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A trademark or trade mark (represented by the symbol ™)[1] or mark is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to identify uniquely the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. Intellectual property ( IP) is a legal field that refers to creations of the mind such as musical literary and artistic works inventions and symbols names Copyright is a legal concept enacted by Governments, giving the creator of an original work of authorship Exclusive rights to control its distribution usually for A patent is a set of Exclusive rights granted by a State to an inventor or his assignee for a fixed period of time in exchange for a disclosure of an Industrial design rights are Intellectual property rights that protect the visual design of objects that are not purely utilitarian A utility model is an Intellectual property right to protect Inventions This right is available in a number of national Legislations such as Argentina A geographical indication (GI is a name or sign used on certain products which corresponds to a specific geographical location or origin (eg A trade secret is a Formula, practice, Process, Design, instrument, Pattern, or compilation of Information which Related rights is a term in Copyright law used in opposition to the term " Authors' rights " A trade name, also known as a trading name or a business name, is the name which a Business trades under for commercial purposes although its registered In Computer networking, a domain name is a name given to a collection of network devices that belong to a domain which is an administrative space managed according Sui generis (English pronunciation ( IPA) /ˌsuːiˈdʒɛnərɪs/ roughly "SOO-ee JEN-a-ris" Latin pronunciation /ˌsuːiˈgeneris/ is a Neo-Latin In European Union law, a database right is a legal right introduced in 1996. A mask work is a two or three-dimensional layout or topography of an Integrated circuit (IC or "chip" i Plant breeders' rights (PBR also known as plant variety rights (PVR are Intellectual property rights granted to the breeder of a new variety In European Union member countries a supplementary protection certificate (SPC is a Sui generis, Patent -like Intellectual property Indigenous intellectual property is an umbrella legal term used in national and international forums to identify Indigenous peoples ' special rights to claim (from within Critics of the term " Intellectual property " argue that the increased use of this terminology coincided with a more general shift away from thinking about things like copyright In Semiotics, a sign is "something that stands for something else to someone in some capacity" Companies law (or the law of business associations) is the field of Law concerning business and other organizations Note This Wikipedia entry deals with the legal concept legal person. A service is the non-material equivalent of a good. A service provision is an economic activity that does not result in Ownership, and this is what differentiates Consumers refers to individuals or households that use goods and services generated within the economy. A trademark is a type of intellectual property, and typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. Intellectual property ( IP) is a legal field that refers to creations of the mind such as musical literary and artistic works inventions and symbols names A logo ( Greek el λογότυπος = el-Latn logotypos is a graphical element ( Ideogram, Symbol, Emblem, Icon, Sign) The musical instrument is spelled Cymbal. A symbol is something --- such as an object, Picture, written word a sound a piece [2] There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories. A non-conventional trademark, also known as a nontraditional trademark, is any new type of Trademark which does not belong to a pre-existing conventional
The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. In law a lawsuit is a civil action brought before a Court in which the party commencing the action the Plaintiff, seeks a legal or equitable remedy Trademark infringement is a violation of the Exclusive rights attaching to a Trademark without the authorization of the trademark owner or any licensees (provided that However, registration is not required. The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States. In some countries notably the United States, a Trademark used to identify a service rather than a product is called a service mark or servicemark Trademarks were traditionally protected in the United States only under State Common law, growing out of the Tort of Unfair competition. [3]
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Fundamental concepts
The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as a badge of origin. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while unregistered trademark rights may be enforced pursuant to the common law tort of passing off. In Anglo-Saxon law, an exclusive right is a de facto non-tangible Prerogative existing in law (that is the power or in a wider sense Right In law a lawsuit is a civil action brought before a Court in which the party commencing the action the Plaintiff, seeks a legal or equitable remedy Trademark infringement is a violation of the Exclusive rights attaching to a Trademark without the authorization of the trademark owner or any licensees (provided that For other uses of this and related terms please refer to the " Pass " disambiguation page
It should be noted that trademark rights generally arise out of the use and/or registration (see below) of a mark in connection only with a specific type or range of products or services. Although it may sometimes be possible to take legal action to prevent the use of a mark in relation to products or services outside this range (e. g. for passing off), this does not mean that trademark law prevents the use of that mark by the general public. A common word, phrase, or other sign can only be removed from the public domain to the extent that a trademark owner is able to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections. The public domain is a range of abstract materials &ndash commonly referred to as Intellectual property &ndash which are not owned or controlled by anyone
Terminology
Terms such as "mark", "brand" and "logo" are sometimes used interchangeably with "trademark". A brand is a collection of Images and ideas representing an economic producer more specifically it refers to the descriptive verbal attributes and concrete symbols such as a A logo ( Greek el λογότυπος = el-Latn logotypos is a graphical element ( Ideogram, Symbol, Emblem, Icon, Sign) But,however,it also includes a Device,Brand,Label,Name,Signature,Word,Letter,Numerical,Shape of goods,Packaging,Combination of Colours-or any combination thereof;which is capable of distinguishing goods and services of one person from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is registered.
