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| Patents: The Next Generation |
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The third in this series of features on intellectual property takes a quick look at trademarks.
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The patent application is in, the business model approved. With products in the pipeline, it is time to go ahead and file trademark applications so as to stake your claim ahead of competitors who might wish to copy a cool, but unprotected name, advertising slogan or logo. Somebody once said, "Trademarks are the foundation of competition for businesses and signify the freedom of choice to consumers." Patentcafe.com defines a trademark as "anything that indicates source, sponsorship, affiliation, or other relation of a product or a service to a business. The specific identity of the business does not need to be known."
| | A Hint of Lilies, a
Triumphant Chord
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A trademark can take the form of just about any indicator: a word, a phrase, a symbol, a two or three dimensional design, specific color/s, a combination of any or all of the former; and even options such as musical phrases*, bell chimes* and fragrances* can be included. Just as long as it's original.
* These are protectable principally in the United States. Different jurisdictions have different limits on what can be protected by trademark registration.
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| That's All?
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Using the symbols TM (trademark) and SM (service mark) tells the world that you have informally made a public claim on the mark. And no one needs to authorize your claim at this stage.
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| |  | TM denotes an unregistered trademark, identifying and distinguishing the source of the goods of one party from another. As soon as you stick the two letters at the end of the indicator, you have trademarked it, for example, "StarfleetTM ."
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The SM symbol represents an unregistered service mark, used for the source of a service rather than product, like "BeameUp SM."
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® shows the public that the mark has been registered in an appropriate trademark register in the target jurisdiction.
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| | More on Registration
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Application for trademark registration must be made in all jurisdictions where protection is required. Unlike patents however, for which novelty is a prerequisite, marks that have been used and which have even become well known, may be registered. In some situations, such prior use may even assist registration by showing distinctiveness acquired by use in the market. but don't count on it. It is possible to file "intent to use" applications, and running the risk of arguing the finer points of distinctiveness with a trademark examiner is preferable to possibly expending hundreds of thousands of dollars to revoke a hijacked mark.
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| Nature vs. Nurture?
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Distinctiveness may be either "inherent," or "acquired." According to PatentCafe.com, acquired distinctiveness can be developed in the minds of the consumers, and "may be thought of as consumer recognition of the trademark as an identifier of source, sponsorship, affiliation or other business relationship. If it can be shown that a mark, even though very simple, has been used in conjunction with an appreciable market share over a time period in which customers in that market would readily recognize the mark, it may be said to have "acquired distinctiveness."
Certain marks have "inherent distinctiveness." Typically, these could be logos (known also as "devices") that have been especially designed for use in conjunction with specific goods or services.
Thomas Jefferson declared in 1791 (in his capacity as secretary of State) that registered trademarks "...contribute to fidelity in the execution of manufacturing, to secure every manufactory, an exclusive right to some mark on its ware, proper to itself."
In order to maintain this important standard, trademark offices around the world work to prevent confusion between different, competing trademarks. Think of all those bottles of fake perfume: "Channel 5," "Christian Deeor," and then think of the potential damage to the reputations of the owners of the true marks - not to mention the consequent loss of consumer confidence. Accordingly, most trademark offices examine trademark applications for distinctiveness, so as to try to maintain the fidelity of trademark registers worldwide. So it is advisable, although not compulsory, to conduct a trademark search prior to application.
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| Trademarking Israel-Style |
Israel's trademark law is based on the Trademark Act adopted in 1972. Israel's Ministry of Justice maintains a database of trademarks and oversees the application procedure. But trademark pirates beware: Israel has a take-no-prisoners attitude towards trademark infringement, which can be prosecuted criminally. The Israeli judiciary is noted for its upholding of the integrity of the trademark above local interests. One Israeli commentator goes as far to note "...Israel's intellectual property law and practice continues to be guided by the principles of internationalism as opposed to parochialism, harmonization rather than diversity, and consistency rather than opportunism."
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| Trademarks Dot Com
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Who whispered "and how about mentioning trademarks and the Internet?" This is a complex, amorphous issue that taxes the intellectual capacity for understanding of many mortals. However, Bitlaw.com, a useful resource for technology law (created by a US intellectual property lawyer), mercifully offers us a beacon in the darkness with "Trademarks on the Internet."
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| A Residence in Cyberspace
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"Cybersquatting" sounds intriguing and somewhat subversive. The term actually refers to "a situation in which an individual or company registers a domain for a name which clearly belongs to, or is reminiscent of that of another party, either to extort funds from that party, or so as to benefit fraudulently from that company's reputation," in the words of patent attorney Jeremy Ben David. The good news for bona fide cyberdwellers is that there has been great progress in legislation concerning this issue. As Jeremy says, "A second hand car dealer registering the domain name www.ferarri-auto.co.il, or www.porchecars.co.il would probably be guilty of cybersquatting."
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| Final Frontier
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The laws governing trademarks can seem complicated to the layperson. In order to avoid loss of rights due to improper use, Jeremy recommends seeking prior professional advice. "It's much easier to avoid pitfalls than to have to solve problems caused by not avoiding them in the first place," he concludes. However, your budget might dictate your approach, even when that approach may not have been your first choice. So get informed and stay informed — and may your trademark live long and prosper.
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The Trendletter team welcomes your comments.
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