Trademarks are used to identify a product or service as coming from one source.
A trademark is some form of device or mark (such as a word, phrase, logo, or even product design and, rarely, a sound or smell) used by an individual or organization to distinguish its goods and services from similar goods and services in the marketplace. Trademarks can become a valuable asset for an organization. As an example, in 2006 Interbrand Corporation valued the Coca-Cola trademark at US$67 billion. Protecting trademarks through registration and other means helps to create and preserve a trademark's value.
TYPES OF TRADEMARKS
A trademark can be used for specific goods and services or as a "house brand" for all of the goods and services of an organisation. An example of the former is BIG MAC and an example of the latter is the MCDONALD'S trademark.
(a) Word Marks
A word mark is a trademark consisting of letters, numbers and/or punctuation marks. The trademark, when read, may or may not have any meaning.
(b) Design Marks
A design mark is a trademark that incorporates design or artistic elements. A design mark may also include letters, numbers and punctuation marks. Examples of design marks include Apple Computer’s apple logo, McDonald’s golden arches and 'Coca-Cola' in its stylized script.
(c) Certification Marks
A certification mark identifies goods or services that comply with a certain standard. A certification mark is owned by one organisation who licenses it to others if their goods or services meet the standard. An example of a certification mark is the pure wool Woolmark design. In this example, being one hundred percent pure virgin wool is the standard.
(d) Distinguishing Guise
A distinguishing guise refers to the unique shape of a product or its packaging. For example, the hourglass-shaped Coke bottle is a distinguishing guise and its shape is protectable as a trademark.
(e) Official Mark
Official marks are special trademarks used by public authorities, such as governments and universities. The Olympic logo consisting of the five rings is an example of an official mark.
SELECTING A TRADEMARK
Trademarks have various degrees of inherent distinctiveness. The trademarks which are most inherently distinctive are given the broadest protection.
(a) Generic Trademarks
A generic trademark is a trademark that is also the name of the particular product or service. An example is the trademark WINE for wine. These types of trademarks have the least inherent distinctiveness and are not protectable as trademarks.
(b) Descriptive Trademarks
There is often an inclination to adopt a trademark that is descriptive. For example, HOT for chilli sauce or QUICK for courier services. The nice thing about these trademarks is that they also communicate information as they describe the organisation's goods and services. However, these types of trademarks are generally not given any protection.
In addition, any trademark that is misdescriptive of the goods or services may not be protectable.
(c) Suggestive Trademarks
A suggestive trademark is one that is indirectly descriptive of the goods or services. An example is DOWNY for fabric softener. In this example the word DOWNY is related to the word DOWN which brings to mind softness. This type of trademark is generally given some protection.
(d) Arbitrary Trademarks
An arbitrary trademark is a trademark that is an actual word or phrase but the word or phrase has no connection to the product or service. These types of trademarks are given fairly broad protection. Examples of these trademarks include APPLE for computers and MUSTANG for cars.
(e) Fanciful Trademarks
A fanciful trademark is the most inherently distinctive and is given the broadest protection. These are trademarks that had no meaning at the time they were adopted as they are made-up words. Examples include: KODAK, XEROX and EXXON.
WHY REGISTER A TRADEMARK?
Registering a trademark helps to protect the trademark and therefore its value.
(a) Unregistered Trademarks
Trademarks which are not registered are generally not given very broad protection. For example, if a trademark is unregistered the owner of the trademark will not likely be able to prevent someone else from adopting and using the same trademark in another part of the country.
(b) Registered Trademarks
In contrast, a registered trademark gives the owner the exclusive right across the country to use the trademark in association with the goods and services for which the trademark has been registered. As well, a registered trademark can be used to prevent someone else from using a similar trademark in the marketplace when that use causes confusion with consumers.
TRADEMARK RIGHTS
There are a number of factors that come into play in determining who has superior rights to register a trademark. This can become an issue if two organisations file trademark applications for the same trademark. In some cases, the first organisation to file the trademark application will get the registration.
SEARCHES
It is recommended that a trademark search be conducted. These searches help identify trademarks that are being used by third parties and which conflict with the trademark that is being applied for. If there is a conflict, then the organisation may have to re-brand its products and services and may also be liable for trademark infringement. It is, therefore, best to identify these conflicts as early as possible.
As part of the trademark application process, an initial search is conducted which is not intended to be comprehensive. Its purpose is to identify any obvious conflicts. A more comprehensive search can also be conducted. A comprehensive search takes more time and searches more databases. The cost of a comprehensive search and review can be more than $1,000.00. A comprehensive search increases the likelihood of identifying any conflicting third party trademarks. It is recommend a comprehensive search be conducted for a new trademark or if an existing trademark is going to be put to broader use.
THE REGISTRATION PROCESS
(a) The Application
The first step in the application process is to file a trademark application. For this some information will be needed including who is going to own the trademark and the goods and services for which the trademark is going to be registered. There is a government filing fee.
(b) Examination
After the trademark application has been filed an Examiner at the Trade-Marks Office will review the application. For example, the Examiner may request that the description of goods and services be changed or the Examiner may have found a third party trademark which they believe conflicts with the trademark being applied for. A response would then prepared and submitted.
(c) Advertisement
Once the Examiner is satisfied with the trademark application, the Trade-marks Office publishes the trademark in the Trade-marks Journal. During the two-month period following publication, any third party has the right to oppose the trademark application. If the trademark application is opposed, the application process is suspended until the opposition proceedings are resolved.
(d) Opposition
In an opposition, the third party sets out its claims as to why the trademark should not be registered. A response to those claims would then be preprespond. Oppositions are fairly rare.
(f) Registration
If no opposition is filed or if the response to the opposiction is successful , the application will then be allowed by the Trade-marks Office. The trademark will stay in this state until the government registration fee is paid.
MAINTAINING REGISTRATION
A trademark registration is valid for a period of time from the date of registration. The trademark can be renewed for successive periods thereafter provided it is still in use. If the trademark owner stops using the trademark then the trademark registration can be expunged.
DOMAIN NAMES
If the organization will be offering its goods and services over the Internet or if it will be using the Internet to disseminate information then it should consider registering its trademark as a domain name.
