A trademark, trade mark, or trade-markThe 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). is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called . The trademark owner can be an individual, business organization, or any Juristic person. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed on company buildings.
A trademark identifies the brand owner of a particular product or service. Trademarks can be licensed to others; for example, Bullyland obtained a license to produce Smurf figurines; the Lego Group purchased a license from Lucasfilm in order to be allowed to launch Lego Star Wars; TT Toys Toys is a manufacturer of licensed ride-on replica cars for children. The unauthorized usage of trademarks by producing and trading counterfeit consumer goods is known as brand piracy.
The owner of a trademark may pursue lawsuit against trademark infringement. Most countries require formal registration of a trademark 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 an unregistered trademark if it is in use. Still, common law trademarks offer the holder in general less legal protection than registered trademarks.
A trademark may be designated by the following symbols:
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements.Restatement (Third) of Unfair Competition § 9 (1995) 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 ). Trademarks which are considered offensive are often rejected according to a nation's trademark law.
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States.
Trademark rights generally arise out of the use of, 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 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.
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 with the "Manufacture and Goods Mark Act". In Britain, the Merchandise Marks Act 1862 made it a criminal offense to imitate another's trade mark 'with intent to defraud or to enable another to defraud'. In 1875, the Trade Marks Registration Act was passed which allowed formal registration of trade marks at the UK Patent Office for the first time. Registration was considered to comprise prima facie evidence of ownership of a trade mark and registration of marks began on 1 January 1876. The 1875 Act defined a registrable trade mark as 'a device, or mark, or name of an individual or firm printed in some particular and distinctive manner; or a written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket'.Bently, Lionel, "The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark (1860-80)" in Lionel Bently, Jane C. Ginsburg & Jennifer Davis (eds), Trade Marks and Brands: An Interdisciplinary Critique (Cambridge University Press, 2008)
In the United States, Congress first attempted to establish a federal trademark regime in 1870. This statute purported to be an exercise of Congress' Copyright Clause powers. However, the Supreme Court struck down the 1870 statute in the Trade-Mark Cases later on in the decade. In 1881, Congress passed a new trademark act, this time pursuant to its Commerce Clause powers. Congress revised the Trademark Act in 1905. The Lanham Act of 1946 updated the law and has served, with several amendments, as the primary federal law on trademarks.Roger W. Dyer Jr., Monetary Damages under the Lanham Act: Eighth Circuit Holds Actual Confusion is Not a Prerequisite, 77 Mo. L. Rev. (2012)
The Trade Marks Act 1938 in the United Kingdom set up the first registration system based on the “intent-to-use” principle. The Act also established an application publishing procedure and expanded the rights of the trademark holder to include the barring of trademark use even in cases where confusion remained unlikely. This Act served as a model for similar legislation elsewhere.
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 with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark becomes generic.
A "trademark look" is an informal term for a characteristic look for a performer or character of some sort. It is usually not legally trademark protected and the term is not used in the trademark law.
In the United States, the registration process includes several steps. First, the trademark owner files an application 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. TMEP Sec. 700 Trademark Manual. 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. TMEP Sec. 1200, additional text. 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. 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. TBMP Sec. 300 et seq., additional text. 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 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 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.
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.
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 Aston v Harlee cases.
In the U.S., failure to use a trademark for this period of time 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. A mark is registered in conjunction with a description of a specific type of goods, and if the party uses the mark but in conjunction with a different type of goods, the mark may still be considered abandoned, as was the case in Lens.com, Inc. v. 1-800 Contacts, Inc.. 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.
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. TMEP Sec. 1604.04, additional text. During this period, a trademark owner may concurrently opt to file a Section 15, Declaration of Incontestability. A mark declared incontestable is immune from future challenge, except in instances where the mark becomes generic, the mark is abandoned, or if the registration was acquired fraudulently. 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. USPTO Fee Schedule, additional text.
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. TMEP Sec. 1606 et seq., additional text.
