Trademark

Bass Brewery's logo became the first image to be registered as a trademark in the UK, in 1876[22]

The oldest registered trademark has various claimants, enumerated below:

• Australia: Most significant companies were already using trademarks in the mid-nineteenth century and while Australia based its patent law on the British law system, the then province of South Australia (1863), and colonies Queensland and Tasmania (1864), New South Wales (1895) Victoria (1876) and Western Australia (in 1885) had enacted laws to protect trademarks well before Britain did.[23] Thus the Bank of New South Wales had registered its coat of arms in c.1850 and firms such as Tasmanian Jam and Preserved Fruit Co. had a trademark in 1878,[23] when, after the Federation of Australia, the Commonwealth Trademarks Register was introduced on 2 July 1906 and the Trade Marks Office opened in Melbourne, on which date more than 750 applications were lodged.[24] A product for treatment for coughs colds and bronchitis, PEPS, 'a wonderful breathing medicine in soluble tablet form', was the first of these federal trademarks, registered by Charles Edward Fulford; a rounded rectangle designed for the top of a tin. The shape contained the word 'PEPs' along with a descriptive blurb that read 'for coughs, colds & bronchitis.'[24]
• United Kingdom: 1876 – The Bass Brewery's label incorporating its triangle logo for ale was the first trademark to be registered under the Trade Mark Registration Act 1875.[22]
• United States: there are at least two claims:
  • A design mark with an eagle and a ribbon and the words "Economical, Beautiful, and Durable"[25] was the first registered trademark, filed by the Averill Chemical Paint Company on 30 August 1870 under the Trademark Act of 1870.[16][26] However, in the Trade-Mark Cases, 100 U.S. 82 (1879), the U.S. Supreme Court held the 1870 Act to be unconstitutional.[16][26]
  • The oldest U.S. registered trademark still in use is trademark reg. no 11210,[27] a depiction of the Biblical figure Samson wrestling a lion, registered in the United States on 27 May 1884 by the J.P. Tolman Company[28] (now Samson Rope Technologies, Inc.), a rope-making company.[29]
• Germany: 1875 – The Krupp steel company registered three seamless train wheel tires,[30] which are put on top of each other, as its label in 1875, under the German Trade Mark Protection Law of 1874.[31] The seamless train wheel tire did not break, unlike iron tires with seams, and was patented by Krupp in Prussia in 1853.

A trademark may be eligible for registration, or registerable, if it performs the essential trademark function and has a distinctive character. Registerability can be understood as a continuum, where marks are categorized as "generic", "descriptive", "suggestive", "arbitrary", or "fanciful", by order of increasing strength, as is the case in the United States. "Fanciful" refers to marks whose sole purpose is to function as trademarks. Marks that fall under the last three categories are deemed "inherently distinctive" and thus protectable ab initio. "Descriptive" marks must acquire distinctiveness through secondary meaning – consumers have come to recognize the mark as a source indicator – to be protectable. "Generic" terms are used to refer to the product or service itself and cannot be used as trademarks.[35] (See the KitKat v. Cadbury case.)[36]

Specifically, once registered with the U.S. Patent and Trademark Office the owner of a trademark is required to file a Section 8 Affidavit of Continuous Use to maintain the registration between the 5th and 6th year anniversaries of the registration of the mark or during the 6-month grace period following the 6th anniversary of the registration.[39] During this period, a trademark owner may concurrently opt to file a Section 15, Declaration of Incontestability. A mark declared incontestable is immune from future challenge, except in instances where the mark becomes generic, the mark is abandoned, or if the registration was acquired fraudulently. Note, if the Section 8 Affidavit is filed during the 6-month grace period additional fees to file the Affidavit with the U.S. Patent and Trademark Office will apply.[40]

In addition to the requirements above, U.S. trademark registrations are also required to be renewed on or about every 10th anniversary of the registration of the trademark. The procedure for 10-year renewals is somewhat different from that for the 5th–6th year renewal. In brief, registrants are required to file both a Section 8 Affidavit of Continuous Use as well as a Section 9 Application for Renewal every ten years to maintain their registration.[41]

Trademark is subject to various defenses, such as abandonment, limitations on geographic scope, and fair use. In the United States, the fair use defense protects many of the interests in free expression related to those protected by the First Amendment.

