Trademarks: Legally Marking a Trade
A trademark is a “sign, design, or expression identifying services or products of a given source vs. others.” Trademark owners can be persons, businesses, or legal entities otherwise. Starting perhaps from the blacksmiths of the Roman Empire trademarking swords, to “lion mark (Löwenbräu)” of 1383 onwards, it was actually the Parliament of England under Henry III (in 1266) who was credited with passing the first trademark legislation (relating to unique bakers’ breads).
Modern trademark laws, beginning in the late 1800s, was noted in France with the “Manufacture and Goods Mark Act” (1857) and in Britain with the “Merchandise Marks Act” (1862) criminalizing imitation of another’s trademark; 1875 marked the first year of official trademark registration in the U.K. In the U.S., Congress tried passing a “Copyright Clause” (1870) but this was struck down by the Supreme Court, then revised by Congress passing the “Commerce Clause”-related new trademark act, updated subsequently as primary federal law in 1946. Of note, the U.K. in 1938 set up the registration system of “intent to use” principle.
Trivia in the U.S. regarding oldest trademark include Samson lion-wrestling (1884) for a rope-making company. Also, key differences between TM and R (common law usage of a mark vs. only post-registration with USPTO or similar authority, respectively). Trademark is quite broad, but must be graphically associated with specific goods/services.
As trademark law continues to be created and reinforced based upon lawsuits and judgments which serve as precedence, we arrive at the types of protection and time period durations conferred by that protection.
Today’s TradeMarks – Licenses, Litigated Lawsuits, and Law
Many trademarks in today’s world (e.g. many toys) are licensed, rather than sold. Trademark infringement, or pretending to sell under another’s guise, is known as “brand piracy.” A “name, word, phrase, logo, symbol, design, image, or a combination thereof” can constitute a trademark (or a service mark, if used for services). Trademark use is generally what leads to rights over time; the International (Nice) Classification of Goods and Services has established 45 Trademark Classes (1-34 for goods and 35-45 for services).
Today’s trademarks are considered to be property in the U.S. – jurisdictions may have different specific rules in other countries, though many European treat them similarly to the U.S. Countries such as Germany, for example, may require a specific market share for unregistered marks for “common law rights.”
Present-day systems in the U.S. for trademark application include a proper filing of an application, with subsequent determination whether the application is congruent with use and not infringing upon prior work; a 30-day period of “opposition proceeding” is next with the application “published for opposition.” Pending no opposition (with determination whether opposition is valid, if filed, or not), the trademark may be granted. Outside the U.S. (OUS) countries often file prior to the “opposition period.”
Interestingly, though specific to a category, some leeway may be given to “public perception” – hence, products with a given same name despite not being in usual category may be conferred some protection under circumstances where consumers may be confused easily.
A 5-year time period of lack of use is generally accepted as cessation of rights being conferred on grounds of “non-use”; also, after 5 years filing a Section 15 (Declaration of Incontestability) would protect the trademark essentially forever, showing use properly – however, every 10 years, trademark renewal needs to occur.
If competing trademark use occurs, then the registered trademark may be allowed preferentially, unless “Passing off” which implies use in some jurisdictions for “business goodwill or reputation.”
Future Trademark Dealings with the Internet and Beyond
The fundamental basis of trademarks would likely remain the same in the future:
- as brand recognition for consumers, the trademark conveys to the public in one symbol, slogan, sign, or other “mark” associations of look/feel/taste/etc. from past, unique to a prior experience, reputation, etc.;
- as brand recognition for companies, upholding a trademark offers an incentive to establish and maintain a reputation;
- efforts to protect a certain degree of quality from a regulatory standpoint, as set forth in prior law, have been somewhat rebutted by U.K. court, when it comes to trademark being jeopardized for not maintaining a certain quality;
- Dilution effects, with trademarks being “close” to a given trademark, may occur – hence, there should be protection against these, so that the public is not confused
- Sale of a trademark, in the U.S., typically must transfer with underlying asset In licensing a trademark, the original trademark holder must be identified.
The “future” trademark issues already have received some precedence – with new technological advances and needs for subsequent trademark, e.g. for domain names on the internet, use (or manipulation) of original trademark to draw customers to a site have been disallowed (Playboy v Netscape). In certain cases, plaintiff attorneys have successfully argued that trademarks that have not been licensed should be protected, especially from competitors striving to take advantage of the “confusion” or lack of clarity resulting from juxtaposing a banner ad next to a different company’s name (without adequate distinguishing features).
Interestingly, for those who “hold hostage” a trademark name for a domain name reserved in advance of a company that has held the trademark, this “cybersquatting” has been strongly discouraged by laws against it. In effect, in such circumstances, trademark infringement occurs via domain names (even if it means holding something and then selling it back to the original trademark holder). “Typosquatters” who capitalize upon misspellings of a domain name have also been regulated.
However, such rules can and do cause some issues – for example, Amazon.com may be to most people a company which deals with e-consumer goods, but should it be rightfully with the Amazon (e.g. rainforest)?
(parts of this article were acquired from numerous sources, including uspto.gov, wipo.int, and Wikipedia.org, among others)