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Lawyers
Los Angeles Guide

Trademarks



Dana B. Taschner

1925 Century Park East, Suite 500
Los Angeles, CA 90067
(310) 552-4800
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A trademark (Commonwealth English: trade mark ) is conventionally a distinctive sign of some kind, whether that sign comprises a name, word, phrase, logo, symbol, design, picture, styling or a combination of one or more of these elements. A trademark is used by a business to identify itself and its products or services to consumers, and to set itself and its products or services apart from other businesses. A trademark is a type of intellectual property, and in particular, a type of industrial property.

The essential function of a trademark is to uniquely identify the commercial source or origin of products or services, such that a trademark, properly called, is used to indicate source or act as a badge of origin . The use of a trademark in this way is known as trademark use and a trademark owner seeks to enforce its rights or interests in a trademark by preventing unauthorised trademark use.

Terminology and symbols
The Bass Red Triangle, was the first trademark registered in Britain in 1876.
Terms such as 'mark', ' brand' and ' logo' are sometimes used interchangeably with 'trademark'. However, the terms 'brands' and 'branding' raise distinct conceptual issues and are generally more appropriate for use in a marketing or advertising context.

When a trademark is used in relation to services rather than products, it may sometimes be called a service mark. Other specialised types of trademark include certification marks, collective trade marks and defensive trade marks. If a trademark has become synonymous with the generic name of the products or services to which it relates, it is sometimes referred to as a genericized trademark.

As any sign which is capable of performing the essential trademark function may qualify as a trademark, the trademark concept extends to include a range of non-conventional signs such as shapes (ie. three-dimensional trademarks), sounds, smells, moving images (eg. signs denoting movement, motion or animation), taste, and perhaps even texture. However, the extent to which such non-conventional trademarks can be protected or even recognised varies considerably from country to country.

The use of the T symbol next to a trademark, usually in the top right-hand corner, means that the trademark owner claims certain exclusive rights in relation to that trademark. Although this symbol only denotes that the owner holds unregistered trade mark rights, such rights can be enforced by way of an action for passing off. The ® symbol is used to denote that a trademark has been registered with the trade marks office of a particular country or jurisdiction. Upon registration a trademark can be enforced by way of an action for infringement.

Establishing trademark rights - use and registration
Trademark rights, such as the right to exclusive use of a trademark, can generally only be established through use (ie. actual use in the marketplace) or registration (ie. filing an application and obtaining registration with the trade mark office) in a particular jurisdiction. Such rights will only apply in that jurisdiction, a quality which is sometimes known as territoriality . However, there are a range of international trademark laws and systems which facilitate the protection of trademarks around the world (see International trade mark laws below).

A trademark may be registrable (ie. be eligible for registration) if amongst other things it satisfies the essential trademark function, and is not generic or descriptive. Registrability can be perceived as a continuum, with generic and descriptive marks at one end of this continuum, 'fanciful' or 'invented' marks (eg. Kodak) at the other end, and suggestive marks and arbitrary marks laying somewhere in between these two points. Suggestive marks are marks which have some descriptive quality but which require imagination on the part of the consumer to identity this quality (eg. the Mercury image for FTD suggesting delivery speed) and arbitrary marks are usually common words which are used in a meaningless context (eg. Apple for computers).

Therefore marks which identify or describe a product or service, or which are in common use, or which are used as geographical indications, generally cannot be registered as trademarks, as they must remain available for use by anyone (eg. a generic term such as "apple"; or descriptive terms such as "red" or "juicy" generally could not be registered in relation to apples). Although these categories are most easily applied in relation to word marks, graphic elements are evaluated on a similar basis. For example, a pine tree shape is descriptive when used on pine-scented products.

However, in some jurisdictions even trademarks which are otherwise generic or descriptive may be registrable where the public associates these trademarks with a particular commercial origin or source. This association is sometimes known as secondary meaning (eg. in the United States) or as acquired distinctiveness (eg. in Common Law jurisdictions such as Australia, Hong Kong and the United Kingdom). In some jurisdictions, secondary meaning may be established if the trademark owner can demonstrate exclusive use of the mark for a defined period of time. Evidence of use and tools such as consumer surveys may also be used to show that the public will chiefly associate the descriptive mark with the trademark owner and its products or services.

Most jurisdictions exclude some categories of terms and symbols from trademark protection entirely. In addition to generic terms, excluded marks include marks used for official government business (eg. national flags; the symbols of the modern Olympic Games), marks that are deceptive as regarding the nature or origin (including geographic origin) of the products or services to which they apply, and marks that are considered morally offensive or obscene.

Maintaining trademark rights - abandonment and genericide
Trademarks rights must be maintained through actual use of the trademark. These rights will diminish over time if a mark is not actively used. In the case of a trademark registration, failure to actively use the mark, or to enforce the registration in the event of infringement, may also expose the registration itself to removal from the register after a certain period of time.

