Trademark

A trademark (Commonwealth English: trade mark){{an|styling}} is a distinctive sign of some kind which is used by a business to identify itself and its products and services to consumers, and to set the business and its products or services apart from those of other businesses. A trademark is a type of intellectual property, and in particular, a type of industrial property.

Registrability and distinctive character

A trademark may be eligible for registration, or registrable, if amongst other things it performs the essential trademark function, and has distinctive character. Registrability can be understood as a continuum, with "inherently distinctive" marks at one end, "generic" and "descriptive" marks with no distinctive character at the other end, and "suggestive" and "arbitrary" marks lying between these two points.

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• An inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or "fanciful" sign. For example, "Kodak" had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary.
• An arbitrary trademark is usually a common word which is used in a meaningless context (eg. "Apple" for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. For example, SALTY would be an arbitrary mark if it used in connection with refrigerators, as the term "salt" has no particular connection with such products.
• A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer?s perceptive imagination. An example of a suggestive mark might be SALTY used in connection with sailing gear.
• A descriptive mark is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning. An example might be SALTY used in connection with saltine crackers or anchovies. Such terms are not registrable unless it can be shown that distinctive character has been established in the term through extensive use in the marketplace (see further below).
• A generic term is the common name for the products or services in connection with which it is used, such as "salt" when used in connection with salt. A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses, and therefore cannot be afforded any legal protection. Marks which become generic after losing distinctive character are known as genericized trademarks.

From the "salty" examples given above it can be noted that the distinctive character of the term is closely related to the products or services in connection with which this term is used.

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A general method for assessing the distinctive character of a mark is to consider a consumer's reaction to a mark. The mark may only be inherently registrable if the consumer has never encountered the mark before. On the other hand, the mark is unlikely to be inherently registrable if it informs her about any characteristic of the relevant products or services (eg. whether they are delicious, large, spicy, black or sweet, in the case of fruit). In any other case the mark may not be registrable.

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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, and remain in the public domain for use by anyone. For example, a generic term such as "apple", or descriptive terms such as "red" or "juicy" could not be registered in relation to apples.

Related Topics:
Geographical indication - Public domain

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Primary consideration in the selection and use of trademarks should be given to marks with are inherently distinctive, as they possess the strongest distinctive character and do not require evidence of use to establish acquired distinctiveness. A fanciful, arbitrary, or suggestive term can be inherently distinctive and registrable without proof of acquired distinctiveness.

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Although these categories are most easily applied in relation to trademarks comprising words, the same general principles are applied in relation to all kinds of trademarks. For example, a pine tree shape is descriptive when used on pine-scented products.

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Acquired distinctiveness

Although a trademark which lacks distinctive character is not prima facie registrable, most jurisdictions will permit registration if the trademark owner can demonstrate (whether through a licensee or otherwise) that the public exclusively associates the mark with a particular commercial origin or source (ie. the trademark owner or its business). In such cases the mark will be registrable on the basis that this association evidences the distinctive character of the mark as a matter of fact.

Related Topics:
Prima facie - Matter of fact

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If the association is proven the mark is said to exhibit or possess acquired distinctiveness in the European Union and Commonwealth jurisdictions such as Australia, Hong Kong and the United Kingdom, and secondary meaning in the United States. Whether a mark is registrable on the basis of acquired distinctiveness is a question of degree determined by the extent to which the mark has been used in the jurisdiction where registration is sought. In practice, trademark owners rely on evidence of use (eg. sales figures and promotional expenditure) and tools such as consumer surveys to show that consumers chiefly associate an otherwise non-distinctive mark with the trademark owner and its products or services.

Related Topics:
European Union - Commonwealth - Australia - Hong Kong - United Kingdom - United States - Evidence

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In the United States, if a trademark has been used for a continuous period of at least five years after the date of registration, the right to use the mark and the registration may become "incontestable" (eg. invulnerable to cancellation for non-use, but not for becoming generic). In such cases the USPTO checks and confirm whether the request for incontestability meets formality requirements, but whether a registration is incontestable at law can only be determined during proceedings involving the registration.

Related Topics:
Generic - USPTO - Proceedings

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Signs excluded from registration

Most jurisdictions totally exclude certain types of terms and symbols from registration as trademarks, including the emblems, insignia and flags of nations, certain organisations and the modern Olympic Games, marks which are deceptive as to the origin of their associated products or services (eg. as to their geographic origin), and marks comprising signs which are contrary to accepted principles of morality (eg. marks which are obscene).

Related Topics:
Emblem - Insignia - Flag - Organisation - Olympic Games - Morality - Obscene

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