Specialized types of trademark include certification marks, collective trademarks and defensive trademarks. A certification mark on a commercial product indicates five things The existence of a legal follow-up or Product certification agreement between the manufacturer A collective trade mark or collective mark is a Trademark owned by an organisation (such as an association whose members use them to identify themselves with a level Trademark dilution is a Trademark law concept permitting the owner of a famous trademark to forbid others from using that mark in a way that would lessen its uniqueness A trademark which is popularly used to describe a product or service (rather than to distinguish the product or services from those of third parties) is sometimes known as a genericized trademark. A genericized trademark (also known as a generic trademark or proprietary eponym) is a Trademark or Brand name that has become the colloquial If such a mark becomes synonymous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark becomes generic. This article deals with the general meaning of the term "synonym"
Establishing trademark rights
The law considers a trademark to be a form of property. Property is any physical or virtual entity that is owned by an individual Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction, e. The word proprietary indicates that a party or proprietor exercises private Ownership, control or use over an item of Property. A right is a legal or moral Entitlement or Permission. Rights are of vital importance in theories of Justice and deontological ethics A marketplace is the space actual or metaphorical in which a Market operates In Law, jurisdiction (from the Latin ius iuris meaning "law" and dicere meaning "to speak" is the practical Authority g. , the U.S. Patent and Trademark Office. In many jurisdictions, trademark rights can be established through either or both means. Certain jurisdictions generally do not recognize trademarks rights arising through use (e. g. China or European Union). China ( Wade-Giles ( Mandarin) Chung¹kuo² is a cultural region, an ancient Civilization, and depending on perspective a National If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement proceedings will therefore be limited. Trademark infringement is a violation of the Exclusive rights attaching to a Trademark without the authorization of the trademark owner or any licensees (provided that In cases of dispute, this disparity of rights is often referred to as "first to file" as opposed to "first to use". Other countries such as Germany offer a limited amount of common law rights for unregistered marks where to gain protection, the goods or services must occupy a highly significant position in the marketplace - where this could be 40% or more market share for sales in the particular class of goods or services.
A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered. The bundle of rights is a common way to explain the complexities of Property ownership In Anglo-Saxon law, an exclusive right is a de facto non-tangible Prerogative existing in law (that is the power or in a wider sense Right The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or "colourfully" similar to the "registered" products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. An example maybe a very large multinational brand such as "Sony" where a non-electronic product such as a pair of sunglasses might be assumed to have come from Sony Corporation of Japan despite not being a class of goods that Sony has rights in.
Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction, a quality which is sometimes known as territoriality. However, there is a range of international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction (see International trademark laws below).
Trademark search
To avoid conflicts with earlier trademark rights, it is highly recommended to conduct trademark searches before the trademarks office (or "trademarks registry") of a particular jurisdiction—e. In Law, jurisdiction (from the Latin ius iuris meaning "law" and dicere meaning "to speak" is the practical Authority g. US Patent and Trademark Office. It may also be advisable to conduct a broader search as well, including databases that contain names of registered companies and also an Internet search to determine if the desired trademark is either already registered as a domain name or otherwise being used. The reason for this is because trademark offices typically only search issued trademarks and pending applications in order to determine whether a trademark should issue. [4] For business reasons, however, an applicant may want to consider a different trademark even if it could be registered if the domain name is taken or other businesses are using the trademark as an unregistered name or slogan.
