Trademark Law
What is the difference between TM and SM?
2007///
TM means "trademark", while SM denotes "service mark". Trademarks are primarily used on products (i.e. goods), while service marks are employed to label services. Both TM and SM can be used prior to registration with the federal trademark office (USPTO). Once a trademark or a service mark is registered, the (R) in a circle is used to indicate that the trademark has been registered. The use of the symbols TM (trademark for goods) and SM (service mark for services) is recommended to claim the rights on unregistered marks that have not been used by others in commerce.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
Why is it necessary to make a domain name search for a potential trademak?
2007///
Domain name registration in .com, .net, .org (i.e. domains open to any kind of registrant) follows a first-come-first served policy. Thus, when deciding on a mark it is often a good idea to search for potential conflicting trademarks by researching domain names that use the mark. The unavailability of a domain name may indicate the existence of a conflicting trademark and it will limit the ability to differentiate products and services.
The availability of domain names can be researched at www.whois.net. WHOIS is a searchable database maintained by registries and registrars that contains information about domain name registrations in the .com, .net, .org, .edu, and ISO 3166 country code top-level domains.
While legally registered domain names can pose a problem for new trademarks, it is also important to recognize that a similar issue is at work when choosing a domain name. It is the domain name registrant’s responsibility to make sure that the domain does not infringe or violate someone the rights of any third party (including trademark rights).
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Lanham Act of 1988.
[4] Uniform Domain Name Dispute Resolution Policy (ICANN)
The availability of domain names can be researched at www.whois.net. WHOIS is a searchable database maintained by registries and registrars that contains information about domain name registrations in the .com, .net, .org, .edu, and ISO 3166 country code top-level domains.
While legally registered domain names can pose a problem for new trademarks, it is also important to recognize that a similar issue is at work when choosing a domain name. It is the domain name registrant’s responsibility to make sure that the domain does not infringe or violate someone the rights of any third party (including trademark rights).
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Lanham Act of 1988.
[4] Uniform Domain Name Dispute Resolution Policy (ICANN)
For what activity does the Lanham Act provide criminal penalties?
2007///
Criminal penalties are applicable in severe trademark infringement cases involving counterfeiting of products. Counterfeiting is considered to be an extreme form of trademark infrigmement since the infriger knowlgy takes advantage of the trademark, bandname, and goodwill of a firm to deliverately create counterfeit products (i.e. lower quality immitations) for the purpose of seeking economic gain. The Trademark Counterfeiting Act of 1984 and the Anticounterfeiting Consumer Protection Act of 1996 address the problem of trafficking in countefeit trademarked goods and the distribution of imitations of well-known trademarked mechandize. According to these Acts "(w)hoever intentionlly traffics or attempts to traffic in goods and services and knowingly uses a counterfait mark on or in connection with such goods or services" is guildty of a felony. These acts lso ammend the Lanham Act to provide stronger civil penalties in cases involving counterfeiting.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Acceptable Identification of Goods and Services Manual
[4] Trademark Examiners Manual of Procedure (TMEP)
[5] International Schedule of Classes of Goods and Services.
[6] Lanham Act of 1988.
[7] Trademark Counterfeiting Act of 1984
[8] Anticounterfeiting Consumer Protection Act of 1996
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Acceptable Identification of Goods and Services Manual
[4] Trademark Examiners Manual of Procedure (TMEP)
[5] International Schedule of Classes of Goods and Services.
[6] Lanham Act of 1988.
[7] Trademark Counterfeiting Act of 1984
[8] Anticounterfeiting Consumer Protection Act of 1996
What system of classification of goods and services is presently used for trademarks?
2007///
Goods and services are classified according to a numerical system of international classification known as the International Schedule of Classes of Goods and Services. For instance, class 35 corresponds to "Advertising and Business" services and class 12 corresponds to "Vehicles; apparatus for locomotion by land, air, or water" goods. This classification is applicable to trademarks filed after September 1, 1973. For to this date, the US Classification System was used for categorization.
In addition to the classification of goods and services, trademark applicants must provide an identification and description of the services beyond the scope of the descriptions listed in the Intenational Classification of Goods and Services document. The USPTO Acceptable Identification of Goods and Services Manual and the Trademark Examiners Manual of Procedure (TMEP) are valuable is a valuable tools to help applicants identifying goods and sevices.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Acceptable Identification of Goods and Services Manual
[4] Trademark Examiners Manual of Procedure (TMEP)
[5] International Schedule of Classes of Goods and Services.
In addition to the classification of goods and services, trademark applicants must provide an identification and description of the services beyond the scope of the descriptions listed in the Intenational Classification of Goods and Services document. The USPTO Acceptable Identification of Goods and Services Manual and the Trademark Examiners Manual of Procedure (TMEP) are valuable is a valuable tools to help applicants identifying goods and sevices.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Acceptable Identification of Goods and Services Manual
[4] Trademark Examiners Manual of Procedure (TMEP)
[5] International Schedule of Classes of Goods and Services.
Why it is necessary to evaluate the non-English meaning of trademarks?
2007///
When choosing a trademark based on an English word or group of words, it is necessary to evaluate non-English translations of the trademark because these may be considered confusingly similar to registered trademarks in other languages. Similarly, word marks in languages other than English must also be evaluated carefuly since consumers in the United States may be familiar with marks that match the English equivalent of the foreign term. For instance, consider a company that has registered the mark "Arrow" in the United States. If another company tried to use the mark "Flecha" (the Spanish translation of Arrow) this may pose a problem (e.g. Red Bull and Toro Rojo).
