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Introduction to Trademarks


 


Learn the Language

Updated March 2017

  1. What is intellectual property?
  2. The term “intellectual property” (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; words, names, slogans, images, and other signifiers used in commerce, such as logos, symbols, and phrases; and proprietary business information.

    Just as real property receives certain legal protections, IP is protected by a variety of legal schemes, such as patent, copyright, trademark, design, and trade secret laws. In general, it is useful to remember that an idea in and of itself cannot be protected; rather, it is the expression or the embodiment of the idea that is protected.

  3. What is a trademark?
  4. A trademark serves as an identifier of source by distinguishing the goods and services of one person or company from those of another. Traditionally, a trademark will consist of a word, a logo, or a combination of both. The word (or words) may be invented (EXXON, XEROX, KODAK), or it may be any other word that does not describe the goods and services covered by the trademark. A trademark may also include letters (BMW, KPMG, IKEA), numerals, or combinations of both (O2, 3M, F1, 4711). A logo may be an abstract design (the Mercedes Benz three-pointed star within a circle), a stylization (the Shell yellow-and-red stylized scallop shell), or a simple reproduction of everyday objects or images.

    A trademark may also be a name (GIORGIO ARMANI, HUGO BOSS, MARILYN MONROE), a slogan (GOT MILK?, THE MAGIC OF MACY’S, JUST DO IT., Vorsprung durch Technik), a symbol (McDonald’s golden arches), a device (Apple’s iPod) (symbols and devices may be logos), a package design (the Coca-Cola bottle), an animated image (Microsoft “Windows,” formed from colored points), or a combination of these that serves this source-identifying purpose. Phrases, such as Taylor Swift’s “Party Like It’s 1989,” have also been trademarked. Trademarks are commonly used in website domain name registrations.

    In some jurisdictions, a sound (the NBC chimes; MGM’s roaring lion), a color (Home Depot’s Bright Orange; Tiffany blue), a smell (freshly cut grass, for tennis balls; flowery musk smell in Verizon stores), or a hologram (1997 MasterCard Globe Hologram Design) can be a trademark. These are referred to as nontraditional marks. (See FAQ #7.)

    Depending on the country, “trademark” may, alternatively, be written as “trade mark” or “trade-mark,” or with a TM symbol.

  5. What is a service mark?
  6. A service mark is similar to a trademark, but it is used to identify one’s services that are sold, rendered, or advertised and to distinguish them from those of another (e.g., SINGAPORE AIRLINES, CITIBANK). Often, the terms “trademark” and “mark” are used interchangeably to refer to either a trademark or a service mark. In such cases, a TM or SM symbol may also be used to denote a service mark in certain jurisdictions.

    See also Service Marks Fact Sheet

  7. What is a copyright?
  8. A copyright is a bundle of rights granted to creators of original works for a limited period of time (often the life of the creator of the work, plus a certain number of additional years). Traditional copyrightable subject matter includes artistic, dramatic, literary, or musical works presented in a tangible medium (such as paintings, photographs, books, songs, films, CDs, and DVDs); software can also be copyrightable. Copyrighted website images, such as those displayed on online marketplaces, can also be protected. Typically, copyright protection begins as soon as a work is fixed in a tangible medium (no registration is required); however, depending on the jurisdiction, registration may be required or helpful in order for the copyright owner to obtain certain infringement remedies. In addition, in certain jurisdictions, the timing of registration may affect the types of remedies that are available.

  9. What is a patent?
  10. A patent is a set of exclusive rights granted to an inventor for a limited period of time (usually 20 years for a utility patent) in exchange for the public disclosure of an invention. Depending on the jurisdiction, the patented invention must (1) be new or novel, (2) be non-obvious or involve an inventive step, and (3) be useful or susceptible of industrial application. In addition, the invention must constitute “patentable subject matter”—for example, processes, machines, articles of manufacture, or chemical compounds. Protection is not automatic, as it typically is with a copyright; registration is required.

    Because patented works are, by definition, considered to be useful to society, patent terms are considerably shorter than copyright terms, giving the public access to inventions more quickly.

    In addition to the types of patents discussed above (i.e., “utility patents”), certain jurisdictions also offer separate protection for an article’s unique external appearance or design (i.e., a “design patent”), which may also have a different term (e.g., in the United States the term for a newly filed design patent is 15 years from the date of grant of the design patent).

  11. What is a trade secret?
  12. A trade secret generally consists of confidential, proprietary business information that provides a business with a competitive edge in the marketplace. In various jurisdictions, trade secrets may include, for example, confidential manufacturing, industrial, and sales information as well as other types of confidential commercial information, such as customer and distributor lists and profiles. Examples of trade secrets are the secret formulas for Coca-Cola and Kentucky Fried Chicken. Generally, an application is not filed for a trade secret. Rather, in various jurisdictions, protection for a trade secret may remain in effect so long as the information remains confidential.