In the United States, obtaining a trademark search and relying upon the results is also very important because it can insulate the applicant from any future finding that you willfully infringed the trademark of another. Essentially, if you obtain a search and in good faith feel the use of a mark would not be infringing it will be virtually impossible for anyone to prove later that you purposefully engaged in infringing activities. [5]
In Europe and if a community trademark has to be filed, searches have to be conducted with the OHIM (Community Trademark Office) and with the various national offices. An alternative solution is to conduct a trademark search within private databases.
Registrability
In most systems, a trademark will be registrable if it is able to distinguish the goods or services of a party, will not confuse consumers about the relationship between one party and another, and will not otherwise deceive consumers with respect to the qualities of the product. Trademark distinctiveness is an important concept in the law governing Trademarks and Service marks A trademark may be eligible for registration or registrable
Distinctive character
Maintaining trademark rights
Trademarks rights must be maintained through actual lawful use of the trademark. Trademark distinctiveness is an important concept in the law governing Trademarks and Service marks A trademark may be eligible for registration or registrable These rights will cease if a mark is not actively used for a period of time, normally 5 years in most jurisdictions. In the case of a trademark registration, failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of "non-use". It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential. This is designed to prevent owners from continually being tied up in litigation for fear of cancellation. An owner can at any time commence action for infringement against a third party as long as it had not previously notified the third party of its discontent following third party use and then failed to take action within a reasonable period of time (called acquiescence). The owner can always reserve the right to take legal action until a court decides that the third party had gained notoriety which the owner 'must' have been aware of. It will be for the third party to prove their use of the mark is substantial as it is the onus of a company using a mark to check they are not infringing previously registered rights. In the US, owing to the overwhelming number of unregistered rights, trademark applicants are advised to perform searches not just of the trademark register but of local business directories and relevant trade press. Specialized search companies perform such tasks prior to application.
All jurisdictions with a mature trademark registration system provide a mechanism for removal in the event of such non use, which is usually a period of either three or five years. The intention to use a trademark can be proven by a wide range of acts as shown in the Wooly Bull and Ashton v Harlee cases.
In the U. S. , failure to use a trademark for this period of time, aside from the corresponding impact on product quality, will result in abandonment of the mark, whereby any party may use the mark. An abandoned mark is not irrevocably in the public domain, but may instead be re-registered by any party which has re-established exclusive and active use, and must be associated or linked with the original mark owner. The public domain is a range of abstract materials &ndash commonly referred to as Intellectual property &ndash which are not owned or controlled by anyone If a court rules that a trademark has become "generic" through common use (such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it), the corresponding registration may also be ruled invalid. A genericized trademark (also known as a generic trademark or proprietary eponym) is a Trademark or Brand name that has become the colloquial
For examples, see trademark distinctiveness. Trademark distinctiveness is an important concept in the law governing Trademarks and Service marks A trademark may be eligible for registration or registrable
Enforcing trademark rights
The extent to which a trademark owner may prevent unauthorized use of trademarks which are the same as or similar to its trademark depends on various factors such as whether its trademark is registered, the similarity of the trademarks involved, the similarity of the products and/or services involved, and whether the owner’s trademark is well known.
If a trademark has not been registered, some jurisdictions (especially Common Law countries) offer protection for the business reputation or goodwill which attaches to unregistered trademarks through the tort of passing off. Common law refers to law and the corresponding legal system developed through decisions of courts and similar tribunals rather than through legislative statutes or executive A business (also called firm or an enterprise) is a legally recognized organizational entity designed to provide goods and/or services to Reputation is the opinion (more technically a social evaluation of the public toward a Person, a group of people, or an Organization. Goodwill is an Accounting term used to reflect the portion of the book value of a business entity not directly attributable to its Assets and liabilities Tort law is the name given to a body of law that creates and provides remedies for civil wrongs that do not arise out of Contractual duties For other uses of this and related terms please refer to the " Pass " disambiguation page Passing off may provide a remedy in a scenario where a business has been trading under an unregistered trademark for many years, and a rival business starts using the same or a similar mark.