A product bearing "Linux" name, but not infringing the trademark owned by Linus Torvalds, because it falls into a different category

Fair use may be asserted on two grounds, either that the alleged infringer is using the mark to describe accurately an aspect of its products, or that the alleged infringer is using the mark to identify the mark owner. One of the most visible proofs that trademarks provide a limited right in the U.S. comes from the comparative advertising that is seen throughout U.S. media.[44]

An example of the first type is that although Maytag owns the trademark "Whisper Quiet" for its dishwashers, makers of other products may describe their goods as being "whisper quiet" so long as these products do not fall under the same category of goods the trademark is protected under.

An example of the second type is that Audi can run advertisements saying that a trade publication has rated an Audi model higher than a BMW model since they are only using "BMW" to identify the competitor. In a related sense, an auto mechanic can truthfully advertise that he services Volkswagens,[45] and a former Playboy Playmate of the Year can identify herself as such on her website.[46]

Various jurisdictions have laws that are designed to prevent trademark owners from making wrongful threats of a 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.[47] In this situation, the party receiving such a threat may seek from the Court a declaratory judgment; also known as a declaratory ruling.

Trademark law is designed to fulfill the public policy objective of consumer protection, by preventing the public from being misled as to the origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate the identification of products and services which meet the expectations of consumers as to the quality and other characteristics.

Trademarks may also serve as an incentive for manufacturers, providers, or suppliers to consistently provide quality products or services to maintain their business reputation. Furthermore, if a trademark owner does not maintain quality control and adequate supervision about the manufacture and provision of products or services supplied by a licensee, such "naked licensing" will eventually adversely affect the owner's rights in the trademark. For US law see, ex. Eva's Bridal Ltd. v. Halanick Enterprises, Inc. 639 F.3d 788 (7th Cor. 2011). This proposition has, however, been watered down by the judgment of the House of Lords in the case of Scandecor Development AB v. Scandecor Marketing AB et al. [2001] UKHL 21; wherein it has been held that the mere fact that a bare license (the equivalent of the United States concept of a naked license) has been granted did not automatically mean that a trademark was liable to mislead.

By the same token, trademark holders must be cautious in the sale of their mark for similar reasons as apply to licensing. When assigning an interest in a trademark, if the associated product or service is not transferred with it, then this may be an "assignment-in-gross" and could lead to a loss of rights in the trademark. It is still possible to make significant changes to the underlying goods or services during a sale without jeopardizing the trademark, but companies will often contract with the sellers to help transition the mark and goods or services to the new owners to ensure continuity of the trademark.

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. Continued active use and re-registration can make a trademark perpetual, whereas copyright usually lasts for the duration of the author's lifespan plus 70 years for works by individuals, and some limited time after creation for works by bodies corporate.[48] This can lead to confusion in cases where a work passes into the public domain but the character in question remains a registered trademark.

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 non-utilitarian [sculpture], or 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. Trademark protection does not apply to utilitarian features of a product such as the plastic interlocking studs on Lego bricks.[49]

Drawing these distinctions is necessary, but often challenging for the courts and lawyers, especially in jurisdictions where patents and copyrights pass into the public domain, depending on the jurisdiction. 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 competent authorities. This often involves the payment of a periodic renewal fee.

As a trademark must be used to maintain rights about that mark, a trademark can be 'abandoned' or its registration can be canceled 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 the suit is finally brought.

Like patents and copyrights, trademarks can be bought, sold, and transferred from one company or another. Unlike patents and copyrights, trademarks may not remain intact through this process. Where trademarks have been acquired for marketing generic (non-distinctive) products, courts have refused to enforce them.

In 1923, the author Edgar Rice Burroughs registered his fictitious character Tarzan as a trademark; even after the copyright to the Tarzan story expired, his company used ownership of the trademarks relating to the character (which unlike copyrights, do not have a limited length) to control the production of media using its imagery and license the character for use in other works (such as adaptations). This practice is a precursor to the modern concept of a media franchise.[50]

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 (e.g., just the word Pepsi spoken, or on a billboard). Under trademark law, dilution occurs either when unauthorized use of a mark "blurs" the "distinctive nature of the mark" or "tarnishes it." Likelihood of confusion is not required. 15 U.S.C §§ 1127, 1125(c).

