Trademark

Overview

A trademark (also written trade mark or trade-mark) is a type of intellectual property that consists of a word, phrase, symbol, design, or combination thereof that identifies a product or service from a particular source and distinguishes it from others. Trademarks also extend to non-traditional marks like drawings, symbols, 3D shapes like product designs or packaging, sounds, scents, or specific colors used to create a unique identity. For example, Pepsi is a registered trademark associated with soft drinks, and the distinctive shape of the Coca-Cola bottle is a registered trademark protecting Coca-Cola's packaging design. The primary function of a trademark is to identify the source of goods or services and prevent consumers from confusing them with those from other sources. Legal protection for trademarks is typically secured through registration with governmental agencies, such as the United States Patent and Trademark Office (USPTO) or the European Union Intellectual Property Office (EUIPO). Registration provides the owner certain exclusive rights and provides legal remedies against unauthorised use by others. Trademark laws vary by jurisdiction but generally allow owners to enforce their rights against infringement, dilution, or unfair competition. International agreements, such as the Paris Convention and the Madrid Protocol, simplify the registration and protection of trademarks across multiple countries. Additionally, the TRIPS Agreement sets minimum standards for trademark protection and enforcement that all member countries must follow.

Trademarks

The term trademark can also be spelled trade mark in regions such as the EU, UK, and Australia, and as trade-mark in Canada. Despite the different spellings, all three terms denote the same concept. In the United States, the Lanham Act defines a trademark as any word, phrase, symbol, design, or combination of these things used to identify goods or services. Trademarks help consumers recognise a brand in the marketplace and distinguish it from competitors. A service mark, also covered under the Lanham Act, is a type of trademark used to identify services rather than goods. The term trademark is used to refer to both trademarks and service marks. Similarly, the World Intellectual Property Organization (WIPO) defines a trademark as a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. WIPO administers the Madrid Protocol, which allows trademark owners worldwide to file one application to register their trademark in multiple countries.

Almost anything that identifies the source of goods or services can serve as a trademark. In addition to words, slogans, designs, or combinations of these, trademarks can also include non-traditional marks like sounds, scents, or colours. Under the broad heading of trademarks, there are several specific types commonly encountered, such as trade dress, collective marks, and certification marks:

Trade dress: the design and packaging of a product. For example, the distinctive decor of the Hard Rock Cafe restaurant chain is considered trade dress. The Lanham Act protects trade dress when it serves as a source identifier, similar to a trademark. Collective mark: A type of trademark used by members of a collective organisation to indicate that the goods or services originate from members who meet the organisation's admission standards. For instance, the collective mark BEST WESTERN is used by its members for hotel services. Certification mark: A type of trademark used by authorised individuals or businesses to indicate to consumers that specific goods or services, or their providers, meet the quality standards set by a certifying organisation. For example, the ENERGY STAR certification mark is used by authorised users to show that their products meet the energy efficiency standards established by the U.S. Environmental Protection Agency. To maintain distinctiveness, trademarks should function as adjectives, not as nouns or verbs, and be paired with a generic product or service name. They should also stand out from the surrounding text using capital letters, bold type, italics, colour, underlining, quotation marks, or a unique stylised format. For example, say "LEGO® toy blocks" instead of "Lego's."

Trademark symbols

A trademark may be designated by the following symbols:

™: For unregistered trademarks related to goods. ℠: For unregistered service marks connected to services. ®: Reserved for registered trademarks.

While ™ and ℠ apply to unregistered marks (™ for goods and ℠ for services), the ® symbol indicates official registration with the relevant national authority. Using the ® symbol for unregistered trademarks is misleading and can be treated as an unfair business practice. It may also result in civil or criminal penalties.

Brand vs. trademark

A brand is a marketing concept that reflects how consumers perceive a product or service. It has a much wider meaning and refers to the proprietary visual, emotional, rational, and cultural image that customers associate with a company or product. A trademark, by contrast, offers legal protection for a brand with enforceable rights over the brand's identity and distinguishing elements.

Public policy

Trademark law is designed to fulfill the public policy objective of consumer protection, by preventing the public from being misled as to the origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate the identification of products and services which meet the expectations of consumers as to the quality and other characteristics. Trademarks may also serve as an incentive for manufacturers, providers, or suppliers to consistently provide quality products or services to maintain their business reputation. Furthermore, if a trademark owner does not maintain quality control and adequate supervision about the manufacture and provision of products or services supplied by a licensee, such "naked licensing" will eventually adversely affect the owner's rights in the trademark. For US law see, ex. Eva's Bridal Ltd. v. Halanick Enterprises, Inc. 639 F.3d 788 (7th Cir. 2011). This proposition has, however, been watered down by the judgement 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 licence (the equivalent of the United States concept of a naked licence) 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 jeopardising 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.

Comparison with patent and copyright

Trademarks are often confused with patents and copyrights. Although all three laws protect forms of intangible property, collectively known as intellectual property (IP), they each have different purposes and objectives:

Among these types of IP, only trademark law offers the possibility of perpetual rights, provided the trademark is continuously used and renewed. However, if a trademark is no longer in use, its registration may be subject to cancellation. Trademarks can also lose protection through genericide, a process where a trademark becomes so widely used to refer to a category of goods or services that it loses its distinctiveness and legal protection. A well-known example is "escalator," which was once a trademark. In contrast, patents have a fixed term, typically lasting 20 years from the filing date, after which the invention enters the public domain. Copyrights generally last for the life of the author plus an additional 50 to 70 years (depending on the jurisdiction), after which the protected work enters the public domain. 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 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.

