Trademark Lawyers: Types of Trademarks

According to the US Patents and Trademarks Office (USPTO), the number of active trademark registrations has gone up by approximately 80,000 from 2009 to 2010. With more and more business identities seeking protection for their intellectual property rights, trademark lawyers are very much in business. Not only can proficient trademark lawyers help you through the registration process, they can provide suitable pre registration guidance as well. For example, if you are still contemplating on the trademark nomenclature, trademark lawyers could provide valuable inputs for the same.

Understanding Trademarks with Trademark Lawyers
Your trademark lawyers would be the right people to explain the various categories of marks commonly used, and the ones preferred for trouble free registration. For some basic definitions, given below are the types of trademarks:

Descriptive Marks: These are the ones which describe the products or services offered. For example, something like “honey coated flakes” would be a descriptive trademark. Normally, trademark lawyers could advice you against these, because one descriptive trademark could bear similarities with various others catering to the same product category. However, entrepreneurs are sometimes prepared to brave the difficulties because of the advertising advantages associated with such descriptive connotations.

Suggestive Marks: Suggestive trademarks are the ones which make an indirect reference to the products and services. For example, something like “Quick Bites” could be used for a snacking item, “Jaguar” for an automobile brand, “Leg Ins” for an apparel manufacturing company and so on. These are more preferred choices with respect to uniqueness when compared to descriptive marks.

Arbitrary Marks: Arbitrary trademarks could be highly preferred for protection purposes. These are commonly used English words which can be used for unrelated products. For example, “Apple” for computers is what an arbitrary trademark is. However, the concept would change with respect to the products they represent. For example, the mark “apple” when used for a fruit exporter, would become a descriptive trademark.

Obscure and Fanciful: These trademarks would provide for the maximum possible protection since they are basically unique words which have no meaning. They are created by business entrepreneurs and the brand becomes their identity. Classic examples of fanciful trademarks would be “Xerox” and “Oreo”. While the former has nothing to do with photocopying, the latter is completely unrelated to the biscuits it is a trademark for. However, they have gone on to become generic terms replacing the actual products in the process.

Intellectual Property Law – European Community Trade Mark – ‘Likelihood of Confusion’

The case of Antartica Srl v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-47/06) [2007] involved issues relating to the ‘likelihood of confusion’ with regards to a European Community trade mark. On the 30th of March 2000, the applicant company, Antarctica Srl, submitted an application to register a Community Trade Mark (CTM) at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

The application was made under Council Regulation (EC) 40/94 (on the Community trade mark) to register a figurative mark containing the word NASDAQ as a CTM. The goods for which registration was sought fell within classes 9, 12, 14, 25 and 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of the 15th of June 1957 as amended.

On the 27th of April 2001, the NASDAQ Stock Market Inc brought opposition proceedings against the registration of the mark applied for in respect of all the goods referred to in the application for registration. The opposition was made on the grounds outlined in Article 8(1)(b) and 8(5) of Regulation 40/94.

The Opposition Division of OHIM rejected the opposition. The opposition was rejected on the grounds that there was no ‘likelihood of confusion’ within the meaning of Article 8(1)(b) of Regulation 40/94. In addition, the reputation of the earlier mark in Europe had not been properly substantiated. Subsequently, on the 24th of August 2004, the intervener brought an appeal before OHIM against the Opposition Division’s decision.

By a decision of the 7th of December 2005, (“the Contested Decision” in this case), the Second Board of Appeal of OHIM set aside the Opposition Division’s decision on the ground that the latter had wrongly rejected the opposition by basing its decision on the fact that the conditions for the application of Article 8(5) of Regulation 40/94 had not been fulfilled.

For its part, the Board of Appeal held that the reputation of the trade mark NASDAQ in the European Union for the services in classes 35 and 36 for which it had been registered had been substantiated, and that the applicant’s use of the mark NASDAQ without due cause would take unfair advantage of, or be detrimental to, the distinctive character and reputation of the earlier mark. For these reasons the Board of Appeal upheld the opposition.

The applicant company sought an appeal. It claimed that the Court of First Instance should annul the contested decision. It alleged a single plea of infringement of Article 8(5) of Regulation 40/94 in support of its action for annulment of the Contested Decision.

The Court considered the evidence, and took account of the similarity of the marks at issue, as well as the importance of the reputation and the highly distinctive character of the trade mark NASDAQ. It was held that the intervener had established the existence of a future risk, which was not hypothetical, of unfair advantage being drawn by the applicant by the use of the mark applied for, from the reputation of the trade mark NASDAQ.

As a result, there was therefore no need to set aside the Contested Decision on that point. The applicant had not been able to put forward one convincing reason to warrant the conclusion that its use of the trade mark NASDAQ would be founded on due cause within the meaning of Article 8(5) of Regulation 40/94. In those circumstances the Board of Appeal had been right to conclude that there had been no due cause for the applicant’s use of the sign NASDAQ. The single plea alleging infringement of Article 8(5) of Regulation 40/94 had to be rejected together with the application in its entirety.

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

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The Difference Between Trade Secrets And Trademarks

Some people get confused between trade secrets and trademarks. A trademark is something that is publicly recognized and known as being officially associated with a particular company. In contrast a trade secret can be a much more broad definition and by its very name is not made public.

According to the laws in most states, any device, pattern, formula, idea, or collection of information that gives the owner an advantage in the marketplace and is protected by the owner in a way that shows that it can be reasonably expected to keep their competitors or the public from finding out about it without stealing it is considered a trade secret.

There are many examples I can give of trade secrets. In an actual product, a trade secret could be the way certain ingredients are combined in the formulation of a nutritional supplement. Recipes, in particular those employed at commercial restaurants, are considered to be trade secrets.

One very famous one that I can think of right off is Colonel Sander’s recipe for his Kentucky Fried Chicken. An idea for an invention that one has that they have not filed for a patent on yet would also be considered a trade secret, as are the complex algorithms that search engines like Google use to give us search results online.

Trade secrets are the opposite of other types of protecting of intellectual property such as trademarks and patents. The whole idea of a trade secret is to keep it from public knowledge and it is basically something that a person or company does themselves. Your trade secret will be given protection under law until you make the information public.

Companies and individuals protect information that they are unable to guard with other legal means such as patents and trademarks. There are numerous things that can be considered trade secrets. An idea that will give you a big jump over your competition in a particular market or even an idea for a piece of software or a website would also be a trade secret. Business information that you keep secret and only allow access to by employees such as marketing plans, costs, and pricing would be protected under law.

According to the law, the owner of a trade secret can legally prevent employees from using trade secret information or disclosing it by binding them with confidentiality or non-disclosure agreements. They also have legal protection from people who get the information by stealing it or through industrial espionage as well as people who get the information knowing that it is a protected trade secret.

The best way for a company to protect itself legally is to have employees sign a non-disclosure agreement, also known as an NDA. You should also have them signed by anyone that you do business with such as lenders and investors. An intellectual property attorney can help you with drafting this important document.