In various jurisdictions, a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would "be a fraud upon the public". In the U.S., trademark registration can therefore only be sold and assigned if accompanied by 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.

Licensing means the trademark owner (the licensor) grants a permit to a third party (the licensee) to commercially use the trademark legally. It is a contract between the two, containing the scope of content and policy. The essential provisions to a trademark license identify the trademark owner and the licensee, in addition to the policy and the goods or services agreed to be licensed.

Most jurisdictions provide for the use of trademarks to be licensed to third parties. The licensor must monitor the quality of the goods being produced by the licensee to avoid the risk of the trademark being deemed abandoned by the courts. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to the quality and the licensor has rights to inspection and monitoring.

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 is easily resolved when the domain name owner actually uses the domain to compete with the trademark owner. Cybersquatting, however, does not involve competition. Instead, an unlicensed user registers a domain name identical to a trademark and offers to sell the domain to the trademark owner. Typosquatters—those registering common misspellings of trademarks as domain names—have also been targeted successfully in trademark infringement suits. "Gripe sites", on the other hand, tend to be protected as free speech, and are therefore more difficult to attack as trademark infringement.

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. Initial interest confusion refers to customer confusion that creates an initial interest in a competitor's "product" (in the online context, another party's website). Even though initial interest confusion is dispelled by the time any actual sales occur, it allows a trademark infringer to capitalize on the goodwill associated with the original mark.

Several cases have wrestled with the concept of initial interest confusion. In Brookfield Communications, Inc. v. West Coast Entertainment Corp. the court found initial interest confusion could occur when a competitor's trademarked terms were used in the HTML metatags of a website, resulting in that site appearing in the search results when a user searches on the trademarked term. In Playboy v. Netscape, the court found initial interest confusion when users typed in Playboy's trademarks into a search engine, resulting in the display of search results alongside unlabeled banner ads, triggered by keywords that included Playboy's marks, that would take users to Playboy's competitors. Though users might ultimately realize upon clicking on the banner ads that they were not Playboy-affiliated, the court found that the competitor advertisers could have gained customers by appropriating Playboy's goodwill since users may be perfectly happy to browse the competitor's site instead of returning to the search results to find the Playboy sites.

In Lamparello v. Falwell, however, the court clarified that a finding of initial interest confusion is contingent on financial profit from said confusion, such that, if a domain name confusingly similar to a registered trademark is used for a non-trademark related website, the site owner will not be found to have infringed where they do not seek to capitalize on the mark's goodwill for their own commercial enterprises.

Also, courts have upheld the rights of trademark owners about the commercial use of domain names, even in cases where goods sold there legitimately bear the mark. In the landmark decision Creative Gifts, Inc. v. UFO, 235 F.3d 540 (10th Cor. 2000) (New Mexico), defendants had registered the domain name "Levitron.com" to sell goods bearing the trademark "Levitron" under an at-will license from the trademark owner. The 10th Circuit affirmed the rights of the trademark owner about the said domain name, despite arguments of promissory estoppel.

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.

In the US, the legal situation was clarified by the Anticybersquatting Consumer Protection Act, an amendment to the Lanham Act, which explicitly prohibited cybersquatting. It defines cybersquatting as "(occurring) when a person other than the trademark holder registers the domain name of a well-known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or using the domain name to divert business from the trademark holder to the domain name holder".[51] The provision states that "[a] person shall be liable in a civil action by the owner of the mark ... if, without regard to the goods or services of the person, that person (i) had a bad faith intent to profit from the mark ...; and registers, traffics in, or uses domain name [that is confusingly similar to another's a mark or dilutes another's marked]".[52]

This international legal change has also led to the creation of ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) 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 trademark 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 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 that are not protectable by themselves, such as a generic term or a merely descriptive term that has not acquired secondary meaning, may become registerable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. An example of such a domain name ineligible for trademark or service mark protection as a generic term, but which currently has a registered U.S. service mark, is "HEARSAY.COM".[53]

Among trademark practitioners there remains a great deal of debate around trademark protection under ICANN's proposed generic top-level domain name space expansion. World Trademark Review has been reporting on the at times fiery discussion between trademark owners and domainers.[54]

The inherent limitations of the territorial application of trademark laws have been mitigated by various intellectual property treaties, foremost amongst which is the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). TRIPS establishes legal compatibility between member jurisdictions by requiring the harmonization of applicable laws. For example, Article 15(1) of TRIPS defines "sign" which is used as or forms part of the definition of "trademark" in the trademark legislation of many jurisdictions around the world.

