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 HG.org
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Articles on HG.org Related to Trademark Law
- USPTO Issues Guidance to Patent Examiner in Wake of Prometheus DecisionThe U.S. Patent and Trademark Office issued a memorandum to its patent examiners regarding the Supreme Court’s recent decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. The memorandum provides preliminary guidance to the Patent Examining Corps. in light of the Court’s decision, and also indicates that further guidance will be forthcoming.
- Has Louis Vuitton Gone Too Far to Protect Its Trademark?The intellectual property world is buzzing about the trademark dispute brewing between luxury brand Louis Vuitton and University of Pennsylvania Law School. Louis Vuitton recently sent a strongly worded cease and desist letter demanding that the school remove posters advertising the Pennsylvania Intellectual Property Group’s (PIRG) annual symposium on fashion law because the posters "misappropriated and modified" Vuitton's trademarked monogram design.
- Vesting of Contingent Compensation in Pay or Played Television Director AgreementOne of the issues in negotiating director agreements in television is whether contingent compensation provision applies in situations where a director is pay or played off a film. The question becomes will the director be entitled to any portion of the negotiated contingent compensation since she has been terminated and is no longer with the project.
- U.S. Gymnasts Are Not the First “Fab Five”If the U.S. women’s Olympic team wants to capitalize on their gold medal win, they may need to hire an experienced trademark attorney. The group’s famous nickname—the Fab Five—is already trademarked by NBA player Jalen Rose.
- China Leads the World in Patent FilingChina was the world’s top patent filer for 2011, according to a new Thompson Reuters report. The significant uptick is attributed to the country’s desire to transform from a "made in China" to a "designed in China" market.
- Copyright FAQ: What Is a “Useful Article?”In a recent copyright infringement case involving Batman’s famous ride, the Batmobile, a U.S. federal judge ruled that the famous car was protected under the Copyright Act because it possessed non-functional artistic elements that could be separated from the utilitarian aspect of the automobile.
- Patent FAQ: Is My Invention Patentable?A patent is a valuable property right because it excludes others from “making, using, offering for sale, or selling your invention throughout the United States or importing the invention into the United States” for a certain period of time. However, before embarking on the patent process, the first step is determine if your invention can indeed be patented.
- Rock Legend Seeks Trademark for New Audio FormatWhat Does Neil Young Have Against MP3s? Legendary rocker Neil Young reportedly does not like how his songs currently sound on his iPod. To remedy the problem, he is working on a new, high-resolution audio format to replace MP3s, as evidenced by several trademarks applications recently filed on his behalf.
- Strong v. Weak Trademarks: How to Tell the DifferenceStrong trademarks are so distinctive that it is easy to prevent a third-party from using the mark. It is subsequently less difficult to both register and defend these trademarks. In contrast, “weak” trademarks are often descriptive and/or already used by others to describe their goods or services. As a result, weak trademarks are difficult to legally protect.
- Fair Use in TrademarksUnlike copyrights, the defense of fair use in trademark law is relatively new and not as developed.
- All Intellectual Property Law Articles
Articles written by attorneys and experts worldwide discussing legal aspects related to Intellectual Property including: copyright, domain names, licensing law, patents, trade secrets and trademark.
Trademark Law - US
- ABA - Intellectual Property Law Section - Trademarks
The work of the ABA Section of Intellectual Property Law (ABA-IPL) - through its eight Divisions and over 60 committees- is the foundation and heart of our productive efforts as the largest and most influential organization of intellectual property lawyers in the world.
- Intellectual Property Rights e-Recordation (IPRR) - Customs and Border Protection (CBP)
The U.S. Customs & Border Protection (CBP), a bureau of the Department of Homeland Security, maintains a trademark recordation system for marks registered at the United States Patent and Trademark Office. Parties who register their marks on the Principal Register may record these marks with CBP, to assist CPB in its efforts to prevent the importation of goods that infringe registered marks. The recordation database includes information regarding all recorded marks, including images of these marks. CBP officers monitor imports to prevent the importation of goods bearing infringing marks, and can access the recordation database at each of the 317 ports of entry.
- Lanham Act of 1946 (Trademark Act)
The Lanham Act, 15 U.S.C. §§ 1051 et seq., was enacted by Congress in 1946 based on the power granted to it by the Commerce Clause. It provides for a national system of trademark registration and protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur. The scope of the Lanham Act is independent of and concurrent with state common law.
- Madrid Protocol
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks -- the Madrid Protocol -- is one of two treaties comprising the Madrid System for international registration of trademarks. The protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders -- individuals and businesses -- to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.
- Trademark Law - Overview
Trademarks were traditionally protected in the United States only under State common law, growing out of the tort of unfair competition. As early as 1791, Thomas Jefferson proposed that the marks of sailcloth makers could be protected under the Commerce Clause, but it was not until 1870 that Congress first attempted to establish a federal regime for the protection of trademarks. This statute, purported to be an exercise of the Copyright Clause powers, was struck down in the Trade-Mark Cases, leading Congress to finally create a successful act under its Commerce Clause power in 1881.
- Trademark Manual of Examining Procedure (TMEP)
The Manual is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. The Manual contains guidelines for Examining Attorneys and materials in the nature of information and interpretation, and outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.
- Trademark Process - US Patent and Trademark Office
There are three types of intellectual property: trademarks, patents and copyrights. The Trademark Office of the USPTO handles trademarks only. If you have now determined that a trademark is what you need, your second step should be to familiarize yourself with the general rules and requirements for applying for a trademark registration.
- Trademark Trial and Appeal Board
The TTAB is an administrative board that hears and decides adversary proceedings between two parties, namely, oppositions (party opposes a mark after publication in the Official Gazette ) and cancellations (party seeks to cancel an existing registration). The TTAB also handles interference and concurrent use proceedings, as well as appeals of final refusals issued by USPTO examining attorneys within the course of the prosecution of applications.
- US Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is the Federal agency for granting U.S. patents and registering trademarks. In doing this, the USPTO fulfills the mandate of Article I, Section 8, Clause 8, of the Constitution that the Executive branch "promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries." The USPTO registers trademarks based on the Commerce Clause of the Constitution (Article 1, Section 8, Clause 3). Under this system of protection, American industry has flourished.
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
OHIM is the European Union agency responsible for registering trade marks and designs that are valid in all 27 countries of the EU.
Trademark Law - International
- International Trademark Association
The International Trademark Association (INTA) is a not-for-profit membership association of more than 5,500 trademark owners and professionals, from more than 190 countries, dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective national and international commerce.
- Madrid System for the International Registration of Marks
The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland.
- Trademark Law Treaty
The aim of the Trademark Law Treaty (TLT) is to approximate and streamline national and regional trademark registration procedures. This is achieved through the simplification and harmonization of certian features of those procedures, thus making trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable.
- Trademarks - International Guide
Find information on trademark legislation by country.
- World Intellectual Property Organization (WIPO)
The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. WIPO was established by the WIPO Convention in 1967 with a mandate from its Member States to promote the protection of IP throughout the world through cooperation among states and in collaboration with other international organizations. Its headquarters are in Geneva, Switzerland. The Director General is Francis Gurry.
- World Trademark Report
The World Trademark Report is a daily email service that provides Newsletter Updates on trademark developments from over 60 jurisdictions. The Newsletter Updates are written by a panel of 200 leading trademark lawyers from both national and international law firms. They are written in a clear and concise manner, and are designed specifically for senior lawyers in industry and private practice, as well as government and regulatory officials.
Organizations Related to Trademark Law
- AIPLA - Trademark Law Committee
AIPLA is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, trade secret, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.
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