Trademark terms can be difficult to understand. Here are about 40 most important terms explained in a simple non-legal manner.
Absolute grounds for refusal
A trademark must fulfil some basic “absolute” criteria to be accepted. The first is that it contains something that can be registered as a trademark, i.e. a word, logo, slogan, sound, etc, and it must be represented in a manner that is accepted by the relevant IPO (see IPO below). In most countries a trademark must be represented graphically, but there are some where for example audio or video files are accepted. The second, and the most important one is that the trademark is considered distinctive (read our blog about distinctiveness here). There are other “absolute” grounds as well, but in practice they pose problems very rarely. For example, a trademark cannot be against “public morality” (e.g. a racial slur).
If the trademark not is inherently distinctive, it can acquire distinctiveness by virtue of its use. Generally speaking, a trademark acquire distinctiveness when the public perceives it as a trademark rather than a descriptive term.
Brand is not a legal term, and hence there is no legal definition. Terms “brand” and “trademark” are sometimes used interchangeably. Here’s one definition from Seth Godin: “A brand is the set of expectations, memories, stories and relationships that, taken together, account for a consumer’s decision to choose one product or service over another. If the consumer (whether it’s a business, a buyer, a voter or a donor) doesn’t pay a premium, make a selection or spread the word, then no brand value exists for that consumer.” A brand is thus much broader concept than a trademark. Trademark is a legal tool to protect brand elements (not all elements are protectable). For more, see “Trademark” below.
Cancellation / cancellation action / cancellation proceedings
Cancellation is a common term for cancelling somebody’s trademark. In the EU cancellation is not a legal term but rather a descriptive term for two kinds of procedures: “Invalidity” and “Revocation”. “Invalidity” action is where somebody claims that the trademark should not have been registered in the first place. This can happen for example if the trademark is not distinctive, or there is likelihood of confusion with a prior trademark. “Revocation” means that after registration something has happened that registration should no longer be valid. Most typically this is that the owner has not used its trademark for 5 years (in some countries 3 years) or that the trademark has lost its distinctiveness (see “Degeneration” below). Cancellation actions must be initiated by an aggrieved party.
Classification refers to the identification of goods and services in the application. Most countries follow an international classification system, called Nice Classification (named after French city of Nice, where the international agreement regarding trademark classification was concluded). Individual goods and services belong to 45 different “classes”. For example, class 3 contains cosmetics and cleaning products, class 36 banking services. You can see a brief description of classes here. Physical product are found in classes 1-34, services in classes 35-45.
Sometimes classification may also refer to “Vienna Classification”, which is basically a system for identifying figurative elements in trademarks.
Degeneration happens when a trademark ceases to be distinctive and becomes a generic term. This can happen if the name is commonly used as a descriptive term rather than a commercial identifier. Examples of trademarks that have become generic include Aspiring (originally Bayer), Cellophane (originally Dupont), Escalator (originally Otis), Laundromat (originally Westinghouse), Trampoline (originally Griswold-Nissen) and Videotape (originally Ampex Corp.).
A trademark is “descriptive” if it describes some characteristic of a product or service, such as their quality, quantity, origin, characteristics, etc. Generally speaking descriptive names cannot be protected with trademark, unless they are used to such extent that they have “acquired distinctiveness” (see above “Acquired distinctiveness”). Examples of descriptive names would be “Sharp” for televisions (describes picture quality) or “TastyBurger” for restaurant services (describes the food served in the restaurant).
Some IPOs accept or even require “disclaimers” in trademarks. A disclaimer states that the exclusive rights (see below “Exclusive right”) conferred by trademark does not extent to some part of the trademark. For example, a fictional trademark called “Crazynights Hotel” for hotel services might have have a disclaimer stating for example that “No claim is made to the exclusive right to use word “hotel” apart from the mark as shown. So word “hotel” is still part of the mark, but the registration does not confer rights to the word hotel as such, only the combination “Crazynights hotel”.
