Tech Law Exam 3

Service Mark

A legally registered name or designation used in the manner of a trademark to distinguish an organization's services from those of its competitors.

Collective Mark

A trademark or service mark that identifies members of a union, cooperative, or other collective organization.

Trademark

A word, symbol, slogan, or product/packaging shape/distinguishing guise. A type of Ip consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.

Official Marks (in Canada)

An official mark (sometimes denoted by the symbols OM, M, or Ⓜ) is a form of intellectual property which exists in Canada under section 9 of the Trade-marks Act. It allows for the protection of names and designs used by Canadian public authorities (including governments and government agencies, Crown corporations, and certain nonprofit organizations) for goods or services.

Types of IP

Copyright, Patent, Industrial Design, Utility Model, Trademark, Trade Name, Trade Dress, Trade Secret, Right of Publicity, Technology transfer contracts, know-how, customer lists, distribution and logistics systems, topography/circuit layout, plant breeder's rights, etc.

Selecting a Mark (Distinctiveness)

Generic: Carpet Cleaning Company Descriptiveness: American Airlines Suggestive: Burger King Arbitrary: The original Apple logo Fanciful: Haagen Dazs

Trade/Business Name vs. Trademark

Identifies a company or a business (The Coca-Cola Company) Trademark: identifies the goods or services of that company (The Coca-Cola Company's logo).

Loss of Rights

Improper use Failure to police: unauthorized use of the mark or infringing marks by the media and others. Genericide: Some companies use advertisements to educate the public that a certain brand is not a synonym for a product or service. Failure to renew: failure to renew or comply with registered user requirements for registrations. Non-use: for an extended time, with insufficient steps taken to resume use. Cancellation Improper Assignment or licensing: failure to exercise quality control, write letters to journalists and editors of professional publications and dictionaries to notify them that certain designations are trademarks and to advise them on the proper way to refer to a trademark, improper assignment (failure to transfer goodwill).

Functions of a Trademark

Indicates the source or origin of goods or services Assures consumers of the quality of goods bearing the mark Creates business goodwill and brand awareness

Trademark Searches

International Screening Search Country-specific search: trademark registers (classes/categories), corporate names, internet uses and domain names, other directories/dictionaries. Local expertise

Avoiding Genericide

Once a trademark, not always a trademark. Important to police third parties unauthorized and/or improper use. Proper use: essential for a trademarks continued protection. Companies must properly use their trademarks to aid the consumers who depend upon the marks and to prevent the marks from becoming generic. If a trademark is used properly, it will remain the exclusive property of the owner. If however, the consuming public begins to treat a trademark as the name of the product, it will no longer identify and distinguish the goods or services of one company. Policing of your trademarks is essential - both outside of your company and within it. One of the ways to police your rights is to ensure the that trademarks are used correctly. Use the R symbol where appropriate and distinguish from the surrounding text by using: quotation marks, larger-sized print, all capital letters, initial capitals, distinctive print, color, use the TM/SM symbol where appropriate.

Principal vs. Supplemental Register

Principal: register that is reserved for the most unique trademarks, once you have a registration on the principal register that you are the presumed owner of that trademark in all 50 states. Supplemental: as opposed to the principal register, you do not have the presumption of federal ownership.

Registered Rights v. Common Law Rights

Registered Rights: failure to renew, non-use, failure to police, cancellation. Common Law Rights: use it or lose it.

Obtaining Trademark Rights

Rights are territorial - may be registered through: Single trademark office: must be obtained on a country-by-country basis. Regional trademark systems: such as those available in the European Community (Community trade marks: CTM's) and in certain African nations that have formed a central registration system (African Intellectual Property Organization (OAPI). Madrid System (International Registration): Madrid Agreement and the Madrid Protocol, through which a company or individual may seek an "international registration" and "extensions" of trademark protection in several countries through a single filing in the applicant's home country. Rights are obtained: by registration or by use (common law rights).

Process of Securing a Trademark

Select: prepare a list of potential marks, taking into account the countries where the mark is to be used or registered, consider whether or not you need trademarks translated and/or transliterated into the local language and the characters/alphabet. Clear: Rule out marks that cannot be registered or are not protectable (registration is generally the easiest way to obtain protection), should include conducting a search to make sure the proposed mark is available for use and registration (ensure it does not infringe someone else's rights or has any negative or derogatory connotations and is appropriate for the countries where the mark is to be used or registered). Protect: take the appropriate steps to protect the rights in the mark through proper use, registration, and/or enforcement. In most countries, the first to register has superior rights. In countries that recognize common law rights (USA, Canada, and the UK), commencing proper use can confer limited protection.

Nontraditional Marks

Sounds, colors, fragrances, designs of a business establishment, or motions.

Policing and Protecting Trademarks

Subscribe to watch services Internet searches Internal "eyes and tears"

Certification Mark

Used to show consumers that particular goods and/or services, or their providers, have met certain standards.