Trademark

11 Key excerpts on "Trademark"

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  Nolo's Encyclopedia of Everyday Law

  Answers to Your Most Frequently Asked Legal Questions

  • The Editors of Nolo(Author)
  • 2023(Publication Date)
  • NOLO

    (Publisher)

  What is a Trademark? A “Trademark” is a distinctive word, phrase, logo, graphic symbol, slogan, or other device that is used to identify the source of a product and to distinguish a manufacturer’s or merchant’s products from others. Some examples are Nike sports apparel, Gatorade beverages, and the online game Wordle. In the Trademark context, “distinctive” means unique enough to help customers recognize a particular product in the marketplace. A mark may either be inherently distinctive (the mark is unusual in and of itself, such as Milky Way candy bars) or may become distinctive over time because customers come to associate the mark with the product or service (for example, GameStop stores). Consumers often make their purchasing choices on the basis of recognizable Trademarks. For this reason, the main purpose of Trademark law is to make sure that Trademarks don’t overlap in a manner that causes customers to become confused about the source of a product. However, in the case of Trademarks that have become famous—for example, McDonald’s—the courts are willing to prohibit a wider range of uses of the Trademark (or anything close to it) by anyone other than the famous mark’s owner. For instance, McDonald’s was able to prevent the use of the mark McSleep by a motel chain because McSleep traded on the McDonald’s mark’s reputation for a particular type of service (quick, inexpensive, standardized). This type of sweeping protection is authorized by federal and state statutes (referred to as antidilution laws) designed to prevent the weakening of a famous mark’s reputation for quality. CHAPTER 8 | TrademarkS | 179 What is a service mark? For practical purposes, a “service mark” is the same as a Trademark—but while Trademarks promote products, service marks promote services and events. As a general rule, when a business uses its name to market its goods or services on signs or in advertising copy, the name qualifies as a service mark.

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  Trademark

  Legal Care for Your Business & Product Name

  • Stephen Fishman(Author)
  • 2022(Publication Date)
  • NOLO

    (Publisher)

  All of these devices—business and product names, logos, sounds, shapes, smells, colors, packaging—carry one simple message to potential customers: Buy me because I come from XYZ Company. To the extent that these devices are unusual enough to distinguish their underlying products and services from those offered by competitors, they all qualify as Trademarks. If a small business owner were to remember only one point in this book, it should be this: The instant a business or product name or any other identifying device is used in the marketplace to sell goods or services—be it in advertising, on a label, on an Internet site, or in any CHAPTER 1 | A Trademark PRIMER | 15 other way intended to reach out to potential customers—it falls within the reach of Trademark law. Trademark law will determine who wins a dispute over the use of the name. Few business owners can afford to disregard or run afoul of this body of law. What Are Trademarks? Trademarks fall into two general categories: marks that identify goods or products (known as Trademarks) and marks that identify services (known as service marks). Though you may occasionally see this distinction in action, these terms are, in fact, legally interchangeable, and the even more general term “mark” is commonly used to refer to each. In this book, we tilt towards the terms “Trademark” and “mark” and seldom use “service mark.” Technically speaking, a Trademark is any word, design, slogan, sound, or symbol (including nonfunctional unique packaging) that serves to identify a specific product brand—for instance, Canon (a name for a brand of printers and cameras), Just Do It (a slogan for Nike’s shoes and sportswear products), Apple’s apple with a bite missing (a symbol for a brand of computers and other electronic products), and the name Coca-Cola in red cursive lettering (a logo for its brand of soft drink).

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  Product Management

  • (Author)
  • 2014(Publication Date)
  • Orange Apple

    (Publisher)

  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 ____________________ WORLD TECHNOLOGIES ____________________ 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. 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 . In other words, Trademarks serve to identify a particular business as the source of goods or services. 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. It should be noted that Trademark rights generally arise out of the use or to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other Trademark objections. Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea of this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world. History In Trademark treatises it is usually reported that blacksmiths who made swords in the Roman Empire are thought of as being the first users of Trademarks. Other notable Trademarks that have been used for a long time include Löwenbräu, which claims use since 1383, and Stella Artois, which claims use since 1366.

