A trademark is any word (Poison), name (Giorgio Armani), symbol or device (the Pillsbury Doughboy), slogan (Got Milk?), package design (Coca-Cola bottle) or combination of these that serves to identify and distinguishes a specific product from others in the market place or in trade. Even a sound (NBC chimes) color combination, smell or hologram can be a trademark under some circumstances. The term trademark is often used interchangeably to identify a trademark or service mark.

A service mark (Harrods) is similar to a trademark, but it is used in the sale or advertising of services to identify and distinguish the services of one company from those of others.

"CTM" is the abbreviation for "Community Trade Mark." A CTM provides protection for a trademark in the 25 current member countries of the European Union (Austria, Belgium, the Czech Republic, Cyprus, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden and the United Kingdom). For further information, see INTA's Basic Fact Sheet on the Community Trade Mark.

A generic term is a word or phrase that is or has come to be the common term associated with or known as a particular category of goods or services to which it relates, thereby ceasing to function as an indicator of origin. For example, “clock” is a generic term for timepieces. Generic designations are not registrable or protectable.

A trademark may potentially become generic if it becomes so widely known and used with a particular category of goods or services as to designate the category of goods or services. In such instances, the "mark" will not be registrable and a previous registration for such a "mark" may be subject to cancellation by a third party.

Examples of marks that have become generic over time include “escalator,” “linoleum,” “zipper” and “yo-yo.” This loss of trademark status is sometimes referred to as “genericide.” It should be noted that what is generic in one country may not necessarily be generic in another, for example, the designation ASPIRIN is generic in the U.S. but is not in other countries.

A ™ is usually used to indicate an unregistered trademark. It is an informal notification that there is a public claim as a trademark.

An SM represents an unregistered service mark. It is also an informal notification that there is a public claim as a service mark.

The ® (commonly pronounced "R-in-a-circle" or "Circle-R") is a warning notice to advise the public that the mark is registered and their use provides legal benefits. This notice can be used only with registered marks. Use of a ® with any unregistered trademark may result in claims of fraud. Several other countries also use the ® symbol to indicate that a trademark or service mark is registered in their respective systems.

A trade name is used to identify a company or a business and serves as the name of the company or a business. In contrast, a trademark or service mark is used to identify the source of the products or services that the company or business sells or provides. However, a trade name can also function as a trademark or service mark depending upon the context in which it is used. If a trade name is used as more than just the company name and informs consumers where a product or service is coming from, then it is being used as a trademark or service mark. For example, if the name is used as a noun, ("You can get your traveler's checks from American Express"), it is a trade name; if used as an adjective, ("You can get your American Express traveler's checks here"), it is a trademark.

They all are generally described as intellectual property or intangible property because they are property rights that cannot be touched or felt like personal property (car) or real property (land). However, the terms have different meanings and define different things.

A Trademark (designated by such symbols as ®, ™, SM) protects a word, phrase, symbol and/or design used with a product or service on the market. A trademark is often referred to as a brand. Trademark rights may continue indefinitely, as long as the mark is neither abandoned by the trademark owner nor loses its significance in the marketplace as a trademark by becoming a generic term.

Copyright (designated by the symbol ©) protects the way an idea is expressed, not the idea itself. It includes artistic, literary, dramatic or musical works fixed in a tangible medium of expression such as a book, photograph, choreographic score or movie. Copyright ownership provides a bundle of rights that are exclusive to the owner of the copyright in the work, and allows the copyright owner to prevent others from taking any action, such as copying the work, without authorization. The general rule for a work created on or after January 1, 1978, is that the copyright term lasts for the author's lifetime plus 70 years from the date of the author's death. The term for works made for hire is 95 years from the date of publication.

A Patent protects a new and useful idea, including processes and/or machines. It is granted by the government and provides an inventor (or his/her assignee) with the right to exclude others from making, using and selling a patented invention. Patents have a fixed term, usually 17 to 20 years.

Yes. There are three basic types of trademarks

1. Trademarks and service marks, as described above, used to signify the goods or services of certain producers.
2. Collective marks, used to indicate membership in a group or an association where only members of the group or organization may use the collective mark. An example of a collective mark is the AFL-CIO designation for use by members of certain trade unions.
3. Certification marks, used to certify the quality, regional origin, or other origin of a product or service. A certification mark certifies that a product or service meets a certain standard of quality or is of a regional origin. Examples of a certification marks is the GOOD HOUSEKEEPING SEAL OF APPROVAL and VIDALIA for onions.

