pursuant to the Trade-mark Act, trade mark and trademark are also commonly used).
2. ^ ^{a b} Restatement (Third) of Unfair Competition § 9 (1995)
3. ^ Gary Richardson, Brand Names Before the Industrial Revolution, National Bureau of Economic Research available at National Bureau of Economic Research
4. ^ Packard, Ashley (2010). Digital Media Law. John Wiley and Sons. p. 162. ISBN 978-1-4051-8168-3. http://books.google.com/books?id=YcYJGlKJ4g4C&printsec=frontcover&source=gbs_ge_summary_r&cad=0#v=onepage&q&f=false. 
5. ^ United Kingdom Intellectual Property Office
6. ^ Colapinto, John (3 October 2011). "Famous Names". The New Yorker. http://www.newyorker.com/reporting/2011/10/03/111003fa_fact_colapinto. Retrieved 9 October 2011. 
7. ^ Registration Process, additional text.
8. ^ TMEP Sec. 700, additional text.
9. ^ TMEP Sec. 1200, additional text.
10. ^ TBMP Sec. 300 et seq., additional text.
11. ^ TMEP Sec. 1604.04, additional text.
12. ^ USPTO Fee Schedule, additional text.
13. ^ TMEP Sec. 1606 et seq., additional text.
14. ^ See Jane Coleman, Secondary Trademark Infringement: A Short Treatise on Contributory and Vicarious Infringement in Trademark (Revised, Sept. 2010).
15. ^ Trademark - A Limited Right
16. ^ Comparative Advertising: Mac vs. PC - "In the United States where we hold the First Amendment above reproach by any laws, there are many legitimate and legal uses of a trademark, and the right to engage in comparative advertising is among one of those legitimate uses."
17. ^ Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002)
18. ^ Section 21, Trade Marks Act 1994
19. ^ Directive harmonizing the term of copyright protection
20. ^ Cyber Law P.C.
21. ^ Bosley Medical Institute, Inc v Bosley Medical Group, 403 F.3d 672, 680 (9th Cir. 2005)(quoting DaimlerChrysler v The Net Inc. 388 F.3d 201, 204 (6th Cir. 2004))
22. ^ 15 U.S.C. § 1125(d)(1)(A)
23. ^ Tess2.uspto.gov
24. ^ The STIckler: inside the latest trademark protection gTLD discussion
25. ^ Full text of the Trademark Law Treaty.
26. ^ Paris Convention: Article 6 bis, Paris Convention
27. ^ Hong Kong Trade Marks Ordinance section dealing with infringement: Cap 559, s.18

External links

Look up trademark in Wiktionary, the free dictionary.

Wikibooks has a book on the topic of US Trademark Law

• Directory of trade names in Webster's Online Dictionary - The Rosetta Edition
• Trademark Fact Sheets by the International Trademark Association
• 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

This entry is from Wikipedia, the leading user-contributed encyclopedia. It may not have been reviewed by professional editors (see full disclaimer)

Dansk (Danish)
n. - varemærke, firmanavn
v. tr. - give et varemørke

Nederlands (Dutch)
handelsmerk

Français (French)
n. - (Comm) commerce de fabrique, marque déposée, (fig) signe particulier
v. tr. - (Comm) apposer une marque sur, déposer une marque sur

Deutsch (German)
n. - Warenzeichen
v. - unter einem Warenzeichen registrieren

Ελληνική (Greek)
n. - (νομ.) εμπορικό σήμα, (μτφ.) διακριτικό, χαρακτηριστικό, χαρακτηριστικό γνώρισμα

Italiano (Italian)
marchio

Português (Portuguese)
n. - marca registada (f)

Русский (Russian)
отличительная особенность

Español (Spanish)
n. - marca de fábrica, marca registrada
v. tr. - registrar la marca de fábrica

Svenska (Swedish)
n. - trademark, varumärke

中文（简体）(Chinese (Simplified))
商标, 标记, 特征, 用商标标明, 登记...作为商标, 给...的商标注册

中文（繁體）(Chinese (Traditional))
n. - 商標, 標記, 特徵
v. tr. - 用商標標明, 登記...作為商標, 給...的商標註冊

한국어 (Korean)
n. - 상표, 특징
v. tr. - ~에 상표를 붙이다, 상표를 등록하다

日本語 (Japanese)
n. - 商標, トレードマーク, 特徴
v. - 商標を付ける, 商標を登録する

العربيه (Arabic)
‏(الاسم) علامه تجاريه‏

עברית (Hebrew)
n. - ‮סמל מסחרי, סימן היכר‬
v. tr. - ‮קבע סמל מסחרי‬

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