A trademark must be “distinctive” in order to be registrable, i.e. it must be able to distinguish the owner’s products from other companies’ products. You can read more about distinctiveness here. In practice this means that a trademark cannot be a generic or descriptive word, so some degree of originality is required. For a trademark to be distinctive, it must be an invented word (e.g. Pepsi or Kodak), taken out of context or “arbitrary” (e.g. Apple for electronics or Camel for cigarettes) or suggestive of certain characteristics without being directly descriptive (e.g. Jaquar for cars, Greyhound for bus service). Logo trademarks can be distinctive even if they contain only descriptive word elements. In such a case the “exclusive right” (see “Exclusive right”) covers the visual representation of the trademark with only limited or no protection for the words in the trademark.
EUIPO is an abbreviation for “European Intellectual Property Office”. It is a body responsible for examining EU trademark and design applications and related processes (such as cancellations, see “Cancellation” above). It is located in Alicante, Spain. EUIPO used to be commonly known by its previous name OHIM (Office for the Harmonization in the Internal Market). Unlike most IPOs, EUIPO does not examine European Patent applications. They are examined by the European Patent Office, basic in Munich.
European Union Trademark /European trademark / EUTM
A single trademark registration that covers every country of the European Union, currently 28. These countries are Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom. The UK is currently in the process of withdrawing from the EU.
Trademark gives its owner an “exclusive rights”. This means that they have the right to prevent others from using the same or similar trademark for same or similar products/services.
Exhaustion / first sale
When a product is sold, the intellectual property rights (for example trademark) in that product are “exhausted”, basically ended. The buyer of that product can largely decide how that product is used from that point on. The owner of intellectual property cannot for example prevent a further sale by invoking its exclusive rights in the trademark. The principle of exhaustion enables (with conditions) parallel trading, whereby an operator buys products from a country where they are cheaper and sells them in a country where those products are more expensive.
Famous trademark / well-known trademark
If a trademark is “famous” or “well-known”, the owner has broader exclusive rights to prevent others from using that trademark for products that are not even similar to the trademark owner’s products. For example, a Microsoft could prevent others from using trademark Microsoft for soft drinks.
A trademark is considered figurative if it contains graphical elements (not just words). For example, logos are considered figurative trademarks as opposed to “word trademark” (see “Word mark / word trademark” below). Some make a differentiation with “figurative trademark” and “figurative trademark containing word elements”. In this categorization a figurative trademark only contains graphics without any words (.e.g. Nike’s Swoosh logo).
First sale / exhaustion
See “Exhaustion / first sale” above.
This happens when a trademark becomes generic. See “Degeneration” above.
Goods and services
Trademark rights always relate to particular goods and services. For example, Pepsi is a trademark for soft drinks and Microsoft a trademark for software products and services. When making a trademark application, it is mandatory to specify the goods and services for which trademark rights are being sought. This is often referred to as “list of goods and services” or “specification of goods and services”. The goods and services must be specified with sufficient clarity. Broad and unspecific terms such as “food” are not accepted. More specific terms such as “milk” or “cheese” are acceptable.
Infringement / trademark infringement
Trademark infringement occurs when somebody uses a trademark that is confusingly similar to another company’s trademark and there is no acceptable defence for such use. Infringement requires that there is a “likelihood of confusion” between the trademarks. Possible defences for infringement claim could be for example the lack of likelihood of confusion or the passivity of the previous trademark’s owner.
Intent to use / intent to use declaration
In some countries, such as US and Canada, if the trademark is not used when the application is filed, the applicant must declare its “intent to use” the trademark in commerce.
International trademark refers to trademarks that are registered using World’ Intellectual Property Organization’s (WIPO) system for international registration of trademarks, often referred to as “Madrid system”. The Madrid system is a centralized way of registering trademarks in multiple jurisdictions. One application is sent to WIPO, which in turns sends it forward to “designated” countries. Currently it is possible to register a trademark via Madrid System in about 100 countries. These include countries such as USA, China, Japan, South-Korea, Russia and many others. The most notable absentees are Canada and Brazil, although both are in the process of joining.
