Definitions – General

A trademark may be any word (POISON), name (GIORGIO ARMANI), slogan (GOT MILK?), symbol (McDonald’s golden arches), device (the Pillsbury Doughboy), package design (Coca-Cola bottle), or combination of these that serves to identify and distinguish a product from others in the marketplace and identify it with its source. Even a sound (NBC chimes), color (green-gold shade for Qualitex dry cleaning press pads), smell (freshly cut grass for tennis balls), or hologram (1997 MasterCard Globe Hologram Design) can function as a trademark under some circumstances.

A service mark is similar to a trademark, but it is used to identify and distinguish the sale, rendering or advertising of one’s services from those of another (e.g., SINGAPORE AIRLINES or CITIBANK). Often, the term “mark” is used interchangeably to identify either a trademark or a service mark.

See also Service Marks

A copyright protects the original way an idea is expressed, not the idea itself. This includes artistic, literary, dramatic or musical works presented in a tangible medium such as a book, photograph, CD, or movie.

A patent protects a new and useful idea, which includes a process and/or machine. A patent is granted by the government, providing an inventor with exclusive rights to make, use and sell a patented invention. Patents have a fixed term, usually 17 to 20 years.

A three-dimensional mark is a trademark that typically represents a three-dimensional form, such as packaging, containers, product shapes or product representations, which have become associated with the manufacturer or distributor of the product or the product contained therein.

See also Nontraditional Trademarks

A "design" is the appearance of the whole or a part of a product (i.e., packaging, color, shape, texture, materials). A Community Design is a design that is protected in each of the member countries of the European Union. The Community Design Regulation creates protection for both Registered Community Designs (RCD) and Unregistered Community Designs (UCD). UCD protection is automatic protection that lasts for a maximum single period of 3 years from the date of disclosure. RCD protection can last from the initial 5 year period up to a maximum of 25 years. The holder of an RCD has the exclusive right to use it and to prevent any third party from using it without consent.

See also Community Design

An industrial design is a product’s overall form and function or aesthetic nature, distinct from any technical or functional aspects (which may be covered by a utility patent). As a general rule, an industrial design consists of three-dimensional features, such as the shape of a product; two-dimensional features, such as ornamentation, patterns, lines or color of a product; or a combination of one or more such features.

A utility model protects an object, a configuration, or a structure providing some kind of practical benefit or advantage. The mechanism, instrument or tool protected by the utility model is characterized by the benefit(s) it provides or by its practical features, and not by its aesthetic features, as is the case with industrial designs. Instruments such as utility patents and utility model or petit patents are provided in various countries and regions.

A collective mark is a trademark or service mark used by members of a cooperative, an association or another collective group or organization, to indicate their association with that group. An example of a collective mark is the AFL-CIO designation for use by members of certain trade unions.

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 other organization. Examples of certification marks are the GOOD HOUSEKEEPING SEAL OF APPROVAL and VIDALIA for onions.

See also Certification Marks

A Geographical Indication ("GI") is a word or symbol that indicates a product’s origin and/or specific features of a product attributable to a specific origin. For example, BORDEAUX is a geographical indicator 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 other jurisdictions nothing formal is required. In order 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

A trade name is used to identify an entity carrying on business activities and is the actual legal or other name used when conducting business by that entity. A trade name can also function as a trademark or service mark, and be the subject of trademark and/or service mark registrations, depending upon the context in which it is used.

In legal terms, an infringement refers to the violation of a law or a right. Trademark infringement is the violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license).

See also Trademark Infringements and Statutory Redress (U.S.)

"Likelihood of confusion" or "confusingly similar" both 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 sold using the mark in question, then likelihood of confusion exists, and the mark has been infringed.

See also Trademark Infringements and Statutory Redress (U.S.)