All jurisdictions with a mature trademark registration system provide a mechanism for removal in the event of such non use , which is usually a period of either three or five years. The intention to use a trade mark can be proven by a wide range of acts as shown in the Wooly Bull and Ashton v Harlee cases.

In the US, failure to use a trademark for this period of time, aside from the corresponding impact on product quality, will result in abandonment of the mark, whereby any party may use the mark. An abandoned mark is not irrevocably in the public domain, but may instead be re-registered by any party which has re-established exclusive and active use, including the original mark owner. Further, if a court rules that a trademark has become "generic" through common use (such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it), the corresponding registration may also be ruled invalid.

For example, the Bayer company's trademark "Aspirin" has been ruled generic in the United States, so other companies may use that name for acetylsalicylic acid as well (although it is still a trademark in Canada). Xerox for copiers and Band-Aid for adhesive bandages are both trademarks which are at risk of succumbing to genericide, which the respective trademark owners actively seek to prevent. In order to prevent marks becoming generic, trademark owners often contact those who appear to be using the trademark incorrectly, from web page authors to dictionary editors, and request that they cease the improper usage. The proper use of a trademark means using the mark as an adjective, not as a noun or a verb, though for certain trademarks, use as nouns and, less commonly, verbs is common. For example, Adobe sent e-mails to many web authors using the term "photoshopped" telling them that they should only use the term "modified by Adobe® Photoshop® software." Xerox has also purchased print advertisements declaring that you cannot "xerox" a document, but you can copy it on a Xerox Brand copying machine. Such efforts may or may not be successful in preventing genericism in the long run, which depends less on the mark owner's efforts and more on how the public actually perceives and uses the mark. In fact, legally it is more important that the trademark holder visibly and actively seems to attempt to prevent its trademark from becoming generic, regardless of real success.

Enforcing trademark rights
The extent to which a trademark owner may prevent unauthorized use of trademarks which are the same as or similar to its trademark depends on various factors such as whether its trademark is registered, the similarity of the trademarks involved, the similarity of the products and/or services involved, and whether the owner's trademark is well known .

If a trademark has not been registered, some jurisdictions (especially Common Law countries) offer protection for the business reputation or goodwill which attaches to unregistered trade marks through the tort of passing off. Passing off may provide a remedy in a scenario where a business has been trading under an unregistered trade mark for many years, and a rival business starts using the same or a similar mark.

If a trademark has been registered, then it is much easier for the trademark owner to demonstrate its trademark rights and to enforce these rights through an infringement action. Unauthorised use of a registered trade mark need not be intentional in order for infringement to occur, although damages in an infringement lawsuit will generally be greater if there was an intention to deceive.

For trademarks which are considered to be well known, infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner's mark is registered.

Wrongful or groundless threats of infringement
Various jurisdictions have laws which are designed to prevent trademarks owners from making wrongful threats of trademark infringement action against other parties. These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies.

Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action.

Other aspects
Consumer protection and confusion
One of the public policy objectives given for trademark law is consumer protection, that is, to prevent the public from being misled as to the origin or quality of a product or service. A trademark owner also uses trademark law to prevent unauthorised third party use of a mark which is identical to the owner's mark, or which is so similar that use of the other party's mark would result in a likelihood of confusion.

For example, a computer manufacturer other than Apple which makes products using the APPLE trademark, or a soft drink manufacturer which calls its product 'Popsi' (in imitation of the PEPSI trademark; although the similarity does not need to be this close) may amount to trademark infringement where the owner holds a trademark registration.

By identifying the source of goods or services, trademarks help consumers to identify their expected quality and assist in identifying goods and services that meet the individual consumer's expectations. Trademarks also fix responsibility. Without trademarks, a seller's mistakes or low quality products would be untraceable to their source. Therefore, trademarks provide an incentive to maintain a good reputation for a predictable quality of goods. For example, a consumer that purchases and likes Nabisco Premium saltines has a reasonable expectation that Nabisco Premium saltines found anywhere in the United States will be of uniform taste and quality. Failure to maintain consistent quality can lead to abandonment of a mark, when the law will no longer protect the trademark because it has ceased to function as an indicator of a particular product. Marks may also be abandoned by "naked licensing", which involves the owner granting rights to use the mark to another party without sufficiently controlling how or on what they use it. The mark is then released for general use. (see also below under Policing Trademarks )

Because the emphasis is on consumer protection, the user of a trademark does not "own" the mark in the same way that it may own a copyright. With some exceptions (see below under Dilution ), the protection of a trademark is limited to certain markets, which can be defined by either the type of product or service, or even a particular geographic area. For example, though "Lexis" and "Lexus" are confusingly similar marks, using the former for a news and information service and the latter for luxury cars means that the public is not likely to confuse one while looking for the other, and so neither can restrict the other's use. A trademark may also be limited geographically, if it can be determined that products or services do not compete because of the physical separation of their markets. Considering the national and even global nature of most manufacturers and distributors, the reach of print and broadcast advertising, and the disregard of the internet for geographic boundaries, this limitation is likely to be an issue in fewer and fewer cases. The market-specific limitation is not interpreted strictly. Instead, attention is given to how closely related markets are (such as pancake mix and pancake syrup), or how likely it is that the mark owner will "bridge the gap" and move into the other product or geographic market.