Yes, it is possible for a trademark, even a registered trademark, to fall into the ‘public domain’ or lose its function as a trademark identifying a particular source. There are a few ways this may happen.

When the trademark owner permanently ceases using the mark, or intentionally abandons it, the mark owner gives up its exclusive right to use the term or symbol as a trademark. In these circumstances, the owner has, at least implicitly, decided that the mark has no further value to it.

There are other circumstances, however, where the owner still values the mark but, inadvertently or not, misuses or allows others to misuse its mark and, as a result of the misuse, loses the exclusive right to the mark. By allowing others to use a mark as the generic term for a product or service, a mark may become the name for a category (“species”) of goods or services, the “generic” term for the product or service. It thereby ceases to function as a mark and the owner no longer has the exclusive right to use the “mark.”

Examples of this are “escalator” and “zipper.” Each of these terms began life as a trademark.

Proper use of a trademark is essential for its continued protection, value and usefulness. Companies must properly use their trademarks in order to aid the consumers who depend upon their goods and services and to prevent a trademark from becoming generic.

The following are suggested guidelines for the proper use of trademarks:

ALWAYS distinguish trademarks from surrounding text so that it is more conspicuous than the generic name of the product. Trademarks can be distinguished from surrounding text using all capital letters or at least initial caps, bold or italic fonts or by placing the trademark within “quotes,” or, for stylized or graphic marks, in the form associated with the mark.

EXAMPLES:

• ROLLS-ROYCE automobiles
• "adidas" footwear

ALWAYS use proper trademark form and spelling. Do not deviate from the established spelling, including appropriate spaces, hyphens, or other punctuation. Use the trademark consistently. Each deviation creates a new, different trademark. Do not use hyphenated variations or combine the mark with other words.

EXAMPLES:

• Montblanc fountain pen, NOT Mont Blanc
• Nescafé coffee, NOT Nes Café

ALWAYS check to see if the wording you are using includes a trademark; never assume something is generic. Then use both the trademark and the generic terms appropriately.

EXAMPLES:

• "Jet Ski" personal watercraft
• Bubble Wrap packaging material

NEVER use a trademark as a noun. Use the trademark only as a brand name in combination with the common or generic name for a specific product. Always use a trademark as an adjective modifying a noun.

EXAMPLES:

• LEGO toy blocks
• Amstel beer

NEVER modify a trademark to the plural form. Instead, change the generic word from singular to plural.

EXAMPLES:

• tic tac candies, NOT tic tacs
• OREO cookies, NOT OREOS

NEVER modify a trademark from its possessive form, or make a trademark possessive. Always use it the form it has been registered in.

EXAMPLES:

• Jack Daniel's whiskey, NOT Jack Daniels whiskey
• Levi's jeans, NOT Levi jeans

NEVER use a trademark as a verb. Trademarks are products or services, never actions.

EXAMPLES:

• You are NOT xeroxing, but photocopying on a Xerox copier.
• You are NOT rollerblading, but in-line skating with Rollerblade in-line skates.

A good test for correct usage of a trademark is to remove the trademark from the sentence and see if the sentence (generic) still makes sense. If it does not then you are potentially using the mark as the descriptive term or as a verb and not as an adjective followed by a noun as you should.

Removing "BUBBLE WRAP" from the following sentence does not affect the meaning:

EXAMPLE:

• BUBBLE WRAP® cushioning material is useful for packaging components.

Removing " BUBBLE WRAP" from the following sentences destroys the meaning:

EXAMPLES:

• BUBBLE WRAP® is useful for packaging components. (Improper use as a noun)
• BUBBLE WRAP® those components to prevent damage. (Improper use as a verb)

If you would like more information on this subject, we suggest INTA's A Guide to Proper Trademark Use.

A "notice symbol" or "marking" that signifies to the customer or consumer that the term or symbol being used is a trademark or service mark should be placed adjacent to the mark. Notice is important because it informs others of the owner's trademark rights and discourages them from adopting the same or similar trademarks for their products. Proper marking, therefore, helps to reserve the trademark for the owner and prevent confusion that could result if competitors use similar trademarks.These symbols are often put in superscript (smaller, raised) form.

