Trademark
See also Brand
A trademark (or, as referred to in Commonwealth countries, a "trade mark") is a distinctive name, phrase, symbol, design, picture, or style used by a business to identify itself to consumers. If the business identified is a service rather than a product, the mark is called a service mark. In text and advertising one often sees the symbol ™ next to a phrase or image that a company thereby claims as a trademark, or the symbol ®, which signifies that the trademark or service mark has been registered with the United States Patent and Trademark Office (USPTO) or a trademark registry in another country. Trademarking is a central legal component for corporate branding. In many countries colours (such as the colour orange for champagne and the colour brown for parcel delivery), three-dimensional marks, smells and sounds are also capable of trademark protection. In the European Union, for example, the smell of cut grass has been registered in respect of tennis balls.
The main purpose of trademark law is to protect the public from being confused or deceived about the origin and quality of a product. This is accomplished by the mark owner preventing competitors from using a mark that the consuming public is likely to confuse with theirs, whether because it is identical (such as another computer manufacturer calling themselves "Apple") or sufficiently similar (such as a soft drink called "Popsi", though the similarity need not be that great). A trademark is protected when the law allows the mark owner to stop competitors from infringement by these confusingly similar marks. Though registration is available in most countries, showing conclusive right to use the registered mark, many jurisdictions will still protect unregistered marks as long as the owner claiming infringement can prove ownership through earliest and consistent use. It is not necessary for an infringing use to be intentional, though damages in an infringement lawsuit will be greater if there was intent to deceive.
By identifying the source of goods or services, trademarks help consumers to identify their expected quality and assist in identifying goods and services that meet the individual consumer's expectations. Trademarks also fix responsibility. Without trademarks, a seller's mistakes or low quality products would be untraceable to their source. Therefore, trademarks provide an incentive to maintain a good reputation for a predictable quality of goods. For example, a consumer that purchases and likes Nabisco Saltines has a reasonable expectation that Nabisco Saltines found anywhere in the United States will be of uniform taste and quality. Failure to maintain consistent quality can lead to what is called abandonment of a mark, when the law will no longer protect the trademark because it has ceased to function as an indicator of a particular product. A mark can also be abandoned if a producer simply stops using it for a statutorily defined period of time. If abandonment has occurred, that mark is once again available for general use.
Because the emphasis is on consumer protection, the user of a trademark does not "own" the mark in the same way that it may own a copyright. With some exceptions (discussed below under dilution), the protection of a trademark is limited to certain markets, which can be defined by either the type of product or service, or even a particular geographic area. For example, though "Lexis" and "Lexus" are confusingly similar marks, using the former for an news and information service and the latter for luxury cars means that the public is not likely to confuse one while looking for the other, and so neither can restrict the other's use. A trademark may also be limited geographically, if it can be determined that products or services do not compete because of the physical separation of their markets. Considering the national and even global nature of most manufacturers and distributors, the reach of print and broadcast advertising, and the disregard of the internet for geographic boundaries, this limitation is likely to be an issue in fewer and fewer cases.
The market-specific limitation is not interpreted strictly. Instead, attention is given to how closely related markets are (such as pancake mix and pancake syrup), or how likely it is that the mark owner will "bridge the gap" and move into the other product or geographic market.
Additionally, a trademark is not treated strictly as property because certain words must remain free to identify or describe a class of products in general, to ensure both consumer understanding and competition in the given market (or simply for everyday use). For this reason, a generic term will not be protected (for example, "Apple" as used for apples), or, absent the development of public association with a particular source (known as "secondary meaning"), marks that are merely descriptive of the goods concerned ("red" or "juicy" for apples). Worthy of more protection are "suggestive" marks, which involve more imagination on the part of the consumer to understand a quality of the product than merely descriptive marks (such as the Mercury image for FTD suggesting delivery speed), and arbitrary marks, which are common words but used in a context in which they have no meaning (such as "Apple" for computer). Fanciful marks get the most protection, being invented words or terms (such as "Kodak").
When a mark stops being identified in the public mind with a product's source and instead comes to mean the general class of product, it has become generic and will likely lose protection.