Early origins

The earliest examples of use of markings date back to around 15,000 years ago in prehistory. Similar to branding practices, the Lascaux cave paintings in France, for instance, depict bulls with marks, which experts believe may have served as personal marks to indicate livestock ownership. Around 6,000 years ago, Egyptian masonry featured quarry marks and stonecutters' signs to identify the stone's origin and the workers responsible. Wine amphorae marked with seals were also found in the tomb of Pharaoh Tutankhamun, who ruled ancient Egypt more than 3,000 years ago. Over 2,000 years ago, Chinese manufacturers sold goods marked with identifying symbols in the Mediterranean region. Trademarks have also been discovered on pottery, porcelain, and swords produced by merchants in ancient Greece and the Roman Empire. Other notable trademarks that have been used for a long time include Stella Artois, which claims use of its mark since 1366, and Löwenbräu, which claims use of its lion mark since 1383.

National trademarks

The first trademark legislation was passed by the Parliament of England under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold. The first modern trademark laws emerged in the late 19th century. In France, the first comprehensive trademark system in the world was passed into law in 1857 with the "Manufacture and Goods Mark Act". In Britain, the Merchandise Marks Act 1862 made it a criminal offence to imitate another's trade mark 'with intent to defraud or to enable another to defraud'. The passing of the Trade Marks Registration Act 1875 allowed formal registration of trademarks at the UK Patent Office for the first time. Registration was considered to comprise prima facie evidence of ownership of a trademark 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'. 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 according 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. 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.

Oldest registered trademarks

The oldest registered trademark has various claimants, enumerated below:

Australia: Most significant companies were already using trademarks in the mid-nineteenth century and while Australia based its patent law on the British law system, the then province of South Australia (1863), and colonies Queensland and Tasmania (1864), New South Wales (1895) Victoria (1876) and Western Australia (in 1885) had enacted laws to protect trademarks well before Britain did. Thus the Bank of New South Wales had registered its coat of arms in c. 1850 and firms such as Tasmanian Jam and Preserved Fruit Co. had a trademark in 1878, when, after the Federation of Australia, the Commonwealth Trademarks Register was introduced on 2 July 1906 and the Trade Marks Office opened in Melbourne, on which date more than 750 applications were lodged. A product for treatment for coughs colds and bronchitis, PEPS, 'a wonderful breathing medicine in soluble tablet form', was the first of these federal trademarks, registered by Charles Edward Fulford; a rounded rectangle designed for the top of a tin. The shape contained the word 'PEPs' along with a descriptive blurb that read 'for coughs, colds & bronchitis.' United Kingdom: 1876 – The Bass Brewery's label incorporating its triangle logo for ale was the first trademark to be registered under the Trade Mark Registration Act 1875. United States: there are at least two claims: A design mark with an eagle and a ribbon and the words "Economical, Beautiful, and Durable" was the first registered trademark, filed by the Averill Chemical Paint Company on 30 August 1870 under the Trademark Act of 1870. However, in the Trade-Mark Cases, 100 U.S. 82 (1879), the U.S. Supreme Court held the 1870 Act to be unconstitutional. The oldest U.S. registered trademark still in use is trademark reg. no 11210, a depiction of the Biblical figure Samson wrestling a lion, registered in the United States on 27 May 1884 by the J.P. Tolman Company (now Samson Rope Technologies, Inc.), a rope-making company. Germany: 1875 – The Krupp steel company registered three seamless train wheel tires, which are put on top of each other, as its label in 1875, under the German Trade Mark Protection Law of 1874. The seamless train wheel tire did not break, unlike iron tires with seams, and was patented by Krupp in Prussia in 1853.

First-to-file and first-to-use

Trademark protection can be acquired through registration and/or, in certain countries, through use. Globally, the most common method for establishing trademark rights is registration. Most countries operate under a "first-to-file" system, which grants rights to the first entity to register the mark. However, well-known trademarks are an exception, as they may receive protection even without registration. In contrast, a few countries, like the United States, Canada, and Australia, follow a "first-to-use" or hybrid system, where using the mark in commerce can establish certain rights, even without registration. However, registration in these countries still provides stronger legal protection and enforcement.

For example, in the United States, trademark rights are established either (1) through first use of the mark in commerce, creating common law rights limited to the geographic areas of use, or (2) through federal registration with the U.S. Patent and Trademark Office (USPTO), with use in commerce required to maintain the registration. Federal registration with the USPTO provides additional benefits, such as:

The registered trademark is added to the USPTO's database, which provides public notice to anyone searching for similar trademarks. Federal registration establishes a legal presumption of ownership and exclusive rights to use the mark. The registration certificate can serve as evidence of ownership in legal proceedings. A U.S. trademark registration can be a basis for filing for trademark protection in other countries. Registered trademarks can display the ® symbol to designate federal registration and discourage unauthorised use. Trademark owners can file infringement claims in federal court and may also record their registered trademarks with U.S. Customs and Border Protection (CBP) to help prevent the importation of counterfeit or trademark infringing goods.

Distinctiveness

Trademark law grants legal protection to "distinctive" trademarks, which are marks that allow consumers to easily associate them with specific products or services. A strong trademark is inherently distinctive (able to identify and distinguish a single source of goods or services), often falling into categories such as suggestive, fanciful, or arbitrary, and is therefore registerable. In contrast, weak trademarks tend to be either descriptive or generic and may not be registerable.

Acceptable trademarks

Fanciful: Invented words that have meaning only in relation to their goods or services. For example, Exxon® for petroleum and Pepsi® for soft drinks. Arbitrary: Actual words that have no association with the underlying goods or services. For example, Apple® for computers. Suggestive: Words that suggest some quality of the goods or services, but do not state that quality of the goods or services outright. For example, Coppertone® for sun-tanning products.