If a trademark has been registered, then it is much easier for the trademark owner to demonstrate its trademark rights and to enforce these rights through an infringement action. Unauthorized use of a registered trademark need not be intentional in order for infringement to occur, although damages in an infringement lawsuit will generally be greater if there was an intention to deceive. In law a lawsuit is a civil action brought before a Court in which the party commencing the action the Plaintiff, seeks a legal or equitable remedy
For trademarks which are considered to be well known, infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner's mark is registered.
Limits and defenses to trademark
Trademark is subject to various defenses and limitations. In the United States, the fair use defense protects uses that would be otherwise protected by the First Amendment. For fair use in copyright law see Fair use. In the United States Trademark law includes a fair use defense sometimes called " trademark Fair use may be asserted on two grounds, either that the alleged infringer is using the mark to accurately describe an aspect of its products, or that the alleged infringer is using the mark to identify the mark owner.
An example of the first type is that although Maytag owns the trademark "Whisper Quiet", makers of other products may describe their goods as being "whisper quiet" so long as these competitors are not using the phrase as a trademark. Maytag Corporation was a $47 billion home and commercial appliance company headquartered in Newton Iowa from 1893-2006
An example of the second type is that Audi can run advertisements saying that a trade publication has rated an Audi model higher than a BMW model, since they are only using "BMW" to identify the competitor. AUDI AG, ( Xetra: NSU commonly known as Audi (aˈʊdi is a German Automobile manufacturer which produces Audi branded cars with headquarters ( BMW) (Bavarian Motor Works is an independent German automobile manufacturer founded in 1916 Similarly, a designer impostor perfume may advertise that its product is similar to Chanel No. 5. Chanel No 5 is one of the best known Perfumes in the world It was the first fragrance from Parisian couturier, Gabrielle "Coco" Chanel In a related sense, an auto mechanic can truthfully advertise that he services Cadillacs, and a former Playboy Playmate of the Year can identify herself as such on her website. Cadillac is a Brand of Luxury vehicles owned by General Motors. For the word "playmate" in the common sense see its definition in Wiktionary. [6]
Wrongful or groundless threats of infringement
Various jurisdictions have laws which are designed to prevent trademark owners from making wrongful threats of trademark infringement action against other parties. These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies.
Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action. In this situation, the party receiving such a threat may seek from the Court, a declaratory judgment; also known as a declaratory ruling. A declaratory judgment is a Judgment of a Court in a Civil case which declares the rights duties or obligations of each party in a Dispute.
Other aspects
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. Consumer protection is a form of Government Regulation which protects the interests of Consumers For example a government may require businesses to disclose detailed By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the expectations of consumers as to quality and other characteristics.
Trademarks may also serve as an incentive for manufacturers, providers or suppliers to consistently provide quality products or services in order to maintain their business reputation. Furthermore, if a trademark owner does not maintain quality control and adequate supervision in relation to the manufacture and provision of products or services supplied by a licensee, such "naked licensing" will eventually adversely impact on the owner's rights in the trademark. In Engineering and Manufacturing, quality control and quality engineering are involved in developing systems to ensure products or services This proposition has, however, been watered down by the judgment 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 license (equivalent of the United States concept of a naked license) 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 jeopardizing the trademark, but companies will often contract with the sellers to help transition the mark and goods and/or services to the new owners to ensure continuity of the trademark.
Comparison with patents, designs and copyright
- See also: Functionality doctrine
While trademark law seeks to protect indications of the commercial source of products or services, patent law generally seeks to protect new and useful inventions, and registered designs law generally seeks to protect the look or appearance of a manufactured article. In Trademark law, the functionality doctrine prevents Manufacturers from protecting specific features of a product by means of Trademark law A patent is a set of Exclusive rights granted by a State to an inventor or his assignee for a fixed period of time in exchange for a disclosure of an Trademarks, patents and designs collectively form a subset of intellectual property known as industrial property because they are often created and used in an industrial or commercial context.