The analysis of whether a trademark is famous or well known varies from jurisdiction to jurisdiction. Although some jurisdictions treat famous and well-known marks as synonymous, most jurisdictions distinguish between famous and well-known marks giving famous marks a higher degree of reputation than well-known marks. Famous marks are those that enjoy a high degree of consumer recognition (e.g., COCA-COLA). In most jurisdictions fame is determined on a case-by-case basis within the context of an infringement proceeding or administrative challenge. Evidence relevant to the fame of a trademark may include sales and revenue figures, geographical scope of use, channels of trade, distinctiveness, registrations in home and other countries, past enforcement efforts, and the existence of similar marks owned by third parties.

The determination of whether a mark is well known is conducted on a jurisdiction by jurisdiction basis, and the factors reviewed are similar to those for famous marks. The World Intellectual Property Organization’s (WIPO’s) report entitled Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks recommends the following factors to determine whether a mark is well-known: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use or promotion of the mark; the value of the mark; and the record of successful enforcement of the mark.

See also Famous and Well-Known Marks

While the law differs from country to country, in general, trademark dilution involves the unauthorized use of a famous trademark 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 is “diluted.” In a dilution cause of action in the U.S., it is not necessary to prove a likelihood of confusion, nor is there any need to show competition between the goods and/or services of the parties. Dilution causes of action are normally brought when the defendant's use of the mark causes either blurring (where the connection in consumers' minds between the senior user's trademark and its goods or services is weakened) or tarnishment (where the junior user's use is unwholesome, or the mark is used in connection with low quality or otherwise inferior products).

See also Trademark Dilution in the United States

Trademark Symbols

The symbol ™ is used by companies to notify the public to a claim of rights in a trademark. A ™ is usually used in connection with an unregistered trademark and does not have any legal status. It is used to inform potential infringers that a term, slogan, logo, or other indicator is being claimed as a trademark of that company or individual.

See also Marking Requirements (U.S.)

The symbol ^SM functions similarly to the ™ symbol. Whereas the ™ symbol is used in connection with tangible goods, the ^SM symbol is used in connection with services, e.g., banking services or legal services.

See also Marking Requirements (U.S.)

The ® symbol is a notice of registered ownership used in many countries or regions to advise the public that a trademark or service mark is registered and providing constructive notice of the legal ownership status of the mark with which it is used. The ® symbol should be used only in connection with registered marks. Use of ® with any unregistered trademark may result in claims of fraud or other difficulties in trying to obtain and/or enforce trademark rights.

See also Marking Requirements (U.S.)

There is some flexibility on how and where to use the TM, SM, and ® symbols. Placing it at the upper right hand corner, the lower right hand corner, or level with the mark or logo itself are all typically acceptable ways of displaying the appropriate symbol. These symbols are most often placed adjacent to the mark in superscript (smaller, raised) form. EXAMPLE: COCA-COLA®. The TM, SM or ® need only appear in the first or most prominent mention of a mark in all documentation, including press releases, articles, and company reports.

See also Marking Requirements (U.S.)

Trademark Strength

A generic term is a word or phrase that is (or has come to be understood as) the common term associated with the category of goods or services to which it relates. For example, “clock” is a generic term for timepieces. Generic designations do not function as indicators of origin and are therefore not registrable or protectable as trademarks.

See also Trademarks vs Generic Terms

Ideally, when choosing a new trademark you should select a mark that is inherently distinctive. The strongest types of trademarks are coined terms such as XEROX for copiers, or GOOGLE for online services) and arbitrary terms (using a real word for a different type of offering, such as APPLE for computers).

See also Considerations for Selecting a Trademark

Yes, it is possible for a trademark, even a registered trademark, to lose its capacity to function as a trademark identifying a particular source, such as when a trademark owner permanently stops using its mark, intentionally abandons its mark, or, in some jurisdictions, fails to renew a registration within the specified period after the expiration of the term of registration, or the trademark owner allows others to use a mark as a generic term for a product or service.

See also:

Maintenance and Renewal
Trademarks vs Generic Terms
Trademark Portfolio Management Strategies

Trademark Use

ALWAYS distinguish a trademark from surrounding text by using the ® symbol: all capital letters or at least initial caps; bold, italic, or underlined fonts; by placing the trademark within “quotes”; or in a stylized or graphic form.

