A brand that has been given exclusive legal protection, such as the mcdonalds golden arches, is a

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A company’s trademarks are often its most important assets.  Nike’s "Swoosh," McDonald’s "Golden Arches," the names Coca-Cola, Starbucks and Amazon.com--all of these marks immediately conjure up certain feelings and images in the minds of consumers that these companies have worked extremely hard to achieve. The worldwide nature of the Internet and the increasing globalization of business--through something as simple as having a Web site--have made protection and enforcement of these assets both more important and more difficult.

Service Marks

The term "service mark" rather than "trademark" is sometimes used when referring to a mark used in connection with a service rather than a product. For example, the mark H&R BLOCK would be a service mark because it is used in connection with a service--income tax preparation. However, in common usage, the term "trademark" is applied to marks for both goods and services.

Colors as Trademarks

Many countries accept color combination marks for registration, but they may condition registration upon proof that the color combination has become distinctive as a trademark through use. International law leaves open the question of whether a single color may be protected as a trademark. At present, there is significant disagreement among nations on this issue. In the United States, single color marks may be protected only if they can be shown to have acquired distinctiveness as trademarks (e.g., UPS's use of the color brown for package delivery services). In China and Japan, single color marks are not registrable under any circumstances. In addition, colors that are functional (i.e., essential to the use or purpose of the product or that affect the cost or quality of the product) are not protectable.

Smells as Trademarks

International law does not require that scent marks be protected as trademarks. In the United States, scents have in some circumstances been found to be protectable as trademarks (e.g., a floral scent for sewing thread).

Sounds as Trademarks

As is the case with scent marks, international law does not require countries to protect sound marks. The United States, however, has long recognized sound marks as protectable trademarks, such as the well-known NBC chimes or the famous roar of the MGM lion.

Product Shapes as Trademarks

Most countries, including the United States, permit the protection of product shapes as trademarks under certain circumstances. One of the most well-known examples is the distinctive shape of the Coca-Cola bottle. Protection of product shape is generally limited to cases in which the shape is nonfunctional and where it has acquired distinctiveness through use. Product packaging, on the other hand, may be inherently distinctive.

A product's shape or design, packaging, color, or other distinguishing nonfunctional element of appearance is generally referred to as "trade dress."

Example of Trademark Protection

• The brand name ROCKET SODA
  
• The slogan "Out of this World"
  
• The rocket ship and planet logo
  
• Possibly the shape of the bottle

A trademark is a word, phrase, symbol or design-- or a combination of any of these--that serves to identify and distinguish a specific product or service from others in the marketplace. Even colors, smells, sounds, and product shapes can be trademarks in some instances. Here are some examples:

• REGAL CINEMAS for cinemas
• BEN & JERRY’S for ice cream
• Apple Computer’s "Apple" logo for computers
• Timex’s slogan "It takes a licking and keeps on ticking" for watches
• FAHRVERGNUGEN for Volkswagen cars

Click here for an example of the various features of a product that may be protectable under trademark law.

Public Policy Exceptions

Most countries exclude some categories of terms and symbols from trademark protection entirely. In addition to generic terms, excluded marks include:

• Marks used for official government business (e.g., national flags, coats of arms, national emblems, etc.)
• Marks that are deceptive regarding the nature or origin of the products or services to which they apply (e.g., the mark FRESH-PICKED JUICE for a beverage containing no real fruit juice or the mark GLASS WAX for a window cleaning product containing no wax)
• Marks that are considered to be against public order, morally offensive, or obscene 

Not all trademarks are created equal. There are significant differences in the types of marks that can function as trademarks and the extent to which they may be eligible for protection in any given country. Understanding these differences is essential to choosing a new trademark that can be protected in all relevant markets. It is also important to understand that there are some categories of terms that for public policy reasons can never be used as trademarks.

In general, a trademark will receive protection if it is arbitrary or fanciful, or suggestive, but not if the term is merely descriptive of the product or service it represents. Here are some examples of highly distinctive marks:

• KODAK
• APPLE
• GOOGLE
• EXXON
• BLUETOOTH

Trademark rights are territorial, meaning that protection in one country does not mean that protection exists in any other country. Each country has its own specific requirements, such as use and/or registration, that must be met in order to obtain trademark protection in that country. A U.S. trademark registration, for example, protects a trademark only in the United States.

The territorial nature of trademark protection is very different from copyright protection, which does not depend upon procedures or formalities in individual countries. The mere creation of a copyrightable work is generally sufficient for copyright protection to exist in most countries of the world. Although it is often beneficial to register the copyright, it is not necessary to do so for copyright protection to exist.) With regard to trademarks, however, each country has its own procedures or formalities that must be followed for trademark protection to exist. One exception to this general principle is that famous marks may receive trademark protection even when they have not been used or registered in a particular country.