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.See Jane Coleman, Secondary Trademark Infringement: A Short Treatise on Contributory and Vicarious Infringement in Trademark (Revised, Sept. 2010).
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."
An example of the first type is that although Maytag owns the trademark "Whisper Quiet" for its dishwashers, makers of other products may describe their goods as being "whisper quiet" so long as these products do not fall under the same category of goods the trademark is protected under.
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 , Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir. 1969). and a former Playboy Playboy Playmate can identify herself as such on her website. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002)
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. Section 21, Trade Marks Act 1994 In this situation, the party receiving such a threat may seek from the Court a declaratory judgment; also known as a declaratory ruling.
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. For US law see, ex. Eva's Bridal Ltd. v. Halanick Enterprises, Inc. 639 F.3d 788 (7th Cir. 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 (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.
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.Directive harmonizing the term of copyright protection 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. Trademark protection does not apply to utilitarian features of a product such as the plastic interlocking studs on Lego bricks.See, for example,
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.
Like patents and copyrights, trademarks can be bought, sold, and transferred from one company or another. Unlike patents and copyrights, trademarks may not remain intact through this process. Where trademarks have been acquired for the purpose of marketing generic (non-distinctive) products, courts have refused to enforce them.
In 1923, the author Edgar Rice Burroughs registered his fictitious character Tarzan as a trademark; even after the copyright to the Tarzan story expired, his company used ownership of the trademarks relating to the character (which unlike copyrights, do not have a limited length) to control the production of media using its imagery and Brand licensing the character for use in other works (such as adaptations). This practice is a precursor to the modern concept of a media franchise.
Most jurisdictions provide for the use of trademarks to be licensed to third parties. The licensor 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.
This conflict is easily resolved when the domain name owner actually uses the domain to compete with the trademark owner. Cybersquatting, however, does not involve competition. Instead, an unlicensed user registers a domain name identical to a trademark, and offers to sell the domain to the trademark owner. Typosquatting—those registering common misspellings of trademarks as domain names—have also been targeted successfully in trademark infringement suits. "", on the other hand, tend to be protected as free speech, and are therefore more difficult to attack as trademark infringement.
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 to 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 confusingly similar to a registered trademark is used for a non-trademark related website, the site owner will not be found to have infringed where they do not seek to capitalize on the mark's goodwill for their 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".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)) 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".(d)(1)(A)
This international legal change has also led to the creation of ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) and other dispute policies for specific countries (such as Nominet UK's DRS) which attempt to streamline the process of resolving who should own a domain name (without dealing with other infringement issues such as damages). This is particularly desirable to trademark owners when the domain name registrant may be in another country or even anonymous.
Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trademarks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names.
As with other trademarks, the domain name will not be subject to trademark 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 registerable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. An example of such a domain name ineligible for trademark or service mark protection as a generic term, but which currently has a registered U.S. service mark, is "HEARSAY.COM".
Among trademark practitioners there remains a great deal of debate around trademark protection under ICANN's proposed generic top-level domain name space expansion. World Trademark Review has been reporting on the at times fiery discussion between trademark owners and domainers.
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.
Persons residing outside the EU must have professional representative to the procedures before EUIPO, while representation is recommended for EU residents.
One of the tasks of an EUTM 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 EUIPO, e.g. English, Spanish, German.
Pursuant to Article 6 bis of the Paris Convention,Paris Convention: Article 6 bis, Paris Convention countries are empowered to grant this status to marks that the relevant authority considers are 'well known'. In addition to the standard grounds for trade mark infringement (same/similar mark applied same/similar goods or services, and a likelihood of confusion), if the mark is deemed well known it is an infringement to apply the same or a similar mark to dissimilar goods/services where there is confusion, including where it takes unfair advantage of the well-known mark or causing detriment to it.Hong Kong Trade Marks Ordinance section dealing with infringement: Cap 559, s.18
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).
A number of trademark laws merely implement obligations under Article 16.3 of the TRIPS Agreement and protect well-known registered trademarks only under the following conditions: 1- that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation 2- that the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and 3 – that their interests are likely to be damaged by such use.