Trademarks Flashcards
Two types of marks
trademarks and service marks
what are trademarks and service marks
principle of specificity
What is a trademark
sign, phrase, word, symbol, or design that denotes ownership of a particular product or service and legally differentiates it from all others of its kind
what does a mark do
it is a sign with distinguishing features and is used in activities of trade
Characteristics of TMs
Distinctiveness and Novelty
How is distinctiveness assessed
goods/services, laws, average consumer
How is novelty assessed
identical or similar signs, identical or similar goods or services
Criteria for assessing similarity in TMs
conceptual, visual, phonetical
Mark cannot be
descriptive, generic, misleading, violate public order/morality
Registration methods for protection of TM
national, regional, international
Regional EUIPO protection
applications applied for and granted in the EU are enforceable in the EU
(Madrid Protocol) WIPO TM application/registration procedure
- application sent to WIPO, 2. WIPO sends it back to State, 3. Union countries have 18 months to object to registration
WIPO: what happens if a mark is rejected in one Union country within 18 months
mark is invalidated in that country, but will remain valid in all other countries
WIPO: what if mark is rejected/invalidated in the first registration country
mark is invalid in all other countries
WIPO Priority deadline for TMs
6 months
TM lifetime
10 years initial registration plus renewal for every 10 years after
Judicial procedures for TMs not litigation
deletion, cancelation
What is deletion/abandonment of a mark
may be total or partial, or for lack of use for 3 years (under TRIPS) / 5 years (national level)
What is cancellation of a mark
if TM is contrary to absolute requirements, contrary to relative requirements (novelty), registration in bad faith, contrary to public order/morality, or
Criteria for assessing similarity of marks
appearance, sound, connotation, and commercial impression. May also include phonetics, rhyming.
What can’t trademarks be
can’t be descriptive, generic, mislead, violate public morality
Trademark must be
novel and distinct
how to assess similarity
conceptually, phonetically, visually
Administrative procedures before TM office
Opposition, Re-examination, and Decision of examiner can be appealed with: Admin. Appeal or Courts
A TM can be cancelled if
Mark is: Contrary to absolute requirements; Contrary to relative requirements; Registration in bad faith, contrary to public order/ morality of religion
Mark may be considered abandoned
expressly abandon it, stop using the mark for 3 TRIPS / 5 (EU) years
TM can’t be registered if it is
the same or confusingly similar to another mark in the same or similar good/service
Novelty for TM
it must be novel in the sense that it is not identical or confusingly similar to any existing trademarks.
Distinctive
It should be capable of clearly distinguishing the goods or services of one company from those of others. how well it identifies the source of the good or service.