Dilution

A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (i.e., just the word Pepsi spoken, or on a billboard).

Transfer and licensing of trademarks (US law)
In the US, a trademark cannot be sold independently of the underlying goodwill. To allow such a 'sale in gross' would, the courts have said, 'be a fraud upon the public'. Thus, a trademark right can be sold, and a valid assignment made on the trademark registry, only if the conveyance of the mark is accompanying the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods.

Many countries allow trademarks to be licensed. Under US law, the licensor must monitor the quality of the goods produced under license or risk losing the mark. A license without quality control falls under the doctrine of 'naked licensing' which the courts consider to be a form of abandonment. Trademark licenses are commonly for a limited period and include appropriate warranties of quality by the licensee plus rights to inspect and monitor for quality control by the licensor.

Comparison with patents, designs and copyright
While trademark law seeks to protect indications of the commercial source of products or services, patent law generally seeks to protect new and useful inventions, and registered designs law generally seeks to protect the look or appearance of a manufactured article. Trademarks, patents and designs collectively form a subset of intellectual property known as industrial property, because they are often created and used in an industrial or commercial context.

By comparison, copyright law generally seeks to protect original literary, artistic and other creative works.

Although intellectual property laws such as these are theoretically distinct, more than one type may afford protection to the same article. For example, the particular design of a bottle may qualify for copyright protection as a nonutilitarian [sculpture], or for trademark protection based on its shape, or the 'trade dress' appearance of the bottle as a whole may be protectable. Titles and character names from books or movies may also be protectable as trademarks while the works from which they are drawn may qualify for copyright protection as a whole.

Drawing these distinctions is necessary but often challenging for the courts and lawyers, especially in jurisdictions such as the United States, where patents and copyrights will eventually expire into the public domain but trademarks do not. Unlike patents and copyrights, which in theory are granted for one-off fixed terms, trademarks remain valid as long as the owner actively uses and defends them and maintains their registrations with the applicable jurisdiction's trade marks office. This often involves payment of a periodic renewal fee.

As a trademark must be used in order to maintain rights in relation to that mark, a trademark can be 'abandoned' or its registration can be cancelled or revoked if the mark is not continuously used. By comparison, patents and copyrights cannot be 'abandoned' and a patent holder or copyright owner can generally enforce their rights without taking any particular action to maintain the patent or copyright. Additionally, patent holders and copyright owners may not necessarily need to actively police their rights. However, a failure to bring a timely infringement suit or action against a known infringer may give the defendant a defense of implied consent or estoppel when suit is finally brought.

Trademarks and Domain Names
The advent of the Domain Name System has led to attempts by trademark holders to enforce their rights over domain names that are similar or identical to their existing trademarks, particularly by seeking control over the domain names at issue. As with dilution protection, enforcing trademark rights over domain name owners involves protecting a trademark outside the obvious context of its consumer market, because domain names are global and not limited by goods or service.

This conflict was more easily resolved when the domain name user actually used his website to compete with the trademark owner. Cybersquatting, however, involves no such competition, but instead an unlicensed user registering the trademark as a domain name in order to pressure a payoff (or other benefit) from the lawful mark owner. Typosquatters-those registering common misspellings of trademarks as domain names-have also been targeted successfully in trademark infringement suits.

This clash of the new technology with preexisting trademark rights resulted in several high profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trademark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so initial interest confusion was a concept applied instead. Infringing domain names were analogized to a sign identifying one store but falsely placed in front of another, in the hopes that customers will in the end not care that they were duped or will at least give up on trying to reach the right store.

Most courts particularly frowned on cybersquatting, and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trademarks) to reach into the area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically, and to provide explicit remedies against cybersquatters.

This international legal change has also led to the creation of ICANN Uniform Dispute Resolution Policy and other dispute policies for specific countries (such as Nominet UK 's DRS ) which attempt to streamline the process of resolving who should own a domain name (without dealing with other infringement issues such as damages). This is particularly desirable to trademark owners when the domain name registrant may be in another country or even anonymous.

Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trademarks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names.

As with other trademarks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon.com is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products.