EXAMPLES:

• Canon® cameras
• ROLLS-ROYCE automobiles
• Kleenex tissues
• Scotch brand transparent tape
• “adidas” footwear

ALWAYS use the trademark consistently.

EXAMPLES:

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

NEVER use a trademark as a noun. Always use a trademark as an adjective modifying a noun.

EXAMPLES:

• LEGO toy blocks
• Amstel beer

NEVER use a trademark as a verb.

EXAMPLES:

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

NEVER modify a trademark to the plural form.

EXAMPLES:

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

NEVER modify a trademark from its possessive form, or make a trademark possessive.

EXAMPLES:

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

See also:

It is permissible to use another company’s trademark when referring to that company’s product in text, where it is being used to truthfully refer to that a product or service affiliated with that trademark. It may not be used in a way that might mislead others as to that company’s affiliation, sponsorship or endorsement of your company, products or services, e.g., using a logo instead of simply the text form of a trademark, or using the trademark more prominently or frequently than necessary.

Yes. The laws of many countries prohibit the registration of marks comprising their flags or national symbols, as well as those of other nations. Many countries also have restrictions on the use of marks associated with their political leaders and on marks of certain organizations, such as the Olympics and the Red Cross.

Use of trademarks in text online is generally no different from use of a trademark in print. Certain use of another’s trademark such as in your metatags, as wallpaper on your website, or as a keyword purchased from a search engine might subject you to legal liability.

While the law differs from country to country, in general, securing a domain name, in itself, does not guarantee that you can safely use the name in your business, or that you have acquired protectable trademark rights in your domain name or a phrase within it.

See also:

Trademark Registration

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

See also Country Guides: Essential Information on Trademark Protection Worldwide

Advantages may include:

• Visible deterrent and constructive notice to potential infringers by use of the ® symbol;
• Citation by the Trademark Office in applications to register potentially confusingly similar trademarks;
• Ability to grant a valid license to another party to use the trademark;

In some countries, a registration is a requirement for enforcing rights in the mark against infringers.

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.

In general, any individual, organization, or governmental or business entity using or proposing to use a trademark to identify its goods or services, may be entitled to register its mark.

The United States Patent and Trademark Office (USPTO), and most other trademark registries throughout the world, do not require trademark applicants to be represented by an attorney. There may be instances in which the issues are particularly complicated such that a pro se applicant may wish to seek legal counsel. Companies and individuals who wish to self-file applications should check the website of the trademark office in the country in which they wish to file an application to confirm that an application may be filed pro se.

See also Country Portals for links to trademark offices.

The answer depends upon how you are going to use the mark and in which country you are seeking registration. In some countries, it is possible to obtain one trademark registration covering all of the goods or services on which a mark is used. Other countries require a separate registration for each different class of goods and services.

See also Country Guides: Essential Information on Trademark Protection Worldwide

Filing fees vary on a country-by-country basis and usually increase depending on the number of classes that are covered by the application. In addition to the initial filing fees, additional fees may be incurred prior to the issuance of a certificate of registration. For example, if using local counsel, fees for preparing the application will be incurred. Some countries require the payment of publication and registration fees. In countries in which use of a mark must be shown before an application will issue to registration, there will be fees associated with filing affidavits of use if evidence of use was not submitted with the initial application.

See also:

Many modern trademark offices have websites and can be contacted by individuals. Some of these offices allow individuals to file trademark applications and make simple responses to office actions (which are letters requesting information or amendments to aspects of the application during the application process). These offices can also be contacted by post or by telephone using the contact information listed in the links noted above.

See also Country Portals

In most jurisdictions, a search is not required before filing an application to register a trademark, but it is almost always advisable to conduct a search. Searching to be sure that the mark (or a similar one) is not already in use by another for the same or similar product can help avoid the investment of time, energy and money in adopting a mark that may have to be abandoned if a conflict is later discovered.

