Understanding Trademarks
A Global Perspective
Types of Intellectual Property
Copyright
Patent
Industrial Design
Utility Model
Trademark
Trade Name
Trade Dress
Trade Secret
Right of Publicity
Technology transfer contracts, know-how, customer
lists, distribution and logistics systems, topography/
circuit layout, plant breeders rights, etc.
What Is a Trademark?
Word
Symbol
Slogan
JUST DO IT.
Product or packaging
design
that identifies the source of a specific product or service and
distinguishes it from others in the marketplace.
Trademarks and Service Marks
Service mark
examples
Nontraditional Marks
Sound
Color
Fragrance
Design of a business
establishment
Motion
Other Kinds of Marks
Collective mark
Certification mark
Trademark vs. Trade/Business Name
Trade/Business Name: identifies a
company or business.
Example: The Coca-Cola Company
Trademark: identifies the goods or
services of that company.
Example:
Functions of a Trademark
Indicates the source or origin of goods or
services.
Assures consumers of the quality of goods
bearing the mark.
Creates business goodwill and brand
awareness.
Process of Securing a Trademark
Select
Clear
Protect
Selecting a Mark
Distinctiveness Spectrum
The more distinctive the mark, the greater its level of legal protectability.
Generic marks are not capable of trademark protection. Descriptive marks
are capable of protection only with a showing of secondary meaning.
Trademark Searches
International screening search
Country-specific search
Trademark registers classes/categories
Corporate names
Internet uses and domain names
Other directories/dictionaries
Local expertise
Obtaining Trademark Rights
Rights are territorial may be
registered through:
Single trademark office
Regional trademark systems
Madrid (International Registration)
system
Obtaining Trademark Rights (contd)
Rights are obtained:
- By registration; or
- By use (common law rights)
Trademark Registration
Registrability
- Meets the legal requirements that is, not generic, not immoral,
etc.
Availability
- Is not identical or confusingly similar to a prior-registered mark
or a mark that is the subject of a pending application (assuming
that the application is ultimately accepted).
- Is not being used in the same market as an identical or
confusingly similar mark in connection with similar goods or
services.
Application Procedure
- With the national trademark office.
- United States: state registration (with the secretary of state) or
federal registration (with the USPTO).
Notice of Registration
______ is a
trademark/service
mark of _______
TM
SM
Loss of Rights
Improper use
Failure to police
Genericide
Failure to renew
Non-use
Cancellation
Improper assignment
or licensing
Loss of Rights
Registered rights
Common law rights
Failure to renew
Non-use
Failure to police
Cancellation
Use it or lose it
Proper Use Avoiding Genericide
Once a trademark, not always a trademark
Important to
police third
parties
unauthorized
and/or
improper
use
escalator
cellophane
dry ice
aspirin
linoleum
Proper Use Avoiding Genericide
Use the symbol where appropriate
Distinguish from surrounding text by using:
Quotation marks Mercedes-Benz cars
Larger-sized print Mercedes-Benz cars
All capital letters MERCEDES-BENZ cars
Initial capitals Mercedes-Benz cars
Distinctive print Mercedes-Benz cars
Color Mercedes-Benz cars
Use the TM/SM symbol where appropriate
Proper Use Avoiding Genericide
Use the mark followed by a noun.
Incorrect: A KLEENEX
Correct: A KLEENEX tissue
Do not pluralize a mark.
Incorrect: Two DELLS
Correct: Two DELL computers
Do not make a mark possessive.
Incorrect: POST-ITs quality
Correct: POST-IT note pads quality
Do not use a mark as a verb.
Incorrect: Xerox a document
Correct: Photocopy a document on a XEROX copier
Use consistent, proper spelling.
Incorrect: H and M
Correct: H&M
Policing and Protecting Trademarks
Subscribe to watch services
Internet searches
Internal eyes and ears
Summary
Just one of several types of IP
Not necessarily a trade / business name
Rights obtained via registration/use
Select a strong trademark
Search
Register
Properly use, police and protect