By comparison, copyright law generally seeks to protect original literary, artistic and other creative works. Copyright is a legal concept enacted by Governments, giving the creator of an original work of authorship Exclusive rights to control its distribution usually for A trademark also does not expire (if it is re-registered), whereas international copyright law (which varies from country to country) usually lasts the duration of the author's lifespan plus 70 years. [7] This can lead to confusion in cases where a work passes into the public domain but the character in question remains a registered trademark. The public domain is a range of abstract materials &ndash commonly referred to as Intellectual property &ndash which are not owned or controlled by anyone [8]
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 for 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.
Drawing these distinctions is necessary but often challenging for the courts and lawyers, especially in jurisdictions where patents and copyrights when they pass into the public domain depending on the jurisdiction. The public domain is a range of abstract materials &ndash commonly referred to as Intellectual property &ndash which are not owned or controlled by anyone 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 the applicable jurisdiction's trademarks office. This often involves payment of a periodic renewal fee.
As a trademark must be used in order to maintain rights in relation to that mark, a trademark can be 'abandoned' or its registration can be canceled or revoked if the mark is not continuously used. By comparison, patents and copyrights cannot be 'abandoned' and a patent holder or copyright owner can generally enforce their rights without taking any particular action to maintain the patent or copyright. Additionally, patent holders and copyright owners may not necessarily need to actively police their rights. However, a failure to bring a timely infringement suit or action against a known infringer may give the defendant a defense of implied consent or estoppel when suit is finally brought. Estoppel is a legal doctrine recognized both at Common law and in equity in various forms
Dilution
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. Trademark dilution is a Trademark law concept permitting the owner of a famous trademark to forbid others from using that mark in a way that would lessen its uniqueness 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 (e. g. , just the word Pepsi spoken, or on a billboard). Pepsi-Cola is a carbonated beverage that is produced and manufactured by PepsiCo. Under trademark law, dilution occurs either when unauthorized use of a mark "blurs" the "distinctive nature of the mark" or "tarnishes it. " Likelihood of confusion is not required. 15 U. S. C §§ 1127, 1125(c).
Sale, transfer and licensing of trademarks
In various jurisdictions a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. Goodwill is an Accounting term used to reflect the portion of the book value of a business entity not directly attributable to its Assets and liabilities However, this is not the case in the United States, where the courts have held that this would "be a fraud upon the public". In the U. S. , trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods.
Most jurisdictions provide for the use of trademarks to be licensed to third parties. The licensor (usually the trademark owner) must monitor the quality of the goods being produced by the licensee to avoid the risk of trademark being deemed abandoned by the courts. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to quality and the licensor has rights to inspection and monitoring.
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. The Domain Name System (DNS is a hierarchical naming system for computers services or any resource participating in the Internet. 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. Cybersquatting, according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering trafficking in or using a domain name with Typosquatters—those registering common misspellings of trademarks as domain names—have also been targeted successfully in trademark infringement suits. Typosquatting, also called URL hijacking, is a form of Cybersquatting which relies on mistakes such as Typographical errors made by Internet users when inputting Other types of domain name disputes include the so-called "gripe site," which use a registered trademark in a domain such as "[trademark]sucks. A gripe site is a type of Website devoted to the Critique and or mockery of a Person, Place, Politician, Corporation or com. " There are also disputes arising from the subdomain, when a third party uses a protected mark in a web address such as "[trademark]. In the Domain Name System (DNS hierarchy a subdomain is a domain that is part of a larger domain [legitimatedomain]. com. " [1]
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. Initial interest confusion refers to customer confusion that creates an initial interest in a competitor's "product" (in the online context, another party's website). Even though initial interest confusion is dispelled by the time any actual sales occur, it allows a trademark infringer to capitalize on the goodwill associated with the original mark.
Several cases have wrestled with the concept of initial interest confusion. In Playboy v. Netscape, the court found initial interest confusion when users typed in Playboy's trademarks into a search engine, resulting in the display of search results alongside unlabeled banner ads, triggered by keywords that included Playboy's marks, that would take users to Playboy's competitors. Though users might ultimately realize upon clicking on the banner ads that they were not Playboy-affiliated, the court found that the competitor advertisers could have gained customers by appropriating Playboy's goodwill since users may be perfectly happy to browse the competitor's site instead of returning the search results to find the Playboy sites.
