Trademark
A trademark (also written trade mark or trade-mark[1]) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies a product or service from a particular source and distinguishes it from others.[2][3] A trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. Trademarks used to identify services are sometimes called service marks.[4][5]
For other uses, see Trademark (disambiguation).
The first legislative act concerning trademarks was passed in 1266 under the reign of Henry III of England requiring all bakers to use a distinctive mark for the bread they sold. The first modern trademark laws emerged in the late 19th century. In France, the first comprehensive trademark system in the world was passed into law in 1857. The Trade Marks Act 1938 of the United Kingdom changed the system, permitting registration based on "intent-to-use", creating an examination-based process, and creating an application publication system. The 1938 Act, which served as a model for similar legislation elsewhere, contained other novel concepts such as "associated trademarks", a consent to use the system, a defensive mark system, and a non-claiming right system.
The symbols ™ (the trademark symbol) and ® (the registered trademark symbol) can be used to indicate trademarks; the latter is only for use by the owner of a trademark that has been registered.
Usage[edit]
A trademark identifies the brand owner of a particular product or service. Trademarks can be used by others under licensing agreements; for example, the Lego Group purchased a license from Lucasfilm to be allowed to launch Lego Star Wars. The unauthorized usage of trademarks by producing and trading counterfeit consumer goods is known as brand piracy.
The owner of a trademark may pursue legal action against trademark infringement. Most countries require formal trademark registration as a precondition for pursuing this type of action. The United States, Canada, and other countries also recognize common law trademark rights, which means action can be taken to protect any unregistered trademark if it is in use. Still, common law trademarks offer to the holder, in general, less legal protection than registered trademarks.
As the purpose of the trademark is to identify a particular source of the product, rather than the product itself, it is widespread legal advice that trademark owners should always use their trademarks as adjectives modifying a generic product name, and set off with capitalization or a distinctive typeface, as a guard against the trademark becoming the generic name of the product.[6][7][8] Thus "LEGO bricks" rather than "some Lego" or "Legos". The name of the producer itself is a "trade name" rather than a trademark and can be used as a noun.
A trademark may be designated by the following symbols:
The three symbols associated with trademarks 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) or Indian Patent Office (IPO). The proper manner to display either symbol is immediately following the mark in superscript style.[9]
Styles[edit]
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements.[10] There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on colour, smell, or sound (like jingles). Trademarks that are considered offensive are often rejected according to a nation's trademark law.[11]
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 about services rather than products, it may sometimes be called a service mark, particularly in the United States.[10]
Fundamental concepts[edit]
The essential function of a trademark is to exclusively identify the source or origin of products or services, so a trademark, properly called, indicates the source or serves as a badge of origin. In other words, trademarks serve to identify a particular entity 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.
Trademarks are used not only by businesses but also by noncommercial organizations and religions to protect their identity and goodwill associated with their name.[12][13][14]
Trademark rights generally arise out of the use of, or to maintain exclusive rights over, that sign about 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 cover services). The idea behind 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.
Registration[edit]
Some law considers a trademark to be a form of property. Proprietary rights about a trademark may be established through actual use of that trademark in the marketplace or through registration of the mark with the relevant 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 merely 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 may be limited. In cases of dispute, this disparity of rights is often referred to as "first to file" (i.e., register) as opposed to "first to use". Some countries, such as Germany, offer a limited number of common law rights for unregistered marks, where to gain protection the goods or services must first 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 includes several steps. First, the trademark owner applies with the United States Patent and Trade Mark Office to register the trademark. About three months after it is filed, the application is reviewed by an examining attorney at the U.S. Patent and Trademark Office. The examining attorney checks for compliance with the rules of the Trademark Manual of Examination Procedure. 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 confuse with a pre-existing applied-for or registered mark. If the application runs afoul of any requirement, the examining attorney will issue an office action requiring the applicant to address certain issues or refusals before registration of the mark. If the examining attorney approves the application, it 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. Finally, 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 before 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. The overall length of the trademark registration process varies considerably between individual jurisdictions, from 2 to 24 months.[35]
A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark about 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 about products or services which are identical or "colorfully similar" to existing registered products or services, and in certain cases, prevent the use of entirely dissimilar ones. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin, not just the area of rights specified by the trademark. An example might be a very large multinational electronics brand such as Sony Corporation where a non-electronic product such as a pair of sunglasses might be assumed by a consumer to have come from Sony Corporation of Japan despite being outside a class of goods to which Sony has rights, yet still protected by Sony's trademark; a similarly named psychotherapy office or line of hamburger buns or summer camps, however, would not be infringing on Sony Corporation's trademark because the service or products being offered are so vastly different from Sony Corporation's trademark claim of rights and range of manufactured goods.
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.
Search[edit]
In the United States, the USPTO maintains a database of registered trademarks. The database is open to the public and is searchable via the Trademark Electronic Search System (TESS).[36] As trademarks are governed by federal law, state law, and common law, a thorough search as to the availability of a mark and its image components is very important. Marks consisting of a design are assigned "design search codes" by the USPTO for different elements of the design to enable the public and USPTO employees to search the database for similar design marks[37] . In the United States obtaining a trademark search and subsequent registration will protect the mark owner from being required to potentially pay damages in a trademark infringement case, as it demonstrates the trademark administrative legal issuance staff along with the registrant performed thorough due diligence searches for conflicting marks, and therefore the mark owner had good foresight by having a priority registration, and thus is likely using their mark IP in good faith.
The USPTO internally captures more information about trademarks than they publicly disclose on their official search website, such as the complete contents of every logo trademark filing. In addition intelligence service agencies likely collect owner/applicant office and computer systems information, and apply motoring techniques to their systems for forensics and security purposes. Initial trademark submissions are a way to gather early intelligence informations.
Trademarks may also be searched on third-party databases such as LexisNexis, Dialog, and CompuMark.
Within the European Union, searches have to be conducted taking into account both EU trademarks as well as national trademarks.
Classification systems exist to help in searching for marks. One example is the "International Classification of the Figurative Elements of Marks", better known as the Vienna Classification.
Other aspects[edit]
Public policy[edit]
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 the identification of products and services which meet the expectations of consumers as to the 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 about 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. For US law see, ex. Eva's Bridal Ltd. v. Halanick Enterprises, Inc. 639 F.3d 788 (7th Cor. 2011). 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 (the 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.