The first and most important step in all countries is to search national trademark office records to determine the existence of prior applications and registrations that might preclude your use and registration. In countries that recognize common law rights, you must also try to determine whether your proposed mark has been used in the marketplace by conducting online searches and/or having a professional trademark research firm conduct a thorough search for you.

See also:

When translating text or documents into a foreign language, trademarks should not usually be translated. Situations may arise that require translation of a mark used in text from or into languages that are based on a different character set, such as Japanese Kanji characters, than the original.

Yes, this is possible in most countries as long as the mark is used in connection with goods and services that are easily distinguishable, and consumer confusion will not happen in the marketplace.

A trademark registration is perpetual as long as the registration is renewed periodically. Registration periods vary by country, but in most countries registrations must be renewed every 10 years. One exception is Canada, with a registration period of 15 years. Moreover some countries provide for statutory renewal periods counted from the date of application; other countries count from the date of registration.

See also Maintenance and Renewal

Many countries, including the United States and Canada, provide some common law rights for unregistered trademarks, ultimately allowing the first user of a trademark to claim enforceable exclusive rights. These theories essentially make protection available without registration. If you plan on relying on this type of protection, it would be wise to contact a trademark professional for specific advice and strategy planning.

Generally, yes, but only for a few years. In many countries, including the United States, a trademark application can temporarily reserve the mark for a party having a bona fide intent to use the mark.

In several other jurisdictions, a registration can be obtained before the mark is used in that country.

There are a number of ways to dispute the use of your trademark by a third person, including sending a "cease and desist" letter or filing suit against the other party. An administrative procedure might be available to you, also, where the third party has registered and is using a domain name confusingly similar to your trademark.

See also Trademark Infringements and Statutory Redress (U.S.)

International Trademark Rights

You should consider registering your mark in any countries in which you currently offer your products or services under that mark and you should also consider filing in those countries where you intend to use the mark for your products or services in the future. Use of a mark is not required before filing an application in the U.S. and in most other countries.

Yes. Several international agreements coordinate the procedure of filing applications for trademark registration in more than one country. A registration with the Benelux Office for Intellectual Property (BOIP) covers Belgium, Luxembourg and the Netherlands. A Community Trade Mark (CTM) protects a trademark in all of the member countries of the European Union. The Madrid Agreement and Protocol provide an opportunity to file an application for an international registration that will cover multiple member countries. Filing with the African Intellectual Property Organization (OAPI) protects trademarks in all of the member countries in Africa. There is also the possibility of filing with the African Regional Industrial Property Organization (ARIPO), under which a trademark owner can protect its trademark in all of the member states in southern Africa.

See also:

A CTM is a single unitary trademark right that must be applied for, and which provides protection for a trademark or service mark in all of the member countries of the European Union. A CTM registration may be beneficial as use in one member country may be considered to be use in all member countries. There are also administrative efficiencies through maintaining a single registration.

See also:

The Paris Convention is an international treaty concerning the protection of intellectual property. The nationals of any country that is a member of the Paris Convention are afforded the same advantages with respect to intellectual property that the national law grants it citizens.

See also International Treaties

Under the Paris Convention, any person who files a trademark application in a member country may claim priority of that filing date if an application is filed in any other member country within six months from the date the original application was filed.

The Madrid System constitutes the Madrid Agreement and Madrid Protocol. Under the Madrid Agreement the nationals of any signatory country may secure protection of their trademark registered in the country of origin in all other Madrid Agreement Countries. Under the Madrid Protocol, nationals of any signatory country may secure protection in member countries based on a pending application in the country of origin. Both the Madrid Agreement and Madrid Protocol are administered by the International Bureau of WIPO. As from September 1, 2008, for States bound by both the Madrid Agreement and the Madrid Protocol, only the provisions of the Protocol apply. Consequently, from this date, International Trademark Registrations are governed by the Madrid Protocol only in all member countries which are a party to the Protocol and also in those which are party to both the Protocol and the Agreement. The Agreement will only remain applicable in relations with those member countries bound solely by the Agreement.

