trademarks introduction and international regime victor h. bouganim wcl, american university

TRADEMARKSTRADEMARKSIntroduction and Introduction and

International Regime International Regime Victor H. Bouganim

WCL, American University

Victor H. Bouganim, WCL, American University, Spring 2001

What is a Trademark?What is a Trademark? A sign able to

distinguish the goods or services of one company from those of another.

The sign has to be presented as a mark.

A property right. A monopoly.

Functions Indication of origin. Indication of quality. Identification,

communication, advertising: Association


Trademarks - Some ExamplesTrademarks - Some Examples


International TM RegimeInternational TM Regime Registration

– Most countries offer Trademark protection, normally by way of registration.

Trademarks rights are territorial. – Therefore, international trademark protection requires

separate registrations in every target-country. Common Law Trademarks

– Trademark rights based on use of marks on goods in commerce are recognized at common law


International TM ConventionsInternational TM ConventionsTRIPS, Art. 15-21.The Paris ConventionThe Madrid Agreement for International

Registration of Marks, 1891Trademarks Law Treaty, Geneva 1994.The 1957 Arrangement of Nice Concerning

the International Classification of Goods and Services


TRIPS - TM RegimeTRIPS - TM Regime An attempt to narrow the gaps in the way these rights are

protected around the world, and to bring them under common international rules.

– Incorporate by reference the provisions of the Paris Convention.

In particular: Protection of well-known marks, according to Art. 6Bis.

– Articles 15-21. Members are required to provide registration of distinctive

visual marks. Sound and fragrance marks are optional.

– Art. 22-24 - Geographical Indications.


Paris Convention - TMParis Convention - TM Established 1883, last amended 1979. 160 states are signatories, including U.S. Effort to harmonize some trademark rules. National treatment. Right of priority of 6 months. Article 6bis

– Gives owners of “well known” trademarks the right to block or cancel the unauthorized registration of their marks

– Is the mark well known locally or internationally is a frequent issue


Madrid Agreement and ProtocolMadrid Agreement and Protocol 1891, the Protocol entered into force in 1995. Create a system for international registration of

marks, which is administered by the WIPO. About 60 countries are parties, but not the U.S. This system permits a trademark owner to have

marks protected in several countries by simply filing one application with a single office, in one language, with one set of fees.

Community TM is available in the EU.


Trademark Law TreatyTrademark Law Treaty

Geneva, 1994. 26 participating countries (as of Jan. 2001),

including the U.S. Indicates the direction of international

trademark regulation and protection. Alternative to the Madrid System on

international registration of trademarks.


TM - The Nice AgreementTM - The Nice Agreement

1957, last amended in 1979. 65 participating countries, including U.S. Addresses the question of registration by

“class” or “classification” of goods. Article 1 adopts a single classification

system for goods and services.


Class DiscussionClass Discussion How can international conventions assist in

the protection of international trademarks? What is the role of TRIPS in international

trademark protection? Is trademark registration a guarantee against

trademark piracy? Can a trademark be valid in one country

and generic in another?


U.S. Trademark LawU.S. Trademark LawTrademarks are protected by: Common law State registrations Federal registrations - The Lanham Act

– Permitted for all marks capable of distinguishing goods and services. – Mark becomes valid for a term of 10 years following registration.

Registration can be renewed indefinitely.– Use Requirement: Marks must be used on goods

“bona fide intent”: registration within 12 months before use “good cause”: registration within 36 months before use No use or over-use may result in losing the TM.


Trademarks - HistoryTrademarks - History TMs date back as much as

4000 years. Purposes of early marks:

– exposure of producer’s name to potential customers

– proof of sale by a particular merchant to resolve disputes

– guarantee of quality Same purposes evident in

modern statutes.

Until 1870, TMs were protected at common law in the U.S.

1870 - First Federal TM statute struck down as unconstitutional.

1881 - Congress reenacted TM legislation under the Commerce Clause.

TM Act of 1905 Lanham Act of 1946


U.S. Statutory OverviewU.S. Statutory Overview Early TM infringement was limited to the

use of an identical name or mark in the sale of identical goods, where the intention was to deceive consumers.

The Act of 1905 eliminated the requirements of identicality and intention to deceive, substituting the test of likelihood of confusion.

