MYTH #1: Trademarks, copyrights and patents — they’re all the same.
FALSE. Although trademarks, copyrights and patents all fall under the intellectual property umbrella, they protect different property rights.
A copyright protects original works of authorship, while a patent protects an invention.
A trademark, on the other hand, can protect words, designs, sounds, smells, even colors – virtually any identifier used by a manufacturer to distinguish its goods or services from those of others.
MYTH #2: Only visual trademarks are registrable.
FALSE. While traditional trademarks — marks that encompass a word, a logo, or both — are the most common, other types of trademarks are also registrable. These may include sound marks, such as Registration No. 2442140 owned by Yahoo! Inc. used in connection with computer services and consisting of the sound of a human voice yodeling “Yahoo.”
Another type of nontraditional mark is a scent or smell, such as Registration No. 2463044 owned by Mike Mantel used in connection with synthetic lubricants. This mark consists of a cherry scent.
Yet another type of mark would be a motion trademark, such as Registration No. 2092415 owned by Broadway Video, Inc. used in connection with entertainment services and described as “the moving image design mark, comprised of an approximately five second visual sequence, depicts a city skyline, sky and water, enclosed in two concentric circles containing the words ‘BROADWAY VIDEO.’ As the city skyline comes into view the words ‘BROADWAY VIDEO’ rotate clockwise within the circles surrounding the city. The image concludes with a red lightning bolt entering the circle and forming a ‘V.’ The drawing represents four stills from the sequence.”
MYTH #3: Before filing a trademark application, an applicant must conduct a trademark search.
FALSE. A trademark search is not a mandatory pre-requisite for filing a trademark application in most countries. However, it is advisable to conduct a search for several reasons. For example, most trademark offices will review the official register for any prior pending applications or registrations that may be considered to be similar to an applicant’s proposed mark. If such marks are found, the registrar may deny the application indicating that the marks are so similar that they would cause confusion in the marketplace. If registration is denied based on a prior confusingly similar registration, an applicant will have wasted time, effort and money on a trademark that is not available for registration. Similarly, before commencing use of a trademark, a trademark search would alert a potential user to any prior users of the trademark and avoid a possible infringement action by an owner with prior rights.
MYTH #4: If you’re not sure in which class your goods or services fall, just classify it into the miscellaneous class.
FALSE. While at one point, Class 42 was the catch-all class, this is no longer the case. As of January 1, 2002, the World Intellectual Property Organization adopted three additional classes – 43, 44 and 45 – into the Nice Classification of Goods and Services. Services originally included in Class 42 were reclassified into the three newly designated classes and three existing classes – 35, 40 and 41 – so that every product and service now has an appropriate classification.
MYTH #5: The mark must be in use in every country in the world to secure and maintain a registration.
FALSE. In actuality, most countries will grant registration to an application without use, even at the time of registration. On the other hand, the U.S. (with the exception of applications based on Sections 44 and 66) and Canadian trademark offices will accept applications based on intention of use, but the applicant must commence use of the mark at some point before the registration can be issued.
As a good rule of thumb, always check the local country law to determine the use requirements, especially at the time of renewal of the registration. Furthermore, after a mark is registered, most countries have a specified time frame when a mark can become vulnerable to cancellation by third parties due to nonuse.
MYTH #6: Once a trademark registration is issued, it is valid in any country of the world.
FALSE. With few exceptions, trademark rights do not extend past national borders. Therefore, a trademark registration issued in Argentina will only be valid in Argentina. For multinational trademark coverage, an applicant may consider filing a European Community application, which provides coverage in 15 western European countries and, as of May 1, 2004, will extend to ten additional countries in Central and Eastern Europe. In Africa, one may consider a registration with Organisation Africaine de la Propriété Intellectuelle (OAPI), which includes 16 African countries consisting of former French colonies. In addition, a registration under the Madrid Protocol currently covers nearly 60 countries throughout the world.
MYTH #7: Once an owner secures a trademark registration, he has rights in perpetuity.
FALSE. Once a trademark is registered, it must be maintained by adhering to requirements in accordance with the country law. Most commonly, trademarks must be renewed periodically, usually every ten years from the registration date or the filing date of the application. In addition to renewal deadlines, some countries have different requirements, such as the filing of an Affidavit of Use in the United States between the 5th and 6th years of registration. When handling a multinational portfolio, country guides and docketing systems become invaluable staples of trademark practice.
MYTH #8: Besides designating the source or quality of a good or service, trademarks do not have any commercial value.
FALSE. Trademark rights are assignable for monetary value. Additionally, companies may list their trademark applications and registrations as collateral to secure a loan. Once a trademark is assigned or put up for collateral, the assignment or security interest should be recorded with the appropriate trademark office.
MYTH #9: A ™ and an ® are synonymous.
FALSE. A ™ is a designation that puts third parties on alert that you are using the trademark or service mark in connection with your goods and/or services. This symbol may be used while an application is pending or if common law rights have been established. The ® designation, on the other hand, may be used only if you own a federally registered trademark.
MYTH #10: Call it by name.
FALSE. How many times have you heard someone refer to a product by its brand? “May I have a Kleenex?” “I love your new Kate Spade!” “I need a Band-Aid for this paper cut.” While one would think that a brand owner would be flattered by the popularity of their brand, this type of use endangers the distinctiveness of a trademark and could result in genericide.
A trademark is an adjective and should be followed by a descriptive noun. Proper trademark usage of the above examples would include “May I have a KLEENEX tissue?”, “I love your new KATE SPADE bag!”, and “I need a BAND-AID adhesive strip for this paper cut.”
Have questions about your company’s service or trademarks? Need more information? Contact one of our trademark professionals in the Intellectual Property Practice Group at Doerner, Saunders, Daniel & Anderson, L.L.P. at 918-582-1211, and visit us on the web at www.dsda.com.
This advisory is only intended to provide general information, and so it should not be relied upon for specific legal advice.
You are strongly encouraged to contact the appropriate legal professional for proper advisement.