In addition to the legal issues associated with potential translations of trademarks, there are also important marketing considerations involved. For instance, a direct translation of an English word to another language may have a different meaning. A classical example used to illustrate this concept is the use of the mark Nova for an automobile since the term Nova sounds as the words meaning of "no-go or doensn't go" in Spanish.
Reference:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
In addition to the legal issues associated with potential translations of trademarks, there are also important marketing considerations involved. For instance, a direct translation of an English word to another language may have a different meaning. A classical example used to illustrate this concept is the use of the mark Nova for an automobile since the term Nova sounds as the words meaning of "no-go or doensn't go" in Spanish.
Reference:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
Will trademark law protect a personal name used as a trademark?
2007///
Personal names can be used as a trademark only if it can be demonstrated that they possess "secondary meaning." Thus, personal names are similar to descriptive marks and they are considered to be weak marks. For the purposes of trademark registration, secondary meaning may be assumed after five years of continued and exclusive use of a mark. Black's Law Dictionary (Fifth Edition) defines the doctrine of secondary meaning for the purpose of trademark law as "[A] ... party through advertising or massive exposure ... [establishing] its trademark in the minds of consumers as an indication of origin from one particular source."
There are numerous examples of trademarks that use personal names: Chanel, Levis, Versace, Gucci, etc. These personal names are protected by trademark law because they have accomplished the objective of forming an association in the mind of the consumer which links the individual products with its manufacturer or distributor.
Reference:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
There are numerous examples of trademarks that use personal names: Chanel, Levis, Versace, Gucci, etc. These personal names are protected by trademark law because they have accomplished the objective of forming an association in the mind of the consumer which links the individual products with its manufacturer or distributor.
Reference:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
What is the purpose of trademark law?
2007///
The overall purpose of trademark law is to prevent unfair competition by protecting the use of a symbol, word, logo, slogan, design, domain name, etc. that uniquely distinguises the goods or services of a firm. This body of common-law principles ultimately protects consumers by prohibiting companies from using trademarks substantially similar to those of other companies that may have more "brand equity" and customer loyalty. Trademark law is intended to avoid consumer confusion and preventing companies from diluting the marks of other firms. Dilution occurs when a similar mark adversely affects the reputation of a distinctive trademark regardless if it leads to consumer confusion or not.
Given the increased importance of branding and the tangible economic value of the brand (brand equity) in today's experience economy, trademark law is more important than ever before. As consumers become loyal to a particular brand and make purchasing decisions based on their ability to identify a product of service by use of a logo, slogan, etc (i.e. trademark), these marks serve as a point of differentiation and competitive advantage. Consequently, trademark law is important to enable the trademark proprietor to develop goodwill for the product or service and prevent other parties from exploiting the brand.
Reference:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
Given the increased importance of branding and the tangible economic value of the brand (brand equity) in today's experience economy, trademark law is more important than ever before. As consumers become loyal to a particular brand and make purchasing decisions based on their ability to identify a product of service by use of a logo, slogan, etc (i.e. trademark), these marks serve as a point of differentiation and competitive advantage. Consequently, trademark law is important to enable the trademark proprietor to develop goodwill for the product or service and prevent other parties from exploiting the brand.
Reference:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
How does a company acquire rights to a trademark?
2006///
A trademark is any word, symbol, design, device, logo, or slogan that identifies and distinguishes one product or service from another.
To obtain trademark protection it is necessary for a person or a business to sell a product using the mark. Consequently, trademark rights are only acquired when the trademark is used in commerce. Additionally, it is recommended to register the trademark in order to obtain special rights in the event of infringement. Trademarks are protected by federal and state law. Trademark owners can register the trademark with the PTO (federal) or with the respective secretary of state. Trademark rights are acquired by being the first to use the mark in commerce. The first user of the mark on goods in commerce creates an association with consumers, and trademark laws are intended to protect the consumer by avoiding confusion and enabling companies to compete fairly.
Under the Trademark Law Revision Act of 1998 a trademark owner can apply for registration prior to using the mark, based upon the owner's bona fide intent to use (ITU) the mark. If the application is approved and published without opposition, the trademark owner is required to submit evidence that the mark is in use within a period of three years. Upon submitting this evidence the PTO will issue the trademark registration. Currently, trademark registration are protected for an initial 10-year period. The registrant may renew the registration for subsequent 10-year periods as long as the mark continues to be used in commerce.
The extend of trademark rights is affected by several factors. These include:
-Distinctiveness of the mark.
-The date of first use in commerce.
-The geographic area where the mark is used.
-The registration of the mark
-The goods or services associated with the mark
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
To obtain trademark protection it is necessary for a person or a business to sell a product using the mark. Consequently, trademark rights are only acquired when the trademark is used in commerce. Additionally, it is recommended to register the trademark in order to obtain special rights in the event of infringement. Trademarks are protected by federal and state law. Trademark owners can register the trademark with the PTO (federal) or with the respective secretary of state. Trademark rights are acquired by being the first to use the mark in commerce. The first user of the mark on goods in commerce creates an association with consumers, and trademark laws are intended to protect the consumer by avoiding confusion and enabling companies to compete fairly.
Under the Trademark Law Revision Act of 1998 a trademark owner can apply for registration prior to using the mark, based upon the owner's bona fide intent to use (ITU) the mark. If the application is approved and published without opposition, the trademark owner is required to submit evidence that the mark is in use within a period of three years. Upon submitting this evidence the PTO will issue the trademark registration. Currently, trademark registration are protected for an initial 10-year period. The registrant may renew the registration for subsequent 10-year periods as long as the mark continues to be used in commerce.
The extend of trademark rights is affected by several factors. These include:
-Distinctiveness of the mark.
-The date of first use in commerce.
-The geographic area where the mark is used.
-The registration of the mark
-The goods or services associated with the mark
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).