The law considers a trademark to be a form of property.
Proprietary rights in relation to a trademark may be established through
actual use in the marketplace, or through registration of the mark with the
trademarks office (or "trademarks registry") of a particular jurisdiction.
In some jurisdictions, trademark rights can be established through either or
both means. Certain jurisdictions generally do not recognize trademarks
rights arising through use. If trademark owners do not hold registrations
for their marks in such jurisdictions, the extent to which they will be able
to enforce their rights through trademark infringement proceedings will
therefore be limited. In cases of dispute, this disparity of rights is often
referred to as "first to file" as opposed to "first to use." Other countries
such as Germany offer a limited amount of common law rights for unregistered
marks where to gain protection, the goods or services must occupy a highly
significant position in the marketplace — where this could be 40% or more
market share for sales in the particular class of goods or services.
In the United States the registration process entails several steps prior to
a trademark receiving its Certificate of Registration. First, an Applicant,
the individual or entity applying for the registration, files an application
to register the respective trademark. The application is then placed in line
in the order it was received to be examined by an examining attorney for the
U.S. Patent and Trademark Office. Second, following a period of anywhere
from three to six months the application is reviewed by an examining
attorney to make sure that it complies with all requirements in order to be
entitled to registration. This review includes procedural matters such as
making sure the applicant's goods or services are identified properly. It
also includes more substantive matters such as making sure the applicant's
mark is not merely descriptive or likely to cause confusion with a
pre-existing applied-for or registered mark. If the application runs afoul
of any requirement, the examining attorney will issue an office action
requiring the applicant to address certain issues or refusals prior to
registration of the mark. Third, and after the examination of the mark has
concluded with no issues to be addressed or an applicant has responded
adequately to an examining attorney's concerns, the application will be
published for opposition. During this 30-day period third-parties who may be
affected by the registration of the trademark may step forward to file an
Opposition Proceeding to stop the registration of the mark. If an Opposition
proceeding is filed it institutes a case before the Trademark Trial and
Appeal Board to determine both the validity of the grounds for the
opposition as well as the ability of the applicant to register the mark at
issue. Fourth, provided that no third-party opposes the registration of the
mark during the opposition period or the opposition is ultimately decided in
the applicant's favor the mark will be registered in due course.
Outside of the United States the registration process is substantially
similar to that found in the U.S. save for one notable exception in many
countries: registration occurs prior to the opposition proceeding. In short,
once an application is reviewed by an examiner and found to be entitled to
registration a registration certificate is issued subject to the mark being
open to opposition for a period of typically 6 months from the date of
registration.
A registered trademark confers a bundle of exclusive rights upon the
registered owner, including the right to exclusive use of the mark in
relation to the products or services for which it is registered. The law in
most jurisdictions also allows the owner of a registered trademark to
prevent unauthorized use of the mark in relation to products or services
which are identical or "colourfully" similar to the "registered" products or
services, and in certain cases, prevent use in relation to entirely
dissimilar products or services. The test is always whether a consumer of
the goods or services will be confused as to the identity of the source or
origin. An example may be a very large multinational brand such as "Sony"
where a non-electronic product such as a pair of sunglasses might be assumed
to have come from Sony Corporation of Japan despite not being a class of
goods that Sony has rights in.
Once trademark rights are established in a particular jurisdiction, these
rights are generally only enforceable in that jurisdiction, a quality which
is sometimes known as territoriality. However, there is a range of
international trademark laws and systems which facilitate the protection of
trademarks in more than one jurisdiction (see International trademark laws
below). |