The major international system for facilitating the registration of trademarks in multiple jurisdictions is commonly known as the "Madrid system[55] ". Madrid provides a centrally administered system for securing trademark registrations in member jurisdictions by extending the protection of an "international registration" obtained through the World Intellectual Property Organization. This international registration is in turn based upon an application or registration obtained by a trademark applicant in its home jurisdiction.

The primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in many jurisdictions by filing one application in one jurisdiction with one set of fees, and make any changes (e.g. changes of name or address), and renew registration across all applicable jurisdictions through a single administrative process. Furthermore, the "coverage" of the international registration may be extended to additional member jurisdictions at any time.

The Trademark Law Treaty establishes a system under which member jurisdictions agree to standardize procedural aspects of the trademark registration process. It is not necessarily respective of rules within individual countries.[56]

The EU Trade Mark (EUTM) system (formerly the Community Trademark system) is the trademark system which applies in the European Union, whereby registration of a trademark with the European Union Intellectual Property Office (EUIPO, formerly Office for Harmonization in the Internal Market (Trade Marks and Designs)), leads to a registration which is effective throughout the EU as a whole. The EUTM system is therefore said to be unitary in character, in that a EUTM registration applies indivisibly across all European Union member states. However, the CTM system did not replace the national trademark registration systems; the CTM system and the national systems continue to operate in parallel to each other (see also European Union trade mark law).

Persons residing outside the EU must have a professional representative to the procedures before EUIPO, while representation is recommended for EU residents.

One of the tasks of a EUTM owner is the monitoring of the later applications whether any of those is similar to his/her earlier trademark. Monitoring is not easy and usually requires professional expertise. To conduct a monitoring there is the so-called Trademark Watching service where it can be checked if someone tries to get registered marks that are similar to the existing marks.

Oppositions should be filed on the standard opposition form in any official language of the European Union, however, the substantive part of the opposition (e.g. the argumentations) can be submitted only in the language of the opposed application, that is one of the working languages of the EUIPO, e.g. English, Spanish, German.

Well-known trademark status is commonly granted to famous international trade marks in less-developed legal jurisdictions.

Under Article 6 bis of the Paris Convention,[57] countries are empowered to grant this status to marks that the relevant authority considers are 'well known'. In addition to the standard grounds for trademark infringement (same/similar mark applied same/similar goods or services, and a likelihood of confusion), if the mark is deemed well known it is an infringement to apply the same or a similar mark to dissimilar goods/services where there is confusion, including where it takes unfair advantage of the well-known mark or causing detriment to it.[58]

A well-known trademark does not have to be registered in the jurisdiction to bring a trademark infringement action (equivalent to bringing a passing off claim without having to show goodwill and having a lesser burden of proof).

As per the Trademark Rules 2017, India, an applicant needs to substantiate his claim that his trademark is having the "well-known" status. He needs to furnish the documents in support of evidence of his rights & claims, namely use of trademark, any application for trademark, and annual sales turnover, and so on.[59][60]

Many countries protect unregistered well-known marks following their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). Consequently, not only big companies but also SMEs may have a good chance of establishing enough goodwill with customers so that their marks may be recognized as well-known marks and acquire protection without registration. It is, nevertheless, advisable to seek registration, taking into account that many countries provide for extended protection of registered well-known marks against dilution (Art. 16.3 TRIPS),[61] i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others.[62]

Several trademark laws merely implement obligations under Article 16.3[61] of the TRIPS Agreement and protect well-known registered trademarks only under the following conditions: 1- that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation 2- that the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and 3 – that their interests are likely to be damaged by such use.