In Lamparello v. Falwell, however, the court clarified that a finding of initial interest confusion is contingent on financial profit from said confusion, such that, if a domain name confusing similar to a registered trademark is used for a non-trademark related website, the site owner will not be found to have infringed where he does not seek to capitalize on the mark's goodwill for his own commercial enterprises.
In addition, courts have upheld the rights of trademark owners with regard to commercial use of domain names, even in cases where goods sold there legitimately bear the mark. In the landmark decision Creative Gifts, Inc. v. UFO, 235 F.3d 540 (10th Cir. 2000)(New Mexico), Defendants had registered the domain name "Levitron. com" to sell goods bearing the trademark "Levitron" under an at-will license from the trademark owner. The 10th Circuit affirmed the rights of the trademark owner with regard to said domain name, despite arguments of promissory estoppel. Estoppel is a legal doctrine recognized both at Common law and in equity in various forms
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 Domain-Name Dispute-Resolution Policy (UDRP) 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). ICANN (aɪkæn eye-can is the Internet Corporation for Assigned Names and Numbers. Nominet UK is the.uk domain name registry in the United Kingdom, which was founded by Dr Willie Black This is particularly desirable to trademark owners when the domain name registrant may be in another country or even anonymous.
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 against 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. For other uses of this and related terms please refer to the " Pass " disambiguation page
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. Amazoncom Inc ( is an American electronic commerce ( E-commerce) company in Seattle Washington.
Terms which are not protectable by themselves, such as a generic term or a merely descriptive term that has not acquired secondary meaning, may become registrable when a Top-Level Domain Name (e. g. dot-COM) is appended to it. An example of such a domain name ineligible for trademark or service mark protection as a generic term, but which currently has a registered U. S. service mark, is "HEARSAY. COM" USPTO Search.
International trademark laws
It is important to note that although there are systems which facilitate the filing, registration or enforcement of trademark rights in more than one jurisdiction on a regional or global basis (e. g. the Madrid and CTM systems, see further below), it is currently not possible to file and obtain a single trademark registration which will automatically apply around the world. Like any national law, trademark laws apply only in their applicable country or jurisdiction, a quality which is sometimes known as "territoriality".
Agreement on Trade-Related Aspects of Intellectual Property Rights
The inherent limitations of the territorial application of trademark laws have been mitigated by various intellectual property treaties, foremost amongst which is the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights. Intellectual property ( IP) is a legal field that refers to creations of the mind such as musical literary and artistic works inventions and symbols names A Treaty is an agreement under International law entered into by actors in international law namely States and International organizations. TRIPS redirects here For the new microprocessor design see TRIPS architecture. TRIPS establishes legal compatibility between member jurisdictions by requiring the harmonization of applicable laws. For example, Article 15(1) of TRIPS provides a definition for "sign" which is used as or forms part of the definition of "trademark" in the trademark legislation of many jurisdictions around the world.
The Madrid system for the international registration of marks
The major international system for facilitating the registration of trademarks in multiple jurisdictions is commonly known as the "Madrid system". The Madrid system for the international registration of marks, also conveniently known as the Madrid system or simply Madrid, is the primary international system for Madrid provides a centrally administered system for securing trademark registrations in member jurisdictions by extending the protection of an "international registration" obtained through the World Intellectual Property Organization. The World Intellectual Property Organization ( WIPO) is one of the 16 specialized agencies of the United Nations. This international registration is in turn based upon an application or registration obtained by a trade mark applicant in its home jurisdiction.
The primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in many jurisdictions by filing one application in one jurisdiction with one set of fees, and make any changes (e. g. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process. Furthermore, the "coverage" of the international registration may be extended to additional member jurisdictions at any time.
Trademark Law Treaty
The Trademark Law Treaty establishes a system pursuant to which member jurisdictions agree to standardize procedural aspects of the trademark registration process.