  13. What is a nontraditional mark?
  14. Elements other than words, logos, or graphic designs can sometimes serve to identify the source of goods or services, thus performing the function of a trademark. These elements include sound, scent, taste, touch, shape, and motion. Such more unusual forms of source identification are called nontraditional marks. (See also FAQ #8.)

    The level of protection such marks receive varies among jurisdictions; what is considered a protectable nontraditional mark in one jurisdiction may not be granted any protection in another.

    See also Nontraditional Trademarks Fact Sheet

  15. What is a three-dimensional mark?
  16. If a three-dimensional shape or three-dimensional packaging serves as an identifier of source for the relevant goods or services, it may be protectable as a three-dimensional trademark.

  17. What is the Madrid System?
  18. The Madrid System is a system for the international registration of marks. It provides a means to seek protection for a trademark simultaneously in a large number of jurisdictions (Currently, the system comprises 98 members covering 114 countries, representing 80 percent of world trade.) The system is governed by two separate international treaties, the Madrid Agreement (Agreement) and the Madrid Protocol (Protocol). Under the Agreement, nationals of any signatory may secure protection of their trademark, registered in the country of origin, in all other states that are parties to the Agreement. Under the Protocol, nationals of any signatory may secure protection in countries and jurisdictions that are contracting parties to the Protocol based on a pending application or registration in the country or jurisdiction of origin. Both the Agreement and the Protocol are administered by the International Bureau of the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland. As of September 1, 2008, for countries bound by both the Agreement and the Protocol, only the provisions of the Protocol apply. Consequently, from that date, International Registrations are governed exclusively by the Protocol (1) in countries and jurisdictions that are party only to the Protocol and (2) in countries that are party to both the Protocol and the Agreement. There are no longer any countries that are bound solely by the Agreement.

    See also Madrid Protocol Fact Sheet

  19. What is a European Union Trade Mark?
  20. The European Union Trade Mark (EUTM) (formerly Community Trade Mark) system offers trademark owners a unified system of protection throughout the European Union (EU) with the filing of a single application. If successful, this one application results in an EUTM registration that is recognized in all member states of the EU. As new member states are added to the EU, the coverage of existing EUTMs automatically expands, without any action or payment required of the EUTM owner; the protection of an extended EUTM in a new member state, however, dates from the admission date of the member state rather than the filing date of the EUTM. The initial registration period is ten years from the date of filing of the EUTM application.

    The registering authority is the European Union Intellectual Property Office (EUIPO) (formerly Office for Harmonization in the Internal Market), based in Alicante, Spain. An EUTM registration may be beneficial not only because it is a time- and cost-saving procedure but also because genuine use in one member state may be sufficient to protect an EUTM from cancellation on the ground of non-use in all member states. On the other hand, there is the risk that if a ground for rejection applies in just one of the member states, the applied-for mark cannot be registered as an EUTM, although conversion to an application for a national trademark registration is possible in some cases.

    See also European Union Trade Mark Fact Sheet

  21. What is a Community Design?
  22. A Community Design is a design that is protected in each of the member states of the EU. The registering authority is the EUIPO. (See FAQ #10.) The Community Design Regulation (Council Regulation (EC) No. 6/2002 of Dec. 12, 2001) creates protection for both Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs). UCD protection, which is automatic, lasts for a maximum single period of three years from the date of disclosure. RCD protection can last from the initial five-year period up to a maximum of 25 years. The holder of an RCD has the exclusive right to use the design and to prevent any third party from using it without consent.

    See also Community Design Fact Sheet

  23. What is an industrial design?
  24. An industrial design is the aesthetic, nonfunctional aspect of a product, such as its packaging, color, shape, ornamentation, texture, materials, or a combination of these. Many jurisdictions have intellectual property laws that protect industrial designs. (See FAQ #11.)

  25. What is a utility model?
  26. Like a patent, a utility model protects an invention; however, utility model laws typically provide shorter protection terms and have less-stringent requirements for obtaining protection.

    Whereas industrial design laws focus on a product’s aesthetic features, utility model laws focus on a product’s practical or useful features.

  27. What is a certification mark?
  28. A certification mark is a word, name, symbol, or device, or any combination thereof, that is used by a person (either natural or legal) other than the owner of the certification mark to certify a region, material, mode of manufacture, quality, accuracy, or other characteristics of the goods or services of that person, in accordance with the standards defined by the owner. The owner of a certification mark does not use the mark; rather, the owner allows persons who meet a certain set of standards to use the mark on or in connection with their own goods or services.

    Certification marks may also be used to indicate that the work or labor on the goods or services was performed by members of a union or another organization. Examples of certification marks are the GOOD HOUSEKEEPING SEAL OF APPROVAL and UNDERWRITERS LABORATORIES (UL) Certification Marks for product safety. Other examples include the CERTIFIED ASTHMA & ALLERGY FRIENDLY Certification Mark and the International FAIRTRADE Certification Mark, which guarantee that product production adheres to specific standards.

