Trademark

Purpose and Function of Trademarks

• Protecting the goodwill and reputation of a business by prohibiting competitors from utilizing identical or misleadingly similar symbols
• Preventing confusion among consumers by ensuring that they can accurately identify the source of goods or services
• Encouraging innovation and competition by allowing businesses to differentiate themselves and their products from others in the market
• Enhancing the value of a brand by allowing trademark holders to license or assign their trademarks to others, including franchising agreements

Trademarks Examples: Notable Cases in the US

Trademark Protection and the Trademarks Act

• Definition of a trademark: The Act defines a trademark as any symbol, logo, design, word, or combination thereof used to distinguish the goods or services of a company from those of other companies.
• Requirements for registering a trademark: To be registrable, a trademark must be distinctive and capable of graphical representation. The Act also provides a list of absolute and relative grounds for refusal of registration, including descriptive marks, generic terms, and prior rights.
• Duration and renewal: A registered trademark is protected for an initial period of 10 years and can be renewed indefinitely in 10-year increments, subject to payment of renewal fees.
• Trademark infringement: The Act prohibits unauthorized use of a registered trademark that is likely to cause confusion among consumers as to the origin of goods or services. It also outlines the civil and criminal remedies available for infringement.
• Defences to infringement: The Act enumerates various defences to infringement, such as using one's own name, using a geographical name, or using a registered trademark for descriptive purposes.
• Licensing and assignment: Trademark owners may license or assign their rights to third parties, subject to certain conditions outlined in the Act.

Legal Process for Registering a Trademark

1. Trademark search: It is essential to ensure that no identical or confusingly similar trademarks are already registered. This can be done through the UKIPO database or by engaging a professional search service.
2. Application preparation: The applicant must provide details about the trademark, the list of goods or services for which protection is sought, and any supporting documents. It is important to classify goods and services using the appropriate class under the Nice Classification system.
3. Application submission: The completed application is submitted to the UKIPO, along with the corresponding fee.
4. Examination by the UKIPO: The UKIPO will review the application to ensure compliance with the Trademarks Act. If issues are identified, the applicant will have an opportunity to address them or modify the application as necessary.
5. Publication: Once the application is accepted, it will be published in the UK Trade Marks Journal. There is a two-month period during which third parties can oppose the registration.
6. Registration and issuance of the certificate: If there are no oppositions or successfully resolved oppositions, the trademark will be registered, and a registration certificate will be issued.

How to Check a Trademark's Availability

• Visual, phonetic, and conceptual similarity
• Goods and services covered by the existing trademark(s)
• Reputation and geographical reach of the existing trademark(s)

Effective Use of Trademark Symbols

Trademark symbols play a vital role in the protection and assertion of intellectual property rights. There are two primary trademark symbols used to indicate different levels of trademark protection: ™ (Trademark) and ® (Registered Trademark). The ™ symbol denotes a claim to trademark rights but does not imply that the mark has been registered with any official governing authority.

Common law trademarks, or unregistered trademarks, often use this symbol to assert their rights in a brand, logo, or label without official registration. On the other hand, the ® symbol is used to indicate that a trademark has been officially registered with a governing authority, such as the United States Patent and Trademark Office (USPTO) or the United Kingdom Intellectual Property Office (UKIPO). Displaying the ® symbol alongside a registered mark serves several purposes:

• Informing competitors and potential infringers of the owner's trademark rights, thus deterring unauthorized use
• Providing notice of a legally enforceable claim to prevent contention of innocent infringement
• Increasing the value of a brand by demonstrating that it has achieved registered trademark status

Proper Usage of the Trademark Symbol

1. Use the ™ symbol for common law or unregistered trademarks. Place the symbol immediately after the mark, typically in the upper right-hand corner or as a subscript, to clearly indicate that trademark rights are being claimed.
2. Only use the ® symbol for registered trademarks. Using this symbol for an unregistered mark may be considered fraud under the law, resulting in penalties and loss of protection. Ensure registration with the appropriate governing authority before using the ® symbol.
3. Display the appropriate symbol consistently on all materials referencing the trademark, including marketing materials, product packaging, and official documents. Consistent use helps establish a strong claim to trademark rights.
4. For trademarks registered in multiple countries, ensure the correct symbol is used in each jurisdiction. While some countries recognize the ® symbol, others require identifying the registration number or making specific statements to assert trademark rights. Research local protection rules and regulations for proper application.

Common Misconceptions about Trademark Symbols