What is a trademark? Definition and meaning
A trademark is a sign or symbol we can use to distinguish our business’ goods or services from those of other enterprises. It is a symbol, word or words legally registered or established by long-term use as representing a company or its product.
There are three possible spellings for the word: 1. Trademark – more common in the USA. 2. Trade-mark – more common in Canada. 3. Trade mark – more common in the UK, Ireland, Australia, New Zealand and the rest of the English-speaking world outside of North America.
When your trademark is registered, your brand (mark) is protected – other people cannot legally use it without your permission.
After registration, a trademark is protected forever, as long as you renew it every ten years. As it is a form of intellectual property, it can be licensed or assigned to others.
When your trade mark is registered, you will be able to:
– Sue anybody who uses your brand without permission, including counterfeiters
– Place the ® symbol next to your brand. The TM sign denotes that the mark is being used by the business as its trademark, but does not necessarily mean that it is registered or protected under intellectual property law.
– Sell your brand, or license it.
According to IP Australia, a trademark is:
“A trade mark is a way of identifying a unique product or service. A good trade mark distinguishes your business from other traders. Sometimes referred to as a brand, it can help your customers discern the quality of your product or service over that of your opposition. A trade mark is not just ‘a logo’.”
Difference between trademark and logo
A logo (abbreviation of logotype) is a graphic mark, symbol or emblem used to distinguish a company or its product. You cannot register a logo as a logo and prevent others from using it.
Trademarks may include logos, slogans and designs, also used to distinguish a company. However, not all of them include a logo.
Some logos may qualify as registered trademarks, which offer protection – as long as they meet the minimum requirements. To qualify, the logo must be a unique mark used to distinguish and identify a business’ goods or services offered in the marketplace.
Trademarks, copyrights and patents
It is important that you determine which type of application you should pursue. While a trademark protects logos and brand names on goods and services, a patent protects something that has been invented. A copyright protects an original work of art, literature or music.
If you invent a new type of vacuum cleaner, you apply for a patent to protect the invention itself. In order to protect the vacuum cleaner’s brand name you would apply for a trademark. For the TV advert that you use to market the product, you might register a copyright.
The United States Patent and Trademark Office writes regarding which ones to register:
“Trademarks, patents, copyrights, domain names, and business name registrations all differ, so it is important to learn whether a trademark is appropriate for you.”
Trademark – what’s allowed and forbidden
A trademark must be unique, and can include:
- – logos
- – words
- – sounds
- – colors
- – letters
- – shapes
- – labels
- – signatures
- – tickets
- – a combination of any of the above
A trademark cannot:
- Describe the good or service it will relate to. For example, for a cotton textile company, the word ‘cotton’ cannot be a trademark.
- Be offensive. There should be no swear words or pornographic images or drawings.
- Be ambiguous or misleading. If your products are not organic, your trademark cannot be ‘organic’.
- Be a 3-D shape associated with the trademark. For example, you cannot use the shape of an egg for eggs.
- Be non-distinctive or too common. For example, a simple statement like ‘we lead the way’ would not be allowed.
- Look similar to symbols of nations such as flags or hallmarks.
What are the benefits?
You do not have to register a trademark in most countries – it is not compulsory. For an unregistered mark, its owner may rely on his or her rights under the common law action of ‘passing off’ to protect their mark against infringement or imitation.
However, as the Intellectual Property Office of Singapore explains, if it is registered in relation to one’s business, goods or services, the individual is effectively gaining total control regarding its use, and not relying on how some lawyers and judges might interpret common law.
A trademark can add value to a company because it can be used to protect its market share. It can be licensed to others such as franchisees, or sold outright for an agreed amount.
It can also be used to help raise equity for the development of a business.
Business/Company name is not a trademark
Many people erroneously believe that a business name, company name or even a design is the same thing as a trademark – this is not the case.
IP Australia gives an example of this with the story behind a web-based business SourceBottle.
Bec Derrington, the business’ founder explained:
“When I first started I thought registering my domain name would be enough, but I soon realised that would not protect me if someone else wanted to use the name SourceBottle®. All I’d done was ensure they just couldn’t use the same domain address.”
“This meant I needed to register the trade mark for my business, SourceBottle®. I used a trade mark attorney to manage the process, who was able to determine the right classes under which to register the mark.”
Not long after Ms. Derrington launched the business across the country, she wanted to expand it internationally. However, she discovered that the domain name ‘sourcebottle.com’ belonged to a martial arts studio.
Fortunately, the studio had not sought to register the trademark in any international markets, so she was able to register it globally without any resistance, and eventually managed to purchase the ‘sourcebottle.com’ domain from the martial arts studio as well.
Specifying the class(es)
When you apply for a trademark, you will need to specify the class(es). Most country’s IP agencies have a search tool where applicants can classify their goods and services. The European Union’s search tool is called TMclass.
According to the UK’s Intellectual Property Office, there are 45 different classes. Below are descriptions of the first 5 five:
– Class 1: chemicals used in photography, science, industry, forestry, horticulture and agriculture. Unprocessed plastics and artificial resins, manures, tempering and soldering preparations, fire extinguishing compositions, chemicals for preserving foodstuffs, industrial adhesives, and tanning substances.
– Class 2: lacquers, varnishes, paints, preservatives against rust and deterioration of woods. Raw natural resins, colorants, and mordants. metals in power form and foil for use in painting, decorating, printing and art.
– Class 3: substances for laundry use including bleaching preparations. Abrasive, scouring, polishing and cleaning preparations. Hair lotions, cosmetics, essential oils, perfumery, dentifrices and soaps.
– Class 4: industrial oils and greases. Binding, wetting and absorbing compositions. Illuminants and fuels (including motor spirit). Wicks for lighting and candles.
– Class 5: medical, pharmaceutical and veterinary preparations. Dietetic food substances adapted for veterinary or medical use. Sanitary preparations for medical purposes. Baby food, dietary supplements for animals and humans, materials for dressings, plasters (Band-Aid), dental wax, material for stopping teeth, vermin-destroying preparations, herbicides and fungicides.