“IPO” is an abbreviation meaning “Intellectual Property Office”. These are government bodies responsible for registering various types of intellectual property, such as trademarks. “IPO” is not an official acronym, but rather a handy and convenient way of referring to government a type of government bodies. These include UKIPO (United Kingdom Intellectual Property Office), EUIPO (European Union Intellectual Property Office), CIPO (Canadian Intellectual Property Office), KIPO (Korean Intellectual Property Office) and many others. A notable exception is USPTO, United States Patent and Trademark Office. Since IPO is a colloquial term, it could be said that USPTO is also an IPO.
Likelihood of confusion
Likelihood of confusion is a legal term that determines if there is a conflict between two trademarks. If there is likelihood of confusion, a latter trademark may not be registered or used. Using a trademark that rises a likelihood of confusion to another trademark constitutes an infringement (see “Infringement / trademark infringement” above). Without likelihood of confusion there is no infringement. Likelihood of confusion arises when the trademarks in comparison are identical or similar, and cover identical or similar goods and services.
System for the international registration of trademarks (see “International trademark” above), administered by WIPO (see “WIPO” below).
See “Trademark” below.
See “Classification” above.
Office actions are communications / notifications issued by IPOs during trademark application process, informing the applicant of deficiencies and that further action must be taken before registration can be granted, or that a trademark cannot be registered at all. Typically an office action relates to insufficient precision in the classification of goods and services (see “Classification” and “Goods and services” above) or problems with distinctiveness (see “Absolute grounds for refusal”) or that a previous trademark is posing an obstacle for the registration (see “Relative grounds for refusal”). If office action is issued, the applicant is given a specific deadline before which he must address the deficiencies found in the application.
When an IPO examines a trademark application and finds no obstacles for registration, other companies have a chance to oppose the registration. Typically an opposition is based on a earlier trademark right.
Term “priority” has two distinct meanings. First, when there is a conflict between two trademarks, the one how can establish earlier rights has priority over the later right. The first one wins. A second meaning of “priority” is when a company files a trademark for the first time, that starts a “priority period” of 6 months. If the company extends their trademark rights to other countries within this 6 months priority period, their rights in those other countries start from the date of the first application.
Relative grounds for refusal
These are grounds of refusal relating to other companies’ rights. For example, if another company has registered a trademark earlier, that is a “relative ground for refusal” of a later trademark application. Other relatively grounds (than prior trademarks) include prior copyright, design right, company name registration and protected geographical indications. The details as to what constitutes a relative ground for refusal varies from country to county.
A registered trademark must be renewed every 10 years (15 in Canada). There is no maximum number of renewals, a trademark can exist in perpetuity. For example, trademark Coca-Cola was registered in 1893, and its last renewal was in 2012.
Attorney or law firm that represents a client before IPO (see “IPO” above) proceedings.
A trademark that covers services instead of products. The term not often used outside of US. Term “trademark” is generally used regardless of whether the mark designates goods or services. See also “Trademark” below.
Statement of use
In the US the applicant must file a statement of use in order to obtain a trademark registration. A statement of use must also be filed when a registration is renewed (see “Renewal” above).
A trademark is any sign or symbol that distinguishes its proprietor’s products (or services) from the products of other companies. Most typically trademarks are words, logos or slogans, but other types of trademarks also exist. For example, a sound, movement, smell or colour can also be a trademark, provided that it complies with all requirements of a trademark (mainly distinctiveness).
Use / use of a trademark
If a trademark is not used for those goods and services for which it has been registered during a particular period of time (usually 5 consecutive years), it may be cancelled for non-use. See “Cancellation / cancellation action / cancellation proceedings” above. In some countries, most notably the US, use of the mark is also a requirement for the maintenance of trademark rights.
United States Patent and Registration Office. A US government entity charged with registering federal trademarks and issuing patents in the US. See also “IPO” above.
See “Famous trademark / well-known trademark” above.
World Intellectual Property Organization. A specialized agency of the United Nations, charged (among other things) with administering the Madrid System (see “Madrid System” and “International trademark” above) for the international registration of trademarks. WIPO is based in Geneva,Switzerland.
Word mark / word trademark)
A word trademark is a trademark that only contains word elements.