Anyone seeking to protect trademarks in other countries must first understand that countries fall into two basic categories with respect to establishing trademark rights:

• First to Use: In the United States, Canada, the U.K., and some other countries, trademark ownership is established by use of the mark in connection with goods or services. In these "first to use" countries, rights exist upon use in commerce, although a registration provides important benefits to the trademark owner.
• First to File: In most other countries, trademark rights are established only through registration. In these "first to file" countries, the first party to register a mark with the local trademark office is considered the owner regardless of whether someone else used the mark in that country first. Therefore, your business may want to consider filing for trademark protection prior to introducing a new product.

If properly maintained, trademark rights can last forever. In the United States, rights in a trademark depend upon continued use of the mark. (Registration is not required but does confer significant benefits.) If a mark falls out of use for a sufficient length of time, others may be able to use the mark. If the mark is registered, others can petition to cancel the registration because of failure to use the mark. Because trademark rights in the United States depend upon use, not registration, a trademark owner’s failure to renew a U.S. registration does not necessarily mean that rights in the mark have been abandoned.

In "first to file" countries, continued rights in a trademark depend upon timely renewal of the trademark registration. A trademark registration, once obtained, is valid for a specific length of time (which varies by country), but the registration can be renewed indefinitely if proper procedures are followed. In most countries, trademark registrations are valid for a term of 10 years, after which they must be renewed.

Collective Marks

There are two types of collective marks in the United States:

• Collective trademarks (or collective service marks). A collective trademark or collective service mark is a mark adopted by a "collective" (i.e., an association, union, cooperative, fraternal organization, or other organized collective group) for use only by its members, who in turn use the mark to identify their goods or services and distinguish them from those of non-members. The "collective" itself neither sells goods nor performs services under a collective trademark or collective service mark, but the collective may advertise or otherwise promote the goods or services sold or rendered by its members under the mark.
• Collective membership marks. A collective membership mark is a mark adopted for the purpose of indicating membership in an organized collective group, such as a union, an association, or other organization. Neither the collective nor its members uses the collective membership mark to identify and distinguish goods or services; rather, the sole function of such a mark is to indicate that the person displaying the mark is a member of the organized collective group.

Examples of collective marks in the United States include the American Automobile Association (AAA) and Florists Transworld Delivery (FTD).

Certification Marks

A certification mark is used to identify goods or services that meet certain criteria such as quality, origin, material, or other characteristics. Typically, a system of rating is established by an independent organization, and the symbol is then licensed to approved manufacturers or service providers. Examples of certification marks include the Good Housekeeping Seal of Approval (which certifies that a product meets a certain level of quality and reliability), Underwriters Laboratories' UL mark (which certifies compliance with UL's safety requirements), and the Woolmark symbol (which certifies that certain laundry products can wash and dry wool and wool-blend products without damage). One who sees a certification mark on a product or in connection with a service is entitled to assume that that product or service in fact meets whatever standards of safety or quality have been established and advertised by the certifier.

The purpose of an ordinary trademark or service mark is to identify to consumers the actual source—the maker or provider—of the goods or services with which the mark is used. There are two special types of marks, however, in which the registrants of the marks are not the users of them. They are:

• Collective marks
• Certification marks

In the United States, registration of collective membership marks and certification marks is conducted using the same general procedures as registration of traditional trademarks and service marks, although use and ownership requirements are slightly different. Application forms to register collective membership and certification marks with the USPTO can be found online at: http://www.uspto.gov/teas/eTEASpageA.htm.

Geographical indications (or GIs, as they are commonly called) are treated as a subset of trademarks in the United States. GIs identify a good or service as originating in a place, region, or locality where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographic origin. Examples of GIs from the United States include FLORIDA for oranges, IDAHO for potatoes, VIDALIA for onions, and WASHINGTON STATE for apples. GIs are valuable to producers for the same reason that trademarks are valuable. They serve the same functions as trademarks because, like trademarks, they are source identifiers and guarantees of quality, and they represent valuable business interests.

GIs increasingly are being recognized as valuable marketing tools in the global economy. Further, intellectual property (IP) owners are finding that protecting IP is no longer just a domestic endeavor. Accordingly, IP owners need to be armed with information about domestic and foreign systems of GI protection in order to fully leverage the value added by GIs to their goods both at home and abroad.

The distinction between Internet domain names and trademarks is important to understand. Generally speaking, a domain name serves as an address on the Internet, rather than as an indication of source for goods or services. In the vast majority of cases, therefore, domain names cannot be registered as trademarks.

A notable exception is the mark AMAZON.COM. In that case, the domain name also serves as a source identifier for online retail services. In contrast, the domain name www.barnesandnoble.com does not function as a trademark because the ".com" portion of the domain is not used as part of the company's brand. Rather, the well-known book retailer uses the trademark BARNES & NOBLE, and the domain www.barnesandnoble.com is used simply for an address on the Web.

You have now completed the trademarks lesson of this module.

• If you wish to proceed directly to information about protecting your trademark in the United States, select Module 4 from the menu on the top left of this screen.
• If you wish to review the introductions to patents and/or trade secrets, continue with this module.