Oct 15, 2014 parts 2 and 3 of the paper provide a brief overview of the distinctiveness requirement in registered trade mark law, how the two stages of distinctiveness are assessed and the complex way in which s 41 operates, and will introduce some useful terminology for understanding the statutory tests. The most unusual in the context of their use are considered the most memorable. Whether acquired distinctiveness has been established is a question of fact. The identification of distinctiveness in marks containing. If that connection is strong, like if your mark is just the words that the goodsservices is commonly called, then it is. In other words, there is no positive definition of distinctiveness in law. Intellectual property trademarks, s, patents is a business asset. Acquired distinctiveness of trademark prior to date of application. Imagine a twodimensional trademark space, with trademarks across the y axis, and products along the x. Taking note of the section is important because the registrar will assess the evidence of use to overcome your objection differently.
The term mark is generally used to refer to all types of trademarks, including service marks. The connection between trademark distinctiveness and language matters is of high significance in inquiring the nature of distinctiveness of marks. The mark then becomes registrable, other things being equal. Distinctive marks typically consist of terms that are fanciful or coined maalox or xerox, arbitrary penguin for books, arrow for shirts, or suggestive accuride tires. This post will look at the idea of trademark distinctiveness, and explain each of the different distinctiveness categories that a trademark might fall under.
In order for the trademark to do its job, it must be distinctive to the consumer. Like abandonment of a trade mark, loss of distinctiveness is a question of fact. Trademark theory does not sufficiently distinguish trademark strength from brand strengthwhat we term trademark hybridity. Apr 23, 2020 that is one reason you should speak to a trademark attorney before filing an application. Trademark distinctiveness is an important concept in the law governing trademarks and service marks. Trademark attorneys always recommend using distinctive names. A claim of ownership of one or more active prior registrations on the principal register of the same mark for goods or services that are sufficiently similar to those identified in the pending. Evidence of distinctiveness acquired through use version 3 november 2015 page 2 intellectual property office of singapore 1 introduction this chapter deals with the evidence of use submitted by applicants to overcome section 71b and c objections to show that the marks in question have acquired distinctiveness through use. Trade mark law in various ways oftentimes overlapping spells out the requirement that a trade mark must be distinctive, although it does so in a negative way. You may submit actual evidence that the appliedfor mark has acquired distinctiveness under section 2 f in connection with applicants goods.
To overcome an ornamental refusal, you may submit actual evidence that the appliedfor mark has acquired distinctiveness under section 2f in connection with your goods. Secondly, for those names that are distinctive and protectable, the degree of distinctiveness is important when assessing how strong the trademark protection is against other companies. So the question is, what signs are distinctive in practice and how to assess that. Effective brandingcreating and maintaining a strong. The authors hold that the criteria adopted by administrative organs for the identification of a trademark s distinctiveness should not be overly strict for the following reasons. In contrast, restrictions which are worded in a positive way can usually be acceptable, such as books about chemistry. The formula 1 companies own extensive rights in and to the formula 1 brand, including the right to. The more distinctive a mark is, and the more wellknown the mark becomes, the wider the marks scope of protection will be. A trademark can be inherently distinctive, or it can acquire distinctiveness through long and exclusive use of that trademark by the trademarks owner. Three dimensional trademarks understanding united states law and practice i. This means that, through the trademark owners use and promotion of the descriptive phrase, customers now see the descriptive words as a trademark for those goods. Although traditionally associated with packaging and labeling, the term trade dress.
However, a trademark must be distinctive because a distinctive trademark ensures the following. There are actually several kinds of trademarks, and only some of them can be registered. The purpose of a trademark is to identify a consistent source e. Firstly, it defines whether a name can be protected or not. A mark that is not inherently distinctive because they are merely descriptive, surnames, or geographic indicators can also be made trademarks in certain circumstances. Following the classic formulation set forth by a federal. Preface the internet has sparked phenomenal growth in the importance and scope of trademark and unfair competition law. Without such acquired distinctiveness, a merely descriptive mark might still be registrable on the supplemental register, depending upon the subjective views of the trademark examining attorney assigned to your application. Notwithstanding this restatement, kitto js formulation in clark equipment of. Registrability can be understood as a continuum, with inherently distinctive marks at one end. In the case of something like \coke, its practically all products. Background threedimensional trademarks are merely a special and peculiar subset of trade dress. A trademark may be eligible for registration, or registrable, if it performs the essential trademark function, and has distinctive character.
Trademark examining attorneys will be governed by the applicable statutes, the trademark rules of practice, decisions, and orders and notices issued by the under secretary of commerce for intellectual property and director of the united states patent and trademark office, commissioners, or. Time period is five years prior to the date of claim, not date of application 2. Continuum of distinctiveness the categories in which trademarks are placed in determining their level of distinctiveness are defined below. Acquired distinctiveness of trademarks in the united states. As regards the proof of acquired distinctiveness article. Trademarks are commercial signs that are capable of distinguishing the goods or services of one company from those of other companies. Placement on the spectrum of distinctiveness is based on facts of each case and is an important factor in the registrability of the.