    The recent EU trademark reform created a new EU Certification Mark, which will be introduced 21 months from the publication of the new European Trade Marks Directive (Directive (EU) 2015/2436 of Dec. 16, 2015)—that is, on September 16, 2017. An EU Certification Mark allows the proprietor (a person, institution, or other body) to permit others to use the mark for the purpose of guaranteeing to the relevant public that the goods or services certified comply with certain certification requirements (in accordance with Article 74a–74k of Council Regulation (EC) No. 207/2009 of Feb. 26, 2009, as amended by Regulation (EU) 2015/2424 of Dec. 16, 2015, with effect from Oct. 1, 2017).

    See also Certification Marks Fact Sheet

  29. What is a collective mark?
  30. A collective mark is a form of trademark or service mark that is owned by a cooperative, an association, or any other collective group, whose members use the mark to identify their goods and services and distinguish their goods and services from those of non-members, and to indicate membership in the group. An example of a collective mark in the United States is REALTOR, which identifies members of the National Association of Realtors.

  31. What is a geographical indication?
  32. A geographical indication (GI) is a word or symbol that indicates the geographical origin of a product and/or the specific features attributable to its geographical origin. For example, BORDEAUX is a GI for wine originating from the region of Bordeaux in the south of France.

    Each country approaches the protection of GIs differently. In some jurisdictions, a GI must be registered to be protected, whereas in others nothing formal is required. To ensure protection of their GIs, many countries have entered into bilateral, multilateral, and international agreements. Generally, once GI protection exists, all bona fide producers of a covered product may use the GI in relation to the product in question provided certain standards are met.

    See also Geographical Indications Fact Sheet

  33. What is a trade name?
  34. A trade name is a name used by a company in its business activities. Also known as a commercial name, a company’s trade name may also be its corporate name, and it may or may not be the subject of trademark and/or service mark registrations, depending on the context in which it is used. An officially approved corporate name can be used on legal documents, but if it infringes another’s trade name, trademark, or service mark, it cannot be used in ordinary trade.

  35. What is trademark infringement?
  36. In legal terms, an infringement refers to a violation of a law or a right.

    Trademark infringement is the interference with or violation of the trademark rights of another through the use of its mark or a confusingly similar mark without the authorization of the party (or any licensees, provided such authorization was within the scope of the license). The basic test for trademark infringement is whether the use of a trademark by one party is such that it can create a likelihood of confusion among consumers in the relevant marketplace in relation to an identical or similar trademark belonging to another party. A trademark does not have to be an exact copy of another mark in order to be considered infringing.

    While the legal definition of infringement varies somewhat between jurisdictions, the most common standards for determining infringement are: (a) close similarity of a mark and its associated goods and/or services to a prior mark and its associated goods and/or services; or (b) use of a mark that creates a likelihood of confusion with a prior mark among the relevant consumers. Trademark law in some jurisdictions incorporates both concepts.

    See also Trademark Infringement Fact Sheet

  37. What is likelihood of confusion?
  38. “Likelihood of confusion” and “confusingly similar” are terms of art that refer to the standard required to prove infringement of a trademark. Specifically, if the relevant consuming public is likely be confused or mistaken about the source of a product or service, that is, if a later mark is confusingly similar to an earlier one, the earlier mark has been infringed.

  39. What are famous marks and well-known marks?
  40. If a mark is legally determined to be famous or well known, it may be afforded a broader scope of protection than a mark that does not have such a determination, which means that infringement may be easier to establish. Also, in many jurisdictions famous marks are protected against even noncompeting, unrelated uses, on the basis that such use of a confusingly similar mark will dilute the distinctiveness of the famous mark.

    Although some jurisdictions treat famous marks and well-known marks as synonymous, most jurisdictions distinguish between them. In these jurisdictions, famous marks enjoy a higher degree of reputation than well-known marks. Typically, to be protected, a famous mark must be registered in its home country, whereas a well-known mark usually is protected without the need for registration. On the other hand, a well-known mark often will be protected only for the goods and services with which it is already associated, whereas a famous mark may be protected from unauthorized use in connection even with noncompeting goods and services. Thus, generally, it is more difficult to prove that a mark is famous than that it is well known.

    See also Famous and Well-Known Marks Fact Sheet

  41. What is trademark dilution?
  42. While the law differs from jurisdiction to jurisdiction, in general trademark dilution involves the unauthorized use of a famous mark in connection with goods or services that do not compete with those of the trademark owner, causing consumers to associate the mark with the junior, or unauthorized, user in addition to the owner. As a result, the ability of the mark to identify a single source of origin of the covered goods or services is diminished or “diluted.”

    There are two kinds of dilution: blurring (where the connection in consumers’ minds between the owner’s trademark and its goods or services is weakened) and tarnishment (where the junior user’s use is unwholesome or the mark is used in connection with low-quality or otherwise inferior products).

Additional INTA Resources

Geographical Indications, Certification Marks, and Collective Marks: An International Guide

A searchable guide of basic, practical information on protection for geographical indications, certification marks, and collective marks in numerous jurisdictions worldwide.

European Union Trade Mark and Madrid Protocol Comparison Fact Sheet

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