See also Madrid Protocol

An International Registration (IR) is the designation for a registration secured under the Madrid System.

See also Madrid Protocol

ARIPO is the “African Regional Industrial Property Organization” which was formed by members of certain English-speaking African nations and enables members to file one regional application for the protection of trademarks in member countries. As of 2009, ARIPO registrations cover 15 member countries.

See also International Treaties

Also known as the African Union, OAPI is the “African Intellectual Property Organization” which was formed by members of certain French-speaking African nations and enables members to file one regional application for protection of trademarks in member countries. As of 2009, OAPI registrations cover 16 member countries.

See also International Treaties

The Andean Pact is an agreement among Bolivia, Colombia, Ecuador and Peru, members of the Andean Community, which provides for one common trademark law among the member countries.

Does the Andean Pact Provide a common registration?

No, rather, it provides for certain reciprocal rights to be available upon request of the trademark owner. For example, an entity that first applied for registration of a trademark in any Member Country, may lodge an opposition against a similar mark filed in the other Member Countries. Moreover, use of a trademark in any one of the Member Countries constitutes use of the trademark in any Member Country for purpose of non-use cancellation proceedings.

See also International Treaties

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. In a few countries, including the United States, a trademark can have multiple owners in different geographical regions of the same country.

Assignments, Licenses and Valuation of Trademarks

Yes, a trademark owner may sell or “assign” trademarks rights to another person or entity in one or more jurisdictions. Many individual jurisdictions have specific laws or regulations that govern the requirements for a valid sale or assignment of trademarks. These requirements vary from jurisdiction to jurisdiction, but can include the form of an assignment, whether notarization is required, the type of consideration that must be expressed, and whether the goodwill of the mark must be transferred. The laws of each jurisdiction where a trademark exists should be reviewed before undertaking to sell or assign a trademark. Failure to follow such laws or regulations could lead to unanticipated tax consequences or result in the invalidation of the transfer.

See also Assignments (U.S.)

The value of a trademark lies in the goodwill associated with that trademark. However, in many cases it can be quite difficult to ascertain the goodwill and then place a true value on it at a point in time because of the many variables that must be considered. For example, reasonable people can differ on future expectations such as opportunities for growing the trademark and competitive threats and marketplace risks to the trademark. The three most common approaches to value a trademark are the: (1) income approach which assigns the value of a trademark based on past and future expected profits associated with the mark; (2) the market approach which assigns a value based on comparisons of transactions such as royalty rates involving similar assets; and (3) the cost approach which assigns a value based on the the cost of creating a trademark and the cost of replacing the existing trademark with a trademark with the same market power. Other approaches to valuing trademarks are also used depending on the nature of the transaction and the reason for the valuation. Many companies specialize in the valuation of trademarks. These companies may provide significant assistance in attributing a monetary value to a trademark.

See also Brand Valuation

Yes, you can allow others to use your trademark in commerce while still retaining ownership by entering into a license agreement with that person or entity. A trademark license is an agreement between the trademark owner (the “licensor”) and another person(the “licensee”) in which the licensor permits the licensee to use the licensor's trademark. At a minimum, a typical license agreement will have provisions permitting the licensor to control the quality of the goods or services produced by the licensee under the licensed trademark, and also include provisions governing the term (length) of the license agreement, the royalty rate paid by the licensee to the licensor for use of the trademark, and whether the licensee has exclusive rights to use the trademark. In the United States and in other countries such as Canada and the United Kingdom, it is essential that the license agreement have quality control provisions because without such provisions the trademark may be vulnerable to attack or even be deemed abandoned by the licensor. The rational for requiring quality control is that consumers tend to rely on a trademark’s reputation in terms of quality when purchasing goods and/or services, and the licensor thus has a duty to exercise sufficient control over the quality of the goods and services offered by the licensee.

See also Trademark Licensing