Imagine walking down a busy street and catching your eye on a familiar logo—an apple. Instantly, you recognize the symbol’s meaning, quality, and promised experiences. These iconic symbols are ingrained in our collective consciousness, but what protects them?
This is our first article in the trademark series, where we’ll discuss the significance of trademarks and why securing one is critical in today’s competitive landscape. In our upcoming articles, we will continue to explore trademarks in even greater detail.
What Is a Trademark?
A trademark is a symbol, phrase, word, or design that distinguishes one business’s goods or services. It can be registered or unregistered and is essential intellectual property. The term “trademark” can refer to trademarks representing goods, and service marks representing services.
Brand owners who wish to register their marks nationally or regionally must submit applications to the corresponding trademark offices. However, if they wish to register their marks internationally, they should either use the WIPO’s Madrid System or file an application at the trademark office of the country in which they are seeking protection. Furthermore, the registration process varies from country to country.
For instance, for applications in the US at the USPTO (United States Patent and Trademark Office), a “first to use” system is followed, whereas for applications in Europe at the EUIPO (European Union Intellectual Property Office), a “first to file” system is followed for trademark registration.
Examiners then review these marks and grant them within the jurisdiction of the application if all requirements are met. In order to maintain trademark registration, certain documents must be filed at regular intervals, and the registrations themselves must be renewed every 10 years.
A trademark:
- Identifies the origin of goods or services
- Offers legal protection for your brand by ensuring that others cannot use a similar mark in the same class
- Acts as a defense mechanism against counterfeiting and fraudulent activities
You might be asking yourself, what is a class?
A trademark class categorizes goods and services. Each class represents a distinct area of commerce, and trademarks can be registered in one or more classes based on the goods or services they cover.
By registering a trademark in specific classes, the owner obtains exclusive rights to use that trademark within those classes and can prevent others from using similar marks for related goods or services.
For instance, the brand name Delta is used by multiple entities, while Delta Airlines has its trademark registration under class 39, whereas Delta Faucet Company has its trademark registration under class 21.
Trademarks can be categorized into varying levels of distinctiveness:
- Fanciful or coined marks: Made-up words with no inherent meaning (e.g., KODAK).
- Arbitrary marks: Common words used in unrelated contexts (e.g., APPLE for computers).
- Suggestive marks: Imply attributes or benefits without directly describing the goods or services (e.g., MICROSOFT for software).
- Descriptive marks: Terms that describe a good or service can not be protected as a mark. However, goods or services that are descriptive may acquire distinctiveness over time (e.g., HOMEMAKERS for housekeeping services) and those can be protected as marks.
It should be noted that before selecting any mark, it is essential to undertake a comprehensive trademark clearance search to verify its distinctiveness.
Why Should You Register a Trademark?
Trademark registration provides rights owners with the ability to:
- Establish Credibility: A registered trademark enhances brand legitimacy, earning consumer trust and recognition.
- Protect Brands: Registration provides legal protection against unauthorized use, allowing brand owners to take action against infringers.
- Facilitate Enforcement: Registered trademarks carry a presumption of ownership, simplifying the enforcement process.
- Combat Counterfeiting: Certain countries enable customs authorities to seize counterfeit goods that violate registered trademarks.
- Monetize Assets: A registered trademark can secure funding, and be sold or licensed.
Types of Trademarks
Word Marks
These are words, letters, or numbers, that serve as brand identifiers. These trademark examples include well-known brands like “FedEx” or “Coca-Cola.”
Design Marks
These marks use logos or graphic designs to distinguish the source of a product or service. The Apple logo is an iconic example of a design mark.
Slogan Marks
These are catchy phrases or slogans associated with a brand. Examples of slogans are Nike’s “Just Do It” phrase and McDonald’s “I’m Lovin’ It.”
Service Marks
Service marks identify and differentiate services rather than physical goods. The golden arches of McDonald’s are an example of a service mark.
Certification Marks
These marks certify that goods or services meet specific standards or requirements. Examples include energy star ratings for appliances and “USDA ORGANIC” for agricultural standards.
Collective Marks
These marks are used collectively by associations or groups to identify the source of goods or services. They are further classified into collective trade and service marks (examples include CA, used by the Institute of Chartered Accountants) and collective membership marks (indicating membership in an organization).
Trade Dress
Trade dress refers to visual features or packaging that distinguish a product’s source. The cherry red sole of Christian Louboutin shoes is a notable trade dress example.
Non-Conventional Trademarks
These encompass various forms:
Apart from these basic types, there are two other types of trademarks: dead and registered.
The registration process is just the beginning of your journey to safeguard your brand. Once you have successfully completed the registration, it is essential to focus on renewing the mark and maintaining and enforcing your rights to ensure continued trademark protection.
What Is a Dead Trademark?
Dead trademarks are inactive or unregistered due to the following reasons:
- Abandonment
- Expiration (or not knowing how long does a trademark last?)
- Cancellation
- Being declared inactive
Once dead, a trademark loses legal protection, allowing others to use or register a similar mark. Hence, regular monitoring, with the guidance of a qualified attorney, can guide you in enforcing rights effectively.
Conclusion
In conclusion, trademarks are invaluable tools for filing oppositions, asserting rights in litigation, working with customs, filing UDRPs, and sending C&Ds. They safeguard brand identity, enable legal action against infringement, and protect against counterfeit goods. And above all, they help consumers to recognize goods and services as being authentic.
