Trademark Principals & Basics
TABLE OF CONTENTS
- WHAT IS A TRADE-MARK
- TYPES OF TRADEMARKS
- WHO MAY APPLY FOR A REGISTERED TRADEMARK?
- BENEFITS OF REGISTERED TRADEMARKS
- FUNDAMENTAL COMMON LAW REQUIREMENTS
- MAKING TRADEMARKS (™, SM, ®, MC, MD, etc)
- ENTITLEMENT DATES & PRIORITIES
- PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY
- TYPES & PURPOSES OF SEARCHES
- PROHIBITION ON CONFUSINGLY SIMILAR MARKS
- PROHIBITION ON DESCRIPTIVE TRADEMARKS
- DISCLAIMER OF DESCRIPTIVE TERMS IN TRADEMARKS
- TIME TO OBTAIN A REGISTERED TRADEMARK
- COSTS TO CLEAR, REGISTER & WATCH TRADEMARKS
At its most basic level a trade-mark, or service mark, is a mark used by a trade-mark owner within a country, or a region comprising a group of countries, to identify the goods (referred to as wares in some countries) and services of the trade-mark owner, and to distinguish such goods and services of the trade-mark owner from those of others. Usually, a trade-mark must be capable of distinguishing the source of the trade-mark owner=s goods and services from the source of other goods and services, and must actually continue to distinguish the source of the trade-mark owner=s goods and services, from the goods and services of others, failing which a registered trade-mark may be cancelled or expunged.
Typically, a trade-mark must be owned and used by only one legal entity within a country, or region or countries, however, most countries allow the owner of a registered trade-mark to licence the trade-mark to one or more entities, the use of the trade-mark by the licencee usually being deemed trade-mark use by the registered trade-mark owner thus maintaining the fundamental principle that there may only be one source of goods or services for a particular trade-mark within the entirety of a country or region of countries. A trade-mark may be a word or words above, often including various other keyboard symbols, which are intended to protect the words and permitted special characters regardless of font, stylization or related artwork (not containing any letters), and usually regardless of size, size proportion or juxtaposition with related artwork. A trade-mark may also be a symbol or logo (without a word or words), in which case registered trade-mark protection is substantially restricted to a design, symbol or logo.
A trade-mark may also comprise a slogan separate from the principal mark, the slogan sometimes being quite long. Trade-marks comprising only a letter, a word, words and/or special characters considered to be letters or words, are informally referred to as word marks. Trade-mark which contain artistic features which limit the scope of protection are informally referred to as design marks. Design marks may also include the text of word marks, including slogans, as well as other text in which case the graphic representation of the letters and words including font, proportion and juxtaposition, are to some extent limiting features of the mark. Word marks or design marks, which are not specifically restricted in a particular colour or colours not only protect the mark in black and white but typically in all colours. Conversely a trade-mark may also claim the use of a colour or colours with respect to all or a portion of a trade-mark. Although trade-marks usually must be capable of being seen, trade-mark protection extends beyond this in some countries and may include things like sounds.
A so called ordinary or regular trade-mark or service mark, refers to marks, whether word marks or design marks, which associates a set of goods and services to a trade-mark, without further requirements. The term "Trademark" may be used only to refer to trade-marks used on or in connection with goods. In some countries the term "Service mark" may be used specifically with respect to marks used in connection with the rendering of a service. However, most commonly the term Trade-mark is used generically to describe a mark used on or in connection with goods and/or services.
"Certification Marks" are trade-marks which not only associate a mark with one or more goods and/or services, but also defines particular standards that the goods and/or services, must meet and/or define standards or qualifications for those manufacturing the goods or rendering the services. Certification mark requirements are typically in addition to all the usual requirements of regular or ordinary trade-marks. In many countries it is also provided that a Certification mark may not be used by the trade-mark owner itself, but may only be licenced to other than the trade-mark owner.
"Distinguishing Guises", which may be described in a number of ways, is a particular form of trade-mark wherein the trade-mark comprises the shape of the goods themselves or of the shape of the containers within which the goods are contained or comprises a manner of packaging goods.
"Prohibited Marks", however named, are those marks specifically protected by statute or regulation in a particular country or region, which marks may be owned by one or more levels of government, quasi governmental authorities, and some private entities usually charitable or non-profit organizations. These marks, sometimes referred to as Official marks, may not need to be examined by a particular trademark office and may cover all goods and services, with or without specifying them, unlike regular or ordinary trade-marks wherein protection is only granted for a trade-mark in relation to a defined set of goods and/or services.
Typically, all legal entities may apply for registered trademark protection in a particular country or region. This clearly includes individuals and corporations but may include entities created by statute or pursuant to statute, and may include trade unions. More importantly, entities which may not ordinarily be considered legal entities separate and apart from their members, such as in the case of partnerships or associations, may be considered legal entities for trade-mark purposes. Accordingly, a trademark may often be applied for, and registered to a partnership or legal association.
Whether an applicant is considered a legal entity in a particular country for trade-mark application purposes is usually dependant upon the nature of the entity created in the country of creation.