The Lanham Act further liberalized TM law:– advantages to registration– prohibition against unfair competition– protection to unregistered marks


TM v. Copyright & PatentTM v. Copyright & Patent

Trademark Does not depend on

novelty, invention, discovery.

Awarded to those who were the first to use a distinctive mark in commerce.

No explicit policy to encourage TMs.

Copyright & Patent Designed to protect and

reward creations which are new or creative.– E.g., an invention; a new

expression.

Encourage and promote creativity and the progress of arts and technology.


TM ProtectionTM ProtectionPurposes Prevents consumers from

buying the wrong product Saves consumer time and

cost of researching brands Encourages TM owner to

offer quality product Prevents unjust enrichment

of potential infringer

Costs May inhibit free

competition TMs may deceive

consumers Monopoly of language Some producers may be

“warehousing” words or combinations of words


What Can Be Protected as a TM?What Can Be Protected as a TM? Names Symbols Logos Company Names Slogans or Phrases Trade Dress Color Fragrance Sounds


Trademark - DefinitionTrademark - DefinitionThe term “trademark” includes any word, name, symbol, or device, or any combination thereof--

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. Lanham Act Sec. 45


Service MarkService MarkThe term “service mark” means any word, name, symbol, or device, or any combination thereof--

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish the services of one person, including a unique service, even if that source is unknown. Titles, character names, and other distinctive features of radio and television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

Lanham Act Sec. 45


Certification MarkCertification MarkThe term “certification mark” means any word, name, symbol, or device, or any combination thereof--

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or the work or labor on the goods or services was performed by members of a union or other organization.

Lanham Act Sec. 45


Collective MarkCollective MarkThe term “collective mark” means a trademark or service mark--

(1) used by the members of a cooperative, an association, or other collective group or organization, or

(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, and includes marks indicating membership in a union, an association, or other organization.

Lanham Act Sec. 45


Certification Mark v. Collective MarkCertification Mark v. Collective MarkCertification Mark Generally used by trade

associations or other commercial groups to identify a particular type of goods.– e.g. “UV” - Ultra-Violet

protection for sunglasses; “Intel Inside”.

Serve to certify conformity with centralized standards.

Meant to bear the “seal of approval” of a central organization.

Collective Mark Use only by members of an

organization to identify goods or services and distinguish them from those of nonmembers.

The collective itself does not sell goods or perform services.

Sole purpose is to indicate membership.


Trade NamesTrade Names Rather than goods or services, trade names identify the

company itself. Trade names cannot be registered under the Lanham

Act unless they actually function to identify the source of particular goods or services, rather than merely identifying a company.

Trade names are generally registrable in state offices, and state and federal common law may provide protection against confusingly similar company names.


SlogansSlogans Slogans may serve as trademarks.

Complies with traditional trademark logic that

a combination of words capable of

distinguishing goods or services is registrable.

A slogan’s descriptive feature does not

automatically disqualify it from registration.


Color, Fragrance, and SoundsColor, Fragrance, and Sounds Color: color can be protected by a trademark if

it is linked in the public’s mind to the source of a particular product.

Fragrance: fragrance can receive trademark protection if it is distinctive, and not merely functional.

Sounds: sounds are not per se unregistrable; may receive protection if distinctive or arbitrary.


Qualitex Co. v. Jacobson Products Co.Qualitex Co. v. Jacobson Products Co.U.S. Supreme Court (1995)U.S. Supreme Court (1995)

Qualitex produced and sold green-gold dry-cleaning press pads. Jacobson copied the color for their own dry-cleaning press pads,

claiming that color was not entitled to trademark protection. Issue: whether the Lanham Act permits the registration of a

trademark that consists solely of a color. The Court found that a color by itself may meet ordinary legal

trademark requirements. It is the source-distinguishing ability of a mark--not its status as a

color, shape, fragrance, word, or sign--that permits the mark to meet these requirements.


Trade DressTrade Dress The design and

packaging of materials, or the design and shape of a product itself.

The Lanham Act protects trade dress.

Must serve the same source-identifying function as trademarks.

trademarks introduction and international regime victor h. bouganim wcl, american university

Documents

protocol f

f identification

f effort

f alternative

f article

f trademarks rights

f community tm

paris convention f