Aside from the need for consumer protection, trademark law may in certain cases protect as a sort of property right the investment of an owner in the strength of its mark, entirely apart from the issue of consumer confusion. Dilution protection is available only for a famous mark (or a "well-known mark" as defined in TRIPs, discussed further below), because of the significant investment by a producer in that mark and the extent of public recognition. Famous marks would include instantly recognizeable brand names, such as McDonalds, Coca-Cola, or Sony. With dilution, the usual limits on market limits don't apply, and so even a non-competing, non-confusing use can be restricted on the basis that the famous mark is "diluted" even by its use in another context. There is still some basis for this from a consumer confusion standpoint--truly famous marks are likely to be seen in many different contexts due to branching out or simple sponsorship, to the extent that there may be very few markets, if any, that a consumer would be surprised to see that famous mark involved in. A prime example may be the past involvement of McDonalds and Coca-Cola in clothing lines.
While trademarks protect indications of product source, copyrights protect literary and artistic works, and patents protect useful designs. While those concepts of intellectual property may be separable in theory, in practice many features of products may be placed in more than one category. The shape of a bottle may be eligible for patent protection, for example, but also may come to serve as a unique indicator of the manufacturer and thus as trade dress. Titles and character names from books or movies may also be protectable trademarks while the work as a whole falls under copyright protection. Especially in countries such as the U.S. where copyrights and patents eventually expire into the public domain but trademarks do not, drawing these lines can be very necessary but extremely difficult for lawyers and judges.
Unlike copyrights and patents, trademarks must be actively used and defended. A copyright or patent holder may "sit on" his creation and prevent its use, but a company claiming (even registering) a trademark that fails to make active use of it, or fails to defend it against infringement, may lose the exclusive right to it. Further, if a court rules that a formerly trademarked term has become "generic" through common use (and so the average consumer doesn't realize it is a trademark), it may also be ruled invalid. For example, the Bayer company's trademark "Aspirin" has been ruled generic in the United States, so other companies may use that name for their products as well. (It is still a trademark in Canada). Xerox and Band-Aid are both trademarks that are at risk of becoming generic, which both brands actively try to prevent.
Trademarks are not granted for one-off fixed terms (unlike a patent for example); they are valid as long as they are actively in use (and usually require a renewal fee to be paid to the registry every few years). However, a trademark registration will expire if the owner of the registration fails to comply with the requirements of the trade marks registry for that jurisdiction for maintaining and renewing the registration.
One principle of trademark law in various jurisdictions in Europe is that of 'wrongful threats', which is designed to prevent large corporations from 'bullying' smaller companies. Where one person makes a threat to sue another for trade mark infringement, without a genuine basis or intent to carry out that threat, the threat itself becomes a basis for legal action. This power is used quite frequently; in addition to the obvious cases where the person threatening never had a trade mark it catches out foreign corporations who have a trade mark in their home jurisdiction but not in the country concerned and companies who have a trade mark which has lapsed or is not for the goods/services concerned. The final group who get caught by this provision are those claimants/plaintiffs who sue, and find that the court agrees with a defendant who claims the that mark is invalid for some reason (such as non-use). In that case the mark was never valid, and thus all threats to sue on it were groundless—the defandant can walk away with damages from the claimant.
The advent of the Domain Name System has led to attempts by trademark holders to take over domain names based on trade mark rights. Unlike a trademark, which is restricted by country and class of goods, domain names can be global and not limited by goods or service. This use of trademark law has lead to several high profile court decisions, and the creation of the ICANN Uniform Dispute Resolution Policy and other dispute policies for specific countries (such as Nominet UK's DRS).
As a result of the WTO (formerly GATT) Trade Related Intellectual Property ("TRIPS") agreement, trademark law globally is gradually becoming harmonised. This does not mean that trademarks registered in one jurisdiction automatically become registered in another jurisdiction (although a 'Community Trade Mark' system whereby a single registration with the OHIM registry can lead to a trade mark covering the 15 (soon 24) members of the European Union does exist), but it does mean that many trademark laws are shared by various countries. For example, Art 15 of the TRIPs agreement defines "sign". This definition or variations thereof can be found in a variety of countries' trademark legislation.
The Madrid Agreement allows trademarks registered in one country to be registered in other countries and territories.
Trademark laws of various countries:
Consumer Protection and Confusion
Dilution
Relationship to copyright and patent law
Trademarks and Domain Names
Trademark laws vary from country to country
Related and included concepts
Additional Resources