Terms which are not protectable by themselves, such as a generic term or a merely descriptive term that has not acquired secondary meaning, do not become registrable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. Examples of such domain names ineligible for trademark protection would be "SOFT.COM" (merely descriptive when applied to a product such as facial tissue), or "BANK.COM" (generic for banking services).

International trade mark laws
It is important to note that although there are systems which facilitate the filing, registration or enforcement of trade mark rights in more than one jurisdiction on a regional or global basis (eg. the Madrid and CTM systems, see further below), it is currently not possible to file and obtain a single trade mark registration which will automatically apply around the world. Trade mark laws are territorial in nature and generally apply only in the applicable country or jurisdiction, a quality which is sometimes referred to as 'territoriality'.

Agreement on Trade-Related Aspects of Intellectual Property Rights
The inherent limitations of the territorial application of trade mark laws have been mitigated by various intellectual property treaties. One such treaty is the WTO (formerly GATT) Agreement on Trade-Related Aspects of Intellectual Property Rights (' TRIPs'). Amongst other things, TRIPs generally requires that the trade mark laws of member jurisdictions are compatible with each other, a quality which is known as 'harmonisation'. For example, Article 15(1) of TRIPs provides a definition for 'sign' which is used as or forms part of the definition of a 'trade mark' contained in the trade mark legislation of many jurisdictions around the world.

The Madrid system for the international registration of marks

Foremost amongst the systems which facilitate registration of trade marks in multiple jurisdictions is the 'Madrid system', which provides a centrally administered system of obtaining a bundle of single jurisdiction trade mark registrations based on an 'international registration'.

In basic terms, the primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees, and make any changes (eg. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process.

Community Trade Mark system

The Community Trade Mark system is the supranational trade mark system which applies in the European Union, whereby registration of a trade mark with the Office of Harmonisation in the Internal Market (Trade Marks and Designs) (i.e.. OHIM, the trade marks office of the European Union), leads to a registration which is effective throughout the EU as a whole. The CTM system is therefore said to be unitary in character, in that a CTM registration applies indivisibly across all European Union member states. However, the CTM system did not replace the national trade mark registration systems; the CTM system and the national systems continue to operate in parallel to each other. See also European Union trade mark law.

What is a Trademark?
A trademark is a word, phrase, logo or other symbol, used to identify a product, the source of a product and the manufacturer or merchant. A trademark is usually used to distinguish one product and its manufacturer from another.

Common Types of Trademarks
There are many types of trademarks, such as:
Service Mark – Rather than promoting a product, the service mark promote a particular type of service
Trade Dress – A product is sometimes known for it's special packaging, or trade dress
Collective Mark – A collective mark is a symbol, word, or phrase used to identify a group, organization or association, and the products, services or members of the group
Certification Mark – A certification mark is a symbol or name used to guarantee the quality of another's service or product
What is a Trademark Search?
Before you decide to use a particular trademark or name, you should conduct a trademark search to determine whether a similar trademark already exists. If you use a trademark that is similar to, or the same as, another person's registered trademark, you can be held liable for damages and the registered owner's attorney fees. Generally, a court will presume that the unregistered trademark owner knew about the registered trademark, even if you did not. Trademark attorneys and firms are trained to make a thorough inspection of registered trademarks to prevent this predicament.

Registering a Trademark
Before trying to register a trademark with the Patent and Trademark office, the owner must first put the trademark to use in interstate commerce. Interstate commerce means that the mark must be used on something that crosses state or international lines. A mark will not be registered unless and until it is used in interstate commerce.

The U.S. Patent and Trademark Office
The trademark owner then must fill out a form and submit it, along with a fee, to the Patent and Trademark Office. In order for the trademark to be approved, the office must determine that the trademark is not:
Confusingly similar to or the same as another trademark
Prohibited or reserved
Generic

Overly descriptive
Once the trademark has been approved by the Patent and Trademark Office, it will be registered for a term of ten years. Six years into the ten-year period, the owner must then file a form stating that the trademark is still in use. Otherwise, the registration may lapse.

Trademark Infringement or Dilution
Federal law offers protections for a trademark if someone uses it without permission. The trademark is protected from:
Infringement – Infringement occurs when someone uses the same or similar trademark for a similar good or service

Dilution – Trademark dilution occurs when someone uses a well-established trademark for a different service, but either tarnishes the trademark's good name through the use or weakens the consumer's association between the trademark and the services

Should I Consult an Attorney about my Trademark Issue?
An attorney can help you meet all the deadlines and fulfill all the requirements. A lawyer can also participate in on-going research to make certain no one else is using or diluting your trademark without your permission. Additionally, if you have an issue of trademark dilution or infringement, an attorney can guide you through the difficult and strict procedural requirements for litigation and bring out the core of your case.

 

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