Trademark Law

A Trademark or service mark is a distinctive word, phrase, slogan, name, graphic symbol, picture, emblem, device, design, logo or any combination thereof which is used in commerce to identify and distinguish a company’s products or services from that of another company and to indicate the source of the goods or services. A service mark does the same thing as a trademark, but instead of products, service marks identify services and events.

Trademark law governs the use of trademarks and service marks. Trademarks are a form of intellectual property. The law entitles the owner(s) to exclusive use of the mark in relation to the products or services for which it is registered. 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 similar to the registered products or services, know as trademark infringement.

Trademark infringement occurs when one party adopts or uses a trademark that is confusingly similar to the prior adopted and used trademark for similar products or services. To prove infringement the mark’s owner(s) must prove that the infringer’s use of the mark has created a likelihood of confusion about the origin of the defendant's goods or services. The confusion created can be that the infringer’s products are the same as that of the owner(s) or that the infringer is somehow associated, affiliated, connected, approved, authorized or sponsored by the owner(s). The necessity of the confusion element has been well established under both federal and state case law.

Trademarks are governed by both state and federal law. State common law originally provided the main source of protection of trademarks, but over time, federal trademark law has assumed much of the ground originally covered by state common law and now provides the main source of trademark protection. The main federal statute is the Trademark Act of 1946, as amended (the Lanham Act) which codified much of the existing common law on trademarks. The Patent and Trademark Office (PTO) is responsible for administering all laws relating to trademarks and patents in the U.S.

Rights to a trademark can be acquired by either being the first to register the mark with the PTO, or by being the first to use the mark in commerce, which provides protection at the state level by statute and/or common law. To obtain the greatest protection for a mark, it is usually advisable to register the mark. A mark which is registered with the PTO should be marked with the ® symbol. Unregistered trademarks should be marked with a “tm”, and unregistered service marks should be marked with an “sm”.

Trademark rights can be lost through improper licensing, assignment, genericity or abandonment. If the use of a trademark is licensed without adequate quality control or supervision by the trademark owner, the trademark will be canceled. And if the rights to a trademark are assigned to another party in gross, without corresponding sale of any assets, the trademark will be canceled. Genericity is when a trademark loses its distinctiveness over time and becomes generic, thereby losing its trademark protection. Trademark rights must be maintained through actual lawful use of the mark for a period of time, which varies, or rights to the mark will cease. In addition, if a mark’s registered owner(s) fail to enforce the registration in the event of infringement, it may also expose the registration to become liable for an application for removal from the register after a certain period of time on the grounds of “non-use”. Copyright

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Trademark Law in Europe

  • European Communities Trademark Association

    ECTA brings together all those persons practising professionally in the Member States of the European Community in the field of trade marks, designs and related IP matters. These professionals are trade mark advisors, trade mark attorneys, lawyers practising in industry and all others who can be considered specialist practitioners in these areas. ECTA is therefore, an association made up of individuals coming from industry and from private practice, who have a common interest concerning the protection of trade marks and designs in the European Union.

  • MARQUES - Association of European Trademark Owners

    MARQUES, which was founded in 1987, is the association of European trade mark owners. MARQUES represents trade mark owners’ interests before the relevant EU and other international bodies in all relevant areas. It also organises networking and educational events and promotes communication between brand owners in Europe. The MARQUES website provides a wide range of information and general IP resources of use to both trade mark owners and legal practitioners.

  • Trademarks and Designs Registration Office - EU

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  • World Intellectual Property Organization (WIPO)

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  • World Trademark Report

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Organizations Related to Trademark Law

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    In October of 2004, the Bush Administration announced an initiative that reinforced this objective – the Strategy Targeting Organized Piracy (STOP!). STOP! is led by the White House and brings together the Department of Commerce, the Department of Justice, the Department of Homeland Security, the Food and Drug Administration, the State Department, and the Office of the U.S. Trade Representative. STOP! is the most comprehensive initiative ever advanced to fight global piracy by systematically dismantling piracy networks, blocking counterfeits at our borders, helping American businesses secure and enforce their rights around the world, and collaborating with our trading partners to ensure the fight against fakes is global.

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