EXAMPLE: COCA-COLA®

• Proper notice or marking for registered trademarks or service marks: ®
• Proper notice or marking for unregistered trademarks: ™
• Proper notice or marking for unregistered service marks: SM

For more information on marking, please see INTA’s Marking Requirements.

When translating text/documents into another language, trademarks should not be translated into a foreign language. There often will not be a literal translation of the term, and the significance of the trademark is not how it might translate but the source of the products or services it identifies.

There are, however, situations that arise requiring translation of a mark used in text from or into languages that are based on a different character set than the original. For example, persons reading in the romance or Germanic languages can not recognize Japanese Kanji characters. In such instances, using a transliteration may be the proper method of displaying the trademark. The translator should, of course, be mindful of the possible problems presented by an un-translated or transliterated trademark, and ensure that there are no negative or undesirable connotations associated with the translated or transliterated trademark. Even without translating trademarks, many countries extend protection of a trademark to equivalent terms (if they exist) in other languages.

Example: “POMME COMPUTER,” which would be rejected as equivalent to APPLE COMPUTER®

As a general matter, it is advisable to obtain the consent of a trademark owner before proceeding with use of their mark. U.S. trademark law, however, does permit the use of another’s mark (whether registered or unregistered) without their consent if the use of the mark is made in good faith for the purpose of merely describing the goods or services to which the mark relates or to accurately indicate compatibility with another’s goods or services. Note, however, that in many countries, comparative advertising is unlawful.

Relevant considerations for determining whether use of another ’s mark constitutes “fair use” include, but are not necessarily limited to, the following:

Bad faith. Intentionally using another’s mark for the purpose of benefiting from the good will associated with the mark is not a permissible use of another person’s mark without their consent.

How the mark is used. Use of another person’s mark should not be made for the purpose of promoting one’s own goods or services without their consent. Visual placement and prominence of the other mark can bear upon whether use of another’s mark may be construed as being for one’s own promotional purposes.

Confusion by consumers. Some uses of another’s mark can suggest sponsorship or endorsement by the mark’s owner and can confuse consumers into believing that there is an association between you and the owner of the mark. This is not a permissible use of another’s mark without their consent.

The guidelines for the use of trademarks online are generally the same as those for using trademarks in print.

If a trademark is acknowledged in the heading of an article or press release, it is not necessary to also acknowledge it within the body of the document. The trademark symbol need only appear in the first or most prominent mention of the mark.

The ™, SM or ® symbol need only appear in the first or most prominent mention of the mark. Omission of the ™, SM or ® symbol does not invalidate or compromise a trademark owner’s rights in a trademark. Its purpose is to alert the public to the ownership of the mark, and it is one of the primary ways to affirmatively protect a mark.

Generally, a trademark should be used with proper notice and with a generic description of the product the first time the mark is used on a page, e.g., “APPLE® computers are sold online.” Thereafter, the mark can be used without the notice, but always with the generic product description - e.g., “APPLE computers are available in stores.” A mark should be used with a generic description of the product each time the mark is used.

The answer depends upon in which country you intend to use your mark. There are some countries in which registration is mandatory in order to obtain rights in a mark. In other countries, including the United States, the use of the mark establishes protectable rights in a mark, even without registering it.

Registration of a trademark in many countries provides additional benefits.

In the United States, for example, registration provides the following advantages:

• The filing date of the application is a constructive date of first use of the mark in commerce (this gives registrant nationwide priority as of that date, except as to certain prior users or prior applicants);
• The right to sue in Federal court for trademark infringement;
• Recovery of profits, damages and costs in a Federal court infringement action and the possibility of treble damages and attorneys’ fees;
• Constructive notice of a claim of ownership;
• The right to deposit the registration with Customs in order to stop the importation of goods bearing an infringing mark;
• Evidence of the validity of the registration, registrant’s ownership of the mark and of registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificates;
• The possibility of incontestability, in which case the registration constitutes conclusive evidence of the registrant’s exclusive right, with certain limited exceptions, to use the registered mark in commerce;
• Limited grounds for attacking a registration once it is five years old;
• Availability of criminal penalties and treble damages in an action for counterfeiting a registered trademark;
• A basis for filing trademark applications in foreign countries.

