In this lesson, you’re expected to:
– learn about the basic requirements and categories of trademarks
– understand how to register and obtain a trademark
– discover how to protect a trademark

According to WIPO, “a trademark is a sign that is capable of distinguishing the goods or services of one enterprise from those of other enterprises.”

A trademark can also be used to identify a service and it is called a service mark.

Trademark Requirements & Categories

The basic requirement of a trademark is distinctiveness. Whoever seeks its protection must be able to show that the consuming public actually identifies the underlying source of the particular good or service with the trademark.

In determining whether a mark is distinctive, courts usually classify marks into five categories based on the relationship between the mark and the underlying product:

1) Fanciful

Comprises an entirely invented or “fanciful” sign.

For example, Kodak, when it was adopted and used as a trademark, had no meaning in relation to photographic goods.

2) Arbitrary 

It has a common meaning and it bears no logical relationship to the underlying good or service – e.g., Apple, Google.

3) Suggestive

It is a mark that suggests a characteristic of the underlying good or service – e.g., Citibank (financial services).

4) Generic

It is a mark that describes the general category to which the underlying product belongs. Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product.

Under some circumstances, terms that are not originally generic can become generic over time (a process called “genericity”), and thus become unprotected – e.g., “aspirin” was originally a brand name for the particular pain reliever. Over time, consumers no longer identified it with any particular manufacturer and instead identified it with an entire class of goods.

5) Descriptive

It directly describes, rather than suggests, a characteristic or quality of the underlying good or service. It conveys an immediate idea of the ingredients, qualities, color, odor, function, dimensions of the good or service – e.g., Holiday Inn (hotel rooms).

To be eligible for protection under trademark law, a descriptive mark must acquire distinctiveness through “secondary meaning”which refers to the consumer’s recognition of the mark as a result of advertising or even just time in the marketplace.
[Optional] Trademarks and Avoiding Consumer Confusion
Watch this 11-minute video to learn more:
What kinds of trademarks can be registered?

Traditionally, when we think about trademarks, things like logos and brand names come to mind. However, increasingly, trademarks can be applied to shapes, slogans, radio jingles, and sensory marks such as sounds, colors, smells, and even gestures – the possibilities are almost limitless…

Anything that signifies an underlying source of the product or service can be a trademark.

On the other hand, immoral, deceptive, confusing marks are not protected.

Obtaining a trademark protection and its consequences

At the national/regional level, trademark protection can be obtained through registration, by filing an application for registration with the national/regional trademark office and paying the required fees.

Although there have always been some trademarks whose fame crosses national boundaries, e.g., Coca-Cola, an ever-growing number of trademarks are coming to have broad international recognition. Therefore, despite trademark protection remaining essentially territorial in extent, an international protection was also needed.

As a consequence, at the international level, the WIPO’s Madrid System was created as a primary international system for facilitating the registration of trademarks. It allows the protection of a mark in the territories of up to 98 countries through only one international application.

Alternatively, an international protection can also be obtained through filing an application with the national/regional trademark office of each country where the protection is being sought.

Trademark registration confers an “exclusive right” to the use of the registered trademark by its owner or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder, for example, in case of litigation.

[Optional] TMview
Use this free tool to carry out a trademark search and check the availability of your idea for a trademark name in Europe. You can also find out the goods and services protected by your competitors’ trademarks.

Why promote and protect trademarks?

Some of the reasons to justify a trademark are:

Indicator of origin: marks may operate as indicators of the trade source from which goods or services come or are in some other way connected.

Brand attractiveness: increasingly, trademarks attract the consumer through “extrinsic” qualities, which go beyond their “intrinsic” function as indicator of origin. Trademarks also indicate quality, reputation, the stature of the producer, or even a way of seeing life.

Additionally, there are social reasons:

Prevention of imitations
: most legal systems developed registration to protect consumers from deception. That is, to prevent the public from purchasing inferior goods or services in the mistaken belief that they originate from another trader.

Investment or advertising function: proprietors of trademarks have invested a good deal in the promotion of their marks, which deserve protection as such, even when there is no abuse arising from misrepresentation either about origin or quality.

Therefore, the protection of trademarks benefits both the consuming public and proprietors.
How long does trademark protection last?

Although it can vary according to the country where protection is sought, the term of trademark is usually 10 years.

It can be renewed indefinitely for the same period on payment of additional fees. As long as the basic requirements of a trademark are being met, it is possible to keep a trademark forever.

NOTE: Trademarks can lose distinctiveness. That is a process known as “genericity” or becoming generic. In this case, although trademarks can have a perpetual term, they can end at any time if the consuming public ceases to understand them in the way that they represent its source.
Can a trademark be lost?

A trademark can be lost even after registration due to:

1) Genericide: it occurs when the public considers the trademark to represent a general category of products or services rather than associating it with the owner – e.g., aspirin for a headache medicine and cellophane for transparent cellulose sheets.

2) Abandonment: when there is a failure to use a trademark for a specific period of time with no intent to ever resume its use.

3) Improper licensing or assignment: the licensing or authorizing the use of the mark by third parties with no adequate control over the quality of the goods or services offered under the trademark. When licensing a trademark, it is highly recommended to establish brand usage guidelines, clearly demarcating the licensee’s rights and limits.

To avoid this situation, the trademark owner should make proper use of a trademarks to ensure its long-term viability and the goodwill associated with it.
[Optional] Copyright, Trademark and Patent: What’s the Difference?
Watch this 2-minute video to find out:
The Madrid System and its International Protection

Under the Madrid System, it is possible to obtain protection for a mark by a single international application in the territory of its 98 members, which represent in excess of 80% of world trade. Also, the applicant’s portfolio of marks can be managed and maintained through one centralized system.

Famous Trademark Cases

1) Mattel, Inc. (2008)

Barbie-maker, Mattel filed a lawsuit claiming that MGA Entertainment Inc. stole the concept and the name of the Bratz doll from them. Mattel was finally declared the winner in the long-running Intellectual Property battle.

2) One of the most controversial trademarked words is ‘superhero’ which is currently a trademark for both Marvel and DC Comics (since the 1960s) and they vigorously pursue other comic book publishers in court who use the word on their title pages.

There has been much debate over its legitimacy with many claiming the word as descriptive rather than distinctive.

3) Who has the right to trademark the word “apple” – The Beatles or Apple, Inc.?

The Beatles came first with their music company Apple Corps, and years later Steve Jobs launched Apple Inc. (previously Apple Computer). That was in 1976 and since then, Apple Corps has filed suits against Apple Inc. for trademark infringement.

Apple Inc. agreed to pay Apple Corps a cash settlement and to stay out of the music business. But with the advent of iTunes, they reached another settlement in which Apple Inc. agreed to purchase Apple Corps’ trademark rights and then license them back.

[Optional] The 10 Most Valuable Trademarks
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