A creative mind may say that a rose called by any other name would smell as sweet and a name has nothing to it. Strength as a likelihood of confusion factor how distinctively strongly a trademark indicates that a good comes from a particular specific source even if unknown is an important factor to consider in assessing its validity and instruction insert number of instruction regarding skeekcraft test, e. Distinctiveness united states trademark law overview. Distinctiveness is a fundamental requirement for trademark registration and protection under eu and eea law, cf. One underlying theme of trademark law is that trademarks are associated with a product. The distinctiveness of a mark isnt dispositive of its strength. You may submit actual evidence that the appliedfor mark has acquired distinctiveness under section 2f in connection with applicants goods. Distinctive character acquired through use means that although the sign ab initio lacks inherent distinctiveness with regard to the goods and services claimed, owing to the use made of it on the market, at least a significant proportion of the relevant public has come to see it as identifying the goods and services claimed in the eutm application.
Acquired distinctiveness trademark law and legal definition. A luxury fashion industry perspective a thesis submitted to the university of manchester for the degree of doctor of philosophy in the faculty of humanities 2016 dima basma school of law. Trademarks, geographical indications, certification marks, collective marks creative designs appearance or look of the products. Inwood formulation there is no need to proceed further to consider if there is a. Not every trademark is created equal, however, and the trademark spectrum of distinctiveness affects the level of protection the trademark receives. Patents, utility models cultural, artistic and literary works, including in most. Registrability can be understood as a continuum, with inherently distinctive marks at one end, generic and descriptive marks with no distinctive. Whether youve developed a formula for a new soft drink, an industrial solvent or a new equation for managing investments, it may be fantastically valuable to your company. Some surnames have a nonsurname meaning that can be seen as the primary significance. How to claim acquired distinctiveness under section 2f uspto.
Use must be substantially exclusive and continuous 3. Requiring a trademark or service mark to be distinctive in order to receive legal protection serves two related purposes. A trademark can be inherently distinctive, or it can acquire distinctiveness through long and exclusive use of that trademark by the trademark s owner. Justice scalia joins all but part iii of this opinion. In the case of an ir, the relevant date is the date of registration by the international bureau or, if the designation takes place at a later. Distinctiveness doctrine, made seemingly straightforward by abercrombie 18 and its progeny, is one of trademark laws stickiest stories. You may protect a trademark by registering with the u. Burden of proving acquired distinctiveness is on applicant 2. Using multiple different kinds of evidence is helpful ii. In some cases, a trademark owner can accept that its trademark is descriptive and argue that it has acquired distinctiveness in the united states for its goods and services.
Intellectual property the trademark spectrum of distinctiveness by collin roberts. For example, to decide a claim for trademark infringement, the law requires a court or an administrator of trademark registrations to consider whether a. In essence, trademark law places a premium on marks that are distinctive. Industrial design innovative products and processes. Jul 08, 20 the authors hold that the criteria adopted by administrative organs for the identification of a trademarks distinctiveness should not be overly strict for the following reasons. Trademark distinctiveness is a term for the range of categories used to determine the level of protection afforded to a trademark under applicable state and federal laws. Gain more insights from legalmatchs online library today. However, likelihood of confusion is not the only factor to consider when adopting a new trademark.
How to respond to descriptiveness refusal on a trademark. Trademarkthoughts trademarks are categorized as falling somewhere along a spectrum of distinctiveness, ranging from inherently dis. The strongest marks typically have no meaning in relation to the goods or services. When a mark acquires distinctiveness, it becomes capable of serving as a trademark by associating in the mind of the relevant public with a particular source of goods and services.
It looks at the connection between your mark and the goodsservices it will be used to sell. How to overcome a lack of distinctiveness trademark objection. Trademark distinctiveness is a measure of how well a trademark sets apart your goods andor services from those of others. To establish acquired distinctiveness means that consumers directly associate your mark with your goods, typically due to extensive promotion and use of your mark. The court ordered the cease of an authorized use of the trademark and denied the. There are various distinctive trademark classifications to consider such as a generic trademark or a descriptive trademark. Guidelines for the use of trade marks and intellectual property rights belonging to the formula 1 companies. The trademarks act, 1999, however, envisages the opposite and our experience with brand names and market shares show that a name has quite a bit to. The spectrum of distinctiveness trademark distinctiveness is an important concept in the law governing trademarks and service marks. Section 2f of the lanham act states that nothing herein shall prevent the registration of a mark used by the applicant which as become distinctive of the applicants goods in commerce ii. Trademark distinctiveness is important for two reasons. Trademarks are words, names, symbols and other branding that distinguish and identify the sources of goods or services. To test distinctiveness, courts will use the abercrombie formulation. For example, marks in the laundry detergent market include tide.
Invigor law group i blog i trademark spectrum of distinctiveness. The nature, scope, and limits of modern trademark protection. Patent and trademark office and attaching it to a product a market place. Trademarks and service marks are judged on a spectrum