Community Trade Mark system
The Community Trade Mark system is the supranational trademark system which applies in the European Union, whereby registration of a trademark with the Office for Harmonization in the Internal Market (Trade Marks and Designs) (i. A Community Trade Mark (CTM is any Trademark which is pending registration or has been registered in the European Union as a whole (rather than on a national level Supranationalism is a method of decision-making in political communities wherein power is democratically entrusted to independent experienced appointed personalities or to representatives The European Union ( EU) is a political and economic union of twenty-seven member states, located primarily in The Office for Harmonization in the Internal Market (Trade Marks and Designs or OHIM (OAMI or es Oficina de Armonizacion del Mercado Interior HABM de Harmonisierungsamt e. OHIM, the trademarks office of the European Union), leads to a registration which is effective throughout the EU as a whole. The CTM system is therefore said to be unitary in character, in that a CTM registration applies indivisibly across all European Union member states. A Member State of the European Union is any one of the twenty-seven sovereign Nation states that have acceded the European Union (EU since its De facto However, the CTM system did not replace the national trademark registration systems; the CTM system and the national systems continue to operate in parallel to each other (see also European Union trade mark law). European trade mark law is governed by national law in the countries which make up Europe, together with European Law within those European countries which are also
Trademark characteristics and "-esque"
Sometimes a characteristic of a creation like an artwork, a design, or a body of artwork is so distinctive that it becomes identified with its creator and is thus considered to be that creator's trademark (whether it meets the legal criteria for a trademark or not).
Occasionally when such a trademark or something similar to it is visible in a work (especially an artwork) by someone other its owner, it is identified by appending the trademark owner's name with the suffix "esque", e. g. "Rubenesque Woman Has Picassoesque Face". [9] The distinction between the "-esque" characteristic and trademark on an artist's name is subtle and has been litigated.
References
- ^ The styling of trademark as a single word is predominantly used in the United States and Australia, while the two word styling trade mark is used in many other countries around the world, including the European Union and Commonwealth and ex-Commonwealth jurisdictions (although Canada officially uses trade-mark pursuant to the Trade-mark Act, trade mark and trademark are also commonly used).
- ^ Restatement (Third) of Unfair Competition § 9 (1995)
- ^ Restatement (Third) of Unfair Competition § 9 (1995)
- ^ U. S. Trademark Manual of Examining Procedure (5th Edition): Initial Examination. The Trademark Manual of Examining Procedure (abbreviated TMEP is a manual published by the United States Patent and Trademark Office (USPTO for use by Trademark attorneys
- ^ Eugene R. Quinn, Jr. , Understanding Trademark Searches.
- ^ Playboy Enterprises, Inc. v. Welles, 279 F. 3d 796 (9th Cir. 2002)
- ^ Directive harmonizing the term of copyright protection
- ^ article imageCopyright and the Mouse: How Disney's Mickey Mouse Changed the World. Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights is a European Union directive in the field of DigitalJournal.com. DigitalJournalcom is a community-based news Website covering breaking news stories
- ^ http://www.theonion.com/content/node/32472
See also
Trademark law in different countries
- Australian trade mark law
- Canadian trade-mark law
- European Union trade mark law
- Hong Kong trade mark law
- People's Republic of China's trademark law
- United Kingdom trade mark law
- United States trademark law
Non-standard trademarks
- Certification marks
- Chartered marks
- Collective trademarks
- Defensive trademarks
- Electronic registration marks
- Geographical indication
- Protected designation of origin
Non-conventional / non-traditional trademarks
- Colour trademarks
- Hologram trademarks
- Shape trademarks
- Smell trademarks
- Sound trademarks
- List of fictional brands
Other
- Genericized trademarks
- Ghost marks
- Glossary of legal terms in technology
- Madrid system
- Proper adjective
- Trademark attorney
Related concepts
External links
- See also: intellectual property organizations
- INTA The International Trademark Association
- WIPO World Intellectual Property Organisation
- OHIM Office of the European Union
- Directory of trade names in Webster's Online Dictionary (Rosetta Edition)
- Trademark FAQs by the International Trademark Association
- USPTO Stopfakes.gov anti-piracy and IP resources for small business
- Law on marks and signs Switzerland (German | English)
Dictionary
trademark
-noun
- A word, symbol, or phrase used to identify a particular company's product and differentiate it from other companies' products. Indicated by the symbol ™, when registered with a government authority it is sometimes indicated by the symbol [[®]].
-verb
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