Similar advantages can be obtained from registering a trademark in most other countries of the world. In some countries, a registration is a requirement for any enforcement activities. Since the advantages necessarily vary from country to country, consult with qualified counsel or local trademark authorities concerning each country in which use or registration of a trademark is desired.

Many countries, including the United States, provide some common law protection for unregistered trademarks. Their laws afford protection to the first party to use a mark with particular goods or services. These protections may include the right to:

• sue for trademark infringement
• recover profits, damages and costs from an infringer
• obtain injunctive relief.

In general, any individual or business entity using or proposing to use a trademark to identify its goods or services, may be entitled to register its mark. The registrability of the mark will, however, be subject to the particular requirements of the country in which registration is sought.

Yes, this is possible in most countries, with limitations in certain cases. As a rule, the same mark may be used and registered by different entities, as long as the mark is used in connection with goods and services that are distinct, such that consumer confusion will not happen in the marketplace. This is facilitated in countries following the International Classification of Goods and Services system, for example, the United States. However, in a country that does not use a formal classification system, for example, Canada, this situation could present certain difficulties since the mark would be used in connection with goods or services that are not clearly distinct. In addition, due care must be exercised as multiple ownership and use of the same mark by different entities could result in destroying the distinctiveness of a mark, thus invalidating the exclusive rights attached to a mark.

Yes, this is possible. Since trademark rights are generally geographic in scope, it is possible for some trademarks to be registered in different countries by different owners. While each country may be viewed as a separate jurisdiction, due consideration must be given to a global market environment. The ownership of a mark by different parties, in different countries, may present serious difficulties if a mark holder wishes to use the brand on a global scale.

Several international agreements coordinate the procedure of filing applications for trademark registration in more than one country. For example, a European Community Trade Mark protects a trademark in all of the member countries of the European Union (there are currently 25 members of the EU). For further information, see INTA’s Basic Fact Sheet on the Community Trade Mark.

The Madrid Agreement and Protocol provide an opportunity to file an application for an international registration that will cover more than 55 and 65 countries respectively. For further information, see INTA’s Basic Fact Sheet on the Madrid Protocol.

Filing with the African Intellectual Property Organization (OAPI) protects trademarks in 16 countries in Africa. There is also the possibility of filing with the African Regional Industrial Property Association (ARIPO), under which a trademark owner can protect its trademark in all of the 15 member states in southern Africa. In addition, a registration with the Benelux Office covers Belgium, Luxembourg and the Netherlands.

The answer depends upon how you are going to use the mark and in which country you are registering. In some countries, including the United States, it is possible to obtain one trademark registration covering all of the goods or services on which a mark is used, regardless of how many International Classes are included. Other countries require a separate registration for each different classes of good and services. Qualified counsel should be consulted concerning these situations. Generally, filing fees are based on the number of International Classes covered by an application, and there typically is not a separate charge to register a mark for different products or services in the same International Class. In countries that charge for each product or service listed in an application, a mark owner may wish to list only those products or services for which protection is actually needed in that country.

Yes. Many countries restrict the use of their own and other countries’ flags or national symbols. In the United States, for example, the trademark statute forbids registration of flags, coats of arms and other insignia of the United States, the States, cities and other countries; the United Kingdom forbids registration of the Royal Coat of Arms and restricts registration of certain national flags; Japan forbids registration of its own and other countries’ flags and crests. Many countries also have restrictions on use of marks associated with their political leaders and on marks of certain organizations, such as the United States Olympic Committee and the Red Cross. Qualified counsel should be consulted prior to adopting a mark comprising a flag, national symbol or leader, or the name or symbol of a national or international organization.

A search is not legally mandated before filing in the United States and most other jurisdictions, but is almost always advisable. Searching to be sure that the mark (or a similar one) is not already in use by another for the same or similar products can help avoid the investment of time, energy and money in adopting a mark that may have to be abandoned if a conflict is discovered later. In some situations, a search before committing to a mark may be helpful, or even necessary, to avoid or defeat a claim of willful infringement. In the United States, the European Union and a number of other countries, the registration authority performs at least some level of search as part of the application process, but these searches are often confined to identifying other pending and registered marks, not identifying unregistered rights that might exist. In short, it is almost always advisable to search a mark before adopting it for use or applying for its registration.