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  Brands

  The Logos of the Global Economy

  • Celia Lury(Author)
  • 2004(Publication Date)
  • Routledge

    (Publisher)

  Let me try to outline the specificity and significance of the law’s attempt to answer some of these questions by discussing the law of trade mark in rather more detail. First, consider the current legal definition of trade mark again: ‘any sign capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of other undertakings’ (s. 1(1)). The notion of sign at issue will be considered here via a discussion of the semiotics outlined in Chapter 4 (Peirce 1978; Deleuze, 1986, 1989). As noted there, according to Peirce, the image is not a unified or closed whole, but rather an ensemble or set of logical relations that are in a state of continual transformation or development. Another way of saying this is that sign and its object are not immediately given entities but ‘abstract elements of a sign continuum’ (Rochberg-Halton, 1986:86). From this perspective, the law is implicated in the mediation of things in so far as it can be shown to have a role in the ‘development of the sign’. And the argument to be outlined here will suggest that the law is indeed so implicated with respect to both the axes of signification described in Chapter 4. These are the horizontal axis of association—that is, an axis of contrast, contiguity and opposition—and the vertical one of (product) differentiation and (brand) integration.

  Consider here the series of changes in the law that are a part of the TMA 1994 and some of the judicial responses to this Act. First, whereas previously a logo could be protected as a trade mark only if it had already been recognised to be distinctive by the public, the TMA of 1994 makes the involvement of the public in the setting up of a trade mark irrelevant. In the terms of the Act, trade marks need now only be registered to be legally enforceable—that is, registration need not now be preceded by public recognition of the brand (although renewal of registration does require usage, as noted on p. 101). The previous criterion of the centrality of use (and thus of consumer recognition and acceptance of distinctiveness) as a condition of legal recognition has been replaced in TMA 1994 with the simple fact of registration. This change provides a more secure legal basis than used to exist from which the economic power of large firms may make good that registration through the production of brand awareness in the practices of marketing (see Chapter 4). This is thus an important shift in the legal regulation of producer— consumer relations. It moves trade marks from an already limited legal existence in the public domain further towards ownership by private corporations. Indeed, in some respects it seems that the public ownership of common resources presumed by Locke is here rejected. Certainly the shift extends the brand owner’s independence of consumers in securing legal ownership of the brand, an independence that had previously been limited by the earlier legislation’s emphasis on the necessity of prior consumer recognition for the acceptance of a legal claim to the ownership of trade marks.

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  Patent, Copyright & Trademark

  An Intellectual Property Desk Reference

  • Richard Stim(Author)
  • 2024(Publication Date)
  • NOLO

    (Publisher)

  However, they are entitled to protection under the unfair competition provision of the Lanham Act. (15 U.S. Code § 1125.) They are also protected under state unfair competition statutes and court decisions, if the public is likely to be confused by the use of the same or a similar name. Companies frequently use their trade names as Trademarks or service marks for their products and services—that is, as designators of origin in their advertising and on the products. For instance, Apple Computer Corporation uses the trade name “Apple” as a Trademark, and the McDonald’s fast food chain uses “McDonald’s” as a service mark. In these situations, the trade name can be registered in its capacity as a mark and may receive additional protection under the Lanham Act’s provisions applicable to infringement of marks. Related terms: likelihood of confusion; service mark; Trademark; unfair competition. Trademark Manufacturers and merchants use Trademarks to distinguish their products and services from those of others in the marketplace. A Trademark usually consists of a word, phrase, logo, or other graphic symbol. Examples of Trademarks are Honda (automobiles), Cap’n Crunch (cereals), Apple (computer equipment), and Tesla (automobiles). A Trademark is not limited to a brand name or logo. It can also consist of a distinctive shape, letters, numbers, package design, sound, smell, color, or other aspects of a product that tend to promote it. Titles, character names, or other distinctive features of movies, television, video games, and radio programs can serve as Trademarks when used to promote a product. Many people use the term “Trademark law” to refer broadly to all the laws that cover how businesses distinguish their products and services from those of others. This includes subjects like trade names, trade dress, commercial misappropriation, unfair competition, unfair business practices, and palming off.

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  Test Tubes for Global Intellectual Property Issues

  Small Market Economies

  • Susy Frankel(Author)
  • 2015(Publication Date)
  • Cambridge University Press

    (Publisher)

