- See also: brand
A trademark (Commonwealth English: trade mark) is a distinctive name, phrase, logo, design, picture, or style used by a business to identify itself and its products to consumers. If the business identified is a service rather than a product, the mark is sometimes called a service mark.
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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 relevant trademark registry. 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, sounds, and even smells 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. In the United States, the sound of a roar of a lion has been registered in respect of motion pictures.
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", to mimic "Pepsi" 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 (in common law countries, at least) 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.
Protectable marks and secondary meaning
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), or those marks that are merely a surname or geographically descriptive.
In some jurisdictions, secondary meaning may be presumed if the trademark user can prove exclusive use of the mark for a defined period of time. Otherwise, tools such as consumer surveys may be used as evidence to show that the public will chiefly associate the descriptive word or surname with the trademark user and his product.
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").
Though these categories most easily apply to word marks, graphic elements are also evaluated similarly. For example, a pine tree shape is descriptive when used on pine-scented products.
Most jurisdictions exclude some categories of terms and symbols from ever gaining protection as trademarks. In addition to generic terms, described above, this may include marks used for official government business (such as national flags), marks that are deceptive regarding the nature or origin (including geographic origin) of the product, and marks that are offensive or obscene.
Consumer protection and confusion
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 Premium saltines has a reasonable expectation that Nabisco Premium saltines found anywhere in the United States will be of uniform taste and quality. Failure to maintain consistent quality can lead to 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. Marks may also be abandoned by "naked licensing", which involves the owner granting rights to use the mark to another party without sufficiently controlling how or on what they use it. The mark is then released for general use. (see also below under Policing Trademarks)
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 (see 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.
A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (i.e., just the word Pepsi spoken, or on a billboard).
Policing trademarks: abandonment and genericism
Trademarks must be actively used and defended. 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. Aside from inconsistent product quality, failure to use the mark for a period of time (often statutorily defined) will result in abandonment of the mark, meaning that it is available to anyone to use. An abandoned mark is not irrevocably in the public domain, but instead can be reregistered by anyone who has regained exclusive and active use, including the original mark owner.
Further, if a court rules that a formerly trademarked term has become "generic" through common use (such that the average consumer doesn't view it as 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 acetylsalicylic acid as well (though it is still a trademark in Canada). Xerox for copiers and Band-Aid for adhesive bandages are both trademarks that are at risk of becoming generic, which both brands actively try to fight. In order to prevent them from becoming generic, and to prove that they are attempting to defend the trademark, trademark owners often contact those who appear to be using the trademark incorrectly, from web page authors to dictionary editors, and request that they cease the improper usage. The proper use of a trademark means using the mark as an adjective, not as a noun or a verb or a possessive. For example, Adobe sent e-mails to many web authors using the term "photoshopped" telling them that they should only use the term "modified by Adobe� Photoshop�." Xerox has also purchased print advertisements declaring that you cannot "xerox" a document, but you can copy it on a Xerox Brand copying machine. Such efforts may or may not be successful in preventing genericism in the long run, which depends less on the mark owner's efforts and more on how the public actually perceives and uses the mark. In fact, legally it is more important that the trademark holder visibly and actively seems to attempt to prevent its trademark from becoming generic, regardless of real success.
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, if the mark is not strong enough for dilution protection, 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 defendant can walk away with damages from the claimant.
Comparisons to copyright and patent law
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 patents and copyrights, which in theory are granted for one-off fixed terms, trademarks remain valid as long as the owner actively uses and defends them and maintains their registrations with their jurisdiction's trademark registry. This often involves paying a periodic renewal fee.
Unlike trademarks, there is no "abandonment" in copyright or patent law. A copyright or patent holder may "sit on" his creation and prevent its use. Additionally, copyright and patent owners do not necessarily have to actively police their rights. However, a failure to bring a timely infringement suit against a known infringer may give the defendant a defense of implied consent or estoppel when suit is finally brought.
The conflict of trademarks and domain names
The advent of the Domain Name System has led to attempts by trademark holders to enforce their rights over domain names that are similar or identical to their existing trademarks, particularly by seeking control over the domain names at issue. As with dilution protection, enforcing trademark rights over domain name owners involves protecting a trademark outside the obvious context of its consumer market, because domain names are global and not limited by goods or service.
This conflict was more easily resolved when the domain name user actually used his website to compete with the trademark owner. Cybersquatting, however, involves no such competition, but instead an unlicensed user registering the trademark as a domain name in order to pressure a payoff (or other benefit) from the lawful mark owner. Typosquatters—those registering common misspellings of trademarks as domain names--have also been targeted successfully in trademark infringement suits.
This clash of the new technology with preexisting trademark rights resulted in several high profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trademark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so initial interest confusion was a concept applied instead. Infringing domain names were analogized to a sign identifying one store but falsely placed in front of another, in the hopes that customers will in the end not care that they were duped or will at least give up on trying to reach the right store.
Most courts particularly frowned on cybersquatting, and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trademarks) to reach into the area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically, and to provide explicit remedies against cybersquatters.
This international legal change has also led to the creation of ICANN Uniform Dispute Resolution Policy and other dispute policies for specific countries (such as Nominet UK's DRS) which attempt to streamline the process of resolving who should own a domain name (without dealing with other infringement issues such as damages). This is particularly desirable to trademark owners when the domain name registrant may be in another country or even anonymous.
Domain names used as trademarks
Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trademarks for perceived advantages, such as an extra bulwark aginst their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names.
As with other trademarks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon.com is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products.
Terms which are not protectable by themselves, such as a generic term or a merely descriptive term that has not acquired secondary meaning, do not become registrable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. Examples of such domain names ineligible for trademark protection would be "SOFT.COM" (merely descriptive when applied to a product such as facial tissue), or "BANK.COM" (generic for banking services).
International variations in trademark laws
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 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. There is also the Madrid Protocol which is an offshoot of the Madrid Agreement and works in a very similar way. As of 1 October 2004 the Madrid system and the European Community Trade Mark system will be linked.
Trademark laws of various countries:
- United States trademark law
- European Union trade mark law
- United Kingdom trade mark law
- Australian trademark law
- Hong Kong trademark law
- People's Republic of China's trademark law.