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Writer's pictureJeremy Rutman

TRADEMARK BASICS℠

Updated: Apr 12, 2023

TL;DR

  • Every trademark has to be registered in connection with a list of goods and services which come under a set of 'classes'.

  • Trademarks can be a 'word mark' or a 'design mark' - the word mark protects the text of your trademark (e.g. ‘Coca-Cola’) while the design protects the logo.

  • Not every word/design can be registered - your mark can't conflict with other existing marks, can't be 'merely descriptive', and there are a number of other restrictions.


A trademark is a word, phrase, symbol, design, or combination that identifies goods or services, setting them apart from competitors in the marketplace. This can be important for establishing brand recognition and legal protection against copying - fraud and counterfeit.






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A trademark:

  • Identifies the source of your goods or services.

  • Provides legal protection for your brand.

  • Helps you guard against counterfeiting and fraud.


A trademark is specific to a set of goods and services and doesn't give exclusive rights to the word or phrase in general - thus one decision involved with trademark is, what goods/services to associate with the mark. There are official classes, with a unified world-wide system (the NICE system) which the USPTO joined in 1973 for trademark classes (here)


If you get a design mark, that only protects the particular look of your design, and not the text - so Coca Cola has in fact protected both the design and words.

There are two more types of trademarks (other than the word/design dichotomy): trademarks are for goods while service marks are for services.


Stand Up for your Rights

Although you become a trademark owner as soon as you start using your trademark, your rights are limited and only apply to the geographic area in which you are providing your goods or services. To obtain stronger, nationwide rights, you can register your trademark with a given country's IP office (e.g. the USPTO in the US)..

™, ℠, and ®

Using trademark symbols such as ™, ℠, and ® lets consumers and competitors know that you are claiming the trademark as your own. You can use the TM symbol for goods or the SM symbol for services, even if you haven't filed an application to register your trademark. Once you have registered a trademark with a national IP office, you may use the ® symbol with it, but only for those goods or services listed in the federal trademark registration (generally these wil be the goods/services you asked for, possibly reduced to avoid conflicts with other mark holders).


Objections

Amongst other pitfalls awaiting the unwary trademark filer is the aforementioned conflict with other mark holders in terms of the name or the look of the symbol (aka 'likelihood of confusion', and 'mere descriptiveness' - choosing a unique and creative trademark is more effective and easier to protect than choosing one that merely describes your goods or services.

A fuller list is:

  1. Likelihood of confusion: The USPTO may object to a trademark application if it is similar or identical to an existing trademark in the same or related category of goods or services.

  2. Descriptiveness: The USPTO may object to a trademark application if the trademark is merely descriptive of the goods or services it represents.

  3. Genericness: The USPTO may object to a trademark application if the trademark is a generic term for the goods or services it represents.

  4. Deceptiveness: The USPTO may object to a trademark application if the trademark is likely to mislead or deceive consumers about the nature, quality, or origin of the goods or services it represents.

  5. Immoral or scandalous matter: The USPTO may object to a trademark application if the trademark contains immoral or scandalous matter.

  6. Geographical indication: The USPTO may object to a trademark application if the trademark contains a geographical indication that is likely to cause confusion or suggest a connection with a particular place or region.

  7. Ornamentality: The USPTO may object to a trademark application if the trademark is merely ornamental or decorative rather than serving as a source identifier for the goods or services it represents.

Each country party to the various trademark treaties (e.g. see Madrid below) will generally have similar laws with local twists - for example Israel restricts use of the 'Star of David' since this is a national symbol.


MADRID

TL;DR

Madrid is an international treaty allowing one to file a mark at WIPO for consideration by any designated countries.

The Madrid System is an international treaty that allows trademark owners to obtain protection for their marks in multiple countries with a single application. The system is administered by the International Bureau of the World Intellectual Property Organization (WIPO) and provides a cost-effective and efficient way for trademark owners to protect their marks globally. Under the Madrid System, a trademark owner can file a single application, known as an international application, with their national trademark office. This application is then sent to the International Bureau of WIPO, which reviews the application and publishes it in the WIPO Gazette of International Marks. Once the mark is published, it is sent to the trademark offices of the designated countries for examination and registration. The trademark offices then apply their own national laws and regulations to the mark to determine whether it can be registered. If the mark is accepted by a particular country, it will be protected in that country in the same way as if the mark had been filed directly with that country's trademark office. If the mark is rejected by a particular country, it will not be protected in that country. The Madrid System simplifies the process of obtaining trademark protection in multiple countries by providing a single application process, centralized administration, and streamlined communication between trademark offices. It is currently used by over 120 countries, including the United States, the European Union, China, and Japan.


The bottom line

In the US, a registered trademark runs $250 for each class of goods/services in which its registered.

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