What Is A Trademark And What Does It Do?

by
Richard Fonfrias, J.D.
Chicago's Financial Rescue & Bankruptcy Lawyer
Fonfrias Law Group, LLC



We thank the World Intellectual Property Organization in Geneva, Switzerland, and the U.S. Patent and Trademark Office for providing some of the following information, which has been edited from its original content.

What is a trademark?

A trademark is any word, slogan, symbol, design, or combination of these things, that identifies your company as the source of your goods and services and distinguishes them from the goods and services of another company. The easiest way to think about it is this: a trademark is a brand for goods and services.

For example, take Coca-Cola and Pepsi.

When you see the mark on a can or bottle, you immediately know the source of the beverage. You also know that it's not the competitor's beverage because those marks distinguish them from one another. When you want a Coke, you look for Coke's logo and you don't accidentally drink a Pepsi instead.

Now, the words Coca-Cola are a trademark in themselves. Also, Coca-Cola is written in a distinctive script, and that style of wording is also a trademark.

Pepsi by itself is also a word mark. It is also shown in a particular format, and the combination of the wording and the design is also a mark.

A trademark isn't limited to only words and designs. It can also be a slogan, symbol, design or combination of these things. But that's not all.

It could also be a sound. Or a color. Or even a smell. Almost anything can be a trademark or service mark, so long as it identifies the company's goods and services and distinguishes them from the goods and services of others.

Now, I'll tell you the difference between a trademark and a service mark.

In a legal sense, a "trademark" identifies the source of goods, such as shoes or laptops. A "service mark" identifies the source of services, such as landscaping or accounting. In everyday language, people often refer to a service mark as a trademark.

In this article, I'll use the words "trademark" or "mark" when the words or symbol could also be a service mark.

What does a trademark do?

A trademark protects the company's symbol by giving the owner the exclusive right to use it on its good or services. Also, it gives the owner the right to authorize another company to use it for a fee.

A trademark can be renewed indefinitely beyond its original time limit simply by paying additional fees. Its legal protection is enforced by the courts, which have the authority to block other companies from its use, called trademark infringement. Trademark infringement is the unauthorized use of a trademark in a way that is likely to cause confusion or deception about the company marketing the goods or services.

In a larger sense, trademarks promote business worldwide by rewarding the owners of trademarks with international recognition and profits. Also, trademark protection hinders unfair competitors, such as counterfeiters, from using similar designs to market inferior or different products or services. The system enables people with skill and initiative to produce and market goods and services in the fairest possible conditions, which facilitates international trade.

What kinds of trademarks can be registered?

The possibilities are almost without limit. Trademarks may be words, letters, numbers, drawings, symbols, logos, 3-dimensional signs such as the shape and packages of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.

In addition to trademarks identifying the commercial source of goods or services, many other categories of marks exist.

For example, collective marks are owned by an association whose members can identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, lawyers, engineers, or architects.

Certification marks are given for complying with defined standards, but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. The internationally accepted "ISO 9000" quality standards are an example of such widely recognized certifications.

How is a trademark registered?

The business owner or representative must apply for trademark registration by filing with the appropriate trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or 3-dimensional features.

In addition, the application must contain a list of goods or services to which the sign would apply. The sign must meet certain conditions in order to receive legal protection. It must be distinctive, so consumers can distinguish it as identifying a particular product. Also, it must be distinctive from other trademarks identifying other products. It must neither mislead nor deceive customers or violate public order or morality.

And finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the national office, or by the opposing third parties who claim similar or identical rights. A trademark lawyer, or lawyer who if familiar with trademark law, can help you with trademark registration.

How extensive is trademark protection?

Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks, which contains application information on all registrations and renewals, making it easy to examine, search, and potentially oppose by third parties. The effects of this type of registration are, however, limited to the country or regions concerned.

WIPO, the World Intellectual Property Organization, administers a system of international trademark registration. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol.

A person or company that has a link (through nationality, domicile or establishment) with a country that is party to one or both of those treaties may, by applying or registering a trademark with that country's office, get an international registration that protects his trademark in some or all of the other countries of the Madrid Union.