  7 Trade mark law The power of attraction of trade-marks and other ‘famous brand names’ is now recognized as among the most valuable of business assets. However, whatever their commercial evolution, the legal purpose of trade-marks continues to be their use by the owner ‘to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others’ . . . A mark is a guarantee of origin and inferentially, an assurance to the consumer that the quality will be what he or she has come to expect. 1 The purpose of [trade mark] registration is an integral aspect of interpreting the TRIPS Agreement’s provisions about Trademarks; . . . the purpose and acquis of the TRIPS Agreement registration provisions and Paris Convention provisions incorpo- rated into the TRIPS Agreement are to encourage the orderly use of Trademarks in commerce; and . . . the rights of Trademark owners are limited, but they make little sense if seen as mere rights to exclude. Use of marks is, to use a WTO analogy, like free trade. There is no full explicit right to trade freely in any WTO document, and there are real limits to a member’s ability to trade freely with other members. 2 If we accept that trade marks are typically applied for just before new or improved varieties of goods and services are introduced to market, then we can assess the value of innovation to firms by estimating the relation- ship of new trade mark applications to a firm’s level of real net output, or value added. 3 Trade marks are directly linked to the economic goals of intellectual property. They are protected when they are used in commerce. When 1 Mattel Inc. v. 3894207 Canada Inc. [2006] 1 S.C.R. 772. 2 S. Frankel and D. Gervais, ‘Plain Packaging and the Interpretation of the TRIPS Agreement’, Vanderbilt Journal of Transnational Law, 46(5) (2013), 1149–1214, at 1181.

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  The Cambridge Handbook of International and Comparative Trademark Law

  • Irene Calboli, Jane C. Ginsburg(Authors)
  • 2020(Publication Date)
  • Cambridge University Press

    (Publisher)

  at 563 (2010). 6 As to examples of common law Trademark systems, see Lisa Ramsey, Chapter 11 in this volume. For a broader overview of the approaches taken in the different regions of the world, see the contributions to Study on Misappropriation of Signs (Martin Senftleben ed.), WIPO Document CDIP/9/INF/5, dated Mar. 14, 2012, http://wipo.int/edocs/mdocs/ mdocs/en/cdip_9/cdip_9_inf_5.pdf. 209 A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. 7 This definition leaves room for the extension of Trademark protection to non-traditional types of marks. Shape, sound and color marks are explicitly mentioned in the provision. Moreover, the enumeration of different types of signs predominantly serves illustrative purposes. As the words “in particular” indicate, the list does not constitute a closed catalogue. In principle, “any signs” that are distinctive and can be represented adequately on the register are eligible for Trademark protection in the EU. 8 Under this elastic standard, Trademark offices applying EU Trademark law have accepted, for instance, abstract colors 9 and color combinations, 10 motion and multimedia marks, 11 melodies and sounds, 12 taste marks, 13 hologram marks 14 and position marks. 15 The following analysis of the trend to register non-traditional marks in the EU outlines the legal framework the CJEU developed to assess the eligibility of non-traditional types of source identifiers for Trademark protection (following Section II).

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  Australian Intellectual Property Law

  • Mark J. Davison, Ann L. Monotti, Leanne Wiseman(Authors)
  • 2008(Publication Date)
  • Cambridge University Press

    (Publisher)

  Thus the capacity of a trade mark to achieve this task of distinguishing goods or services from other goods or services is a critical requirement to its initial registration and its continued registration. As we will see later, if it loses that capacity after registration, it may be removed from the Register. To put it in colloquial terms, the trade mark must say to a consumer, ‘When you see this trade mark, you are seeing a sign of the goods or services of a particular person. You may not know the identity of that particular person but you will know that it is a particular person who has a specific and unique relationship to those goods and services’. Consequently, the relevant sign must be used in such a way as to indicate a trade connection between the person using the trade mark and the goods or services in relation to which it is used. In this way, trade marks retain their traditional function of indicating the origin of goods or services and a trade mark continues to be what it was originally intended to be, namely, ‘a badge of origin’. This point was made by the Full Court in Coca-Cola Co v All-Fect Distributors Ltd (t/a Millers Distributing Co) 44 when it stated: Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’, in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods . . . That is the concept embodied in the definition of ‘trade mark’ in s 17. As demonstrated by this statement, to date the courts’ consideration of the phrase has been restricted to interpreting it by reference to the traditional concept of a trade mark and stating that it has the same meaning and effect, at least in the context of use by the trade mark owner, as the old definition under the 1955 legislation.

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  Australian Intellectual Property Law

  • Mark Davison, Ann Monotti, Leanne Wiseman(Authors)
  • 2015(Publication Date)
  • Cambridge University Press

    (Publisher)

  The capacity of a trade mark to distinguish one product from another prod- uct must be an immediate capacity in the sense that the trade mark must have the distinguishing effect immediately upon use, not some time after it has been used repeatedly and acquired distinctiveness at some indeterminate time in the future. 44 To put it in colloquial terms, the trade mark must say to a consumer: ‘When you see this trade mark, you are seeing a sign of the goods or services of a par- ticular person. You may not know the identity of that particular person but you will know that it is a particular person who has a specific and unique relationship to those goods and services.’ Consequently, the relevant sign must be used in such a way as to indicate a trade connection between the person using the trade mark and the goods or services in relation to which it is used. In this way, trade marks retain their tra- ditional function of indicating the origin of goods or services and a trade mark continues to be what it was originally intended to be, namely, ‘a badge of origin’. 78 AUSTRALIAN INTELLECTUAL PROPERTY LAW 45 (1999) 96 FCR 107. 46 Davison and Horak, Shanahan’s Australian Law of Trade Marks and Passing Off, above n 2, 46 ff. 47 (1908) 25 RPC 406. This point was made by the Full Court in Coca-Cola Co v All-Fect Distributors Ltd 45 when it stated: Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’, in the sense that it indi- cates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of ‘trade mark’ in s 17. As demonstrated by this statement, to date the courts’ consideration of the phrase has been restricted to interpreting it by reference to the traditional con- cept of a trade mark and stating that it has the same meaning and effect, at least in the context of use by the trade mark owner, as the old definition under the 1955 legislation.

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  Intellectual Property Overlaps

  Theory, Strategies, and Solutions

  • Robert Tomkowicz(Author)
  • 2013(Publication Date)
  • Routledge

    (Publisher)

  499

  In addition to publicity rights, interests in personality can also be protected under Trademark law. All Trademark statutes contain provisions that prohibit use of certain categories of marks, including marks suggesting a connection with living individuals, usually referred to as prohibited or official marks.500 These provisions can be employed to prevent commercialization of one’s image in the same way as common law publicity rights can be used. The question is to what extent the rights related to prohibited marks differ from publicity rights. Because publicity rights are only recognized in the US and Canada, this interface concerns only these two jurisdictions.

  Generally, Trademark rights can be found infringed upon when a protected mark is used in a way that leads to confusion about the sources of wares or services associated with it. In this way, Trademark rights fulfil their purpose of acting as a certificate of origin for marked wares. But it also means that the protected mark can be used legally by the public and even competitors of the Trademark’s owner in a variety of ways which do not affect this purpose. For example, a competitor can use the mark in comparative advertising,501 or adopt it for use in association with a different general class of wares or services when in light of all the circumstances there is no likelihood of confusion.502 Prohibited marks operate differently: generally, Trademark law creates a prohibition for adopting and using certain categories of marks and gives privileges to individuals or certain institutions for adopting these categories of marks. Interestingly, from the perspective of the interface between publicity rights and Trademark rights, prohibited marks are not subject to the concept of confusion, like regular Trademarks. Instead, the tests used to determine whether rights under the prohibited marks are infringed are similar to the test under publicity rights. In Canada, the test is whether the mark in question is ‘identical to the official mark or so nearly resemble it so as to be likely to be mistaken for it’.503

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  The Economic Structure of Intellectual Property Law

  • William M. Landes, Richard A. Posner, William M. LANDES(Authors)
  • 2009(Publication Date)
  • Belknap Press

    (Publisher)

  See id., vol. 2, § 18:28. selling the good, the Trademark lapses automatically—another illustration of Trademark abandonment. Distinctiveness and Generic Names Trademark protection is available only for a word or other signifier that iden-tifies the underlying good or service and distinguishes it from that of other producers. Lack of distinctiveness would make the mark incapable of identi-fying the good and recalling to a consumer the information (generated by previous experience with the good by him or other consumers) that lowers his search costs and enables the producer to charge a higher price. By the same token, no seller would want to free ride on a nondistinctive signifier. The incentive to free ride depends on the difference between the profits gen-erated by the mark—which by assumption are close to zero in the nondistinctive case—and the costs of duplication. But this does not mean that giving legal protection to nondistinctive marks would be harmless. A mark that does not distinguish one brand of a product from another is proba-bly created from words, symbols, shapes, or colors that are used by other pro-ducers of the product as well, and so legal protection of the mark would be likely to prevent others from using identifiers that they require in order to be able to compete effectively. We can explore this point formally by expanding our H function for a par-ticular producer so that H = H ( T, Y, W, Z ), (10) where Z denotes words used in common with other producers, such as “com-puter,” “electrical,” or “heavy,” that is, product rather than brand identifiers. In effect, equation (10) redefines W as an index of words for use as trade-marks except those ( Z ) used in common with other producers. Because the Z terms describe features of the product as distinct from features peculiar to each producer’s brand, they tend to be limited in number. The variable Z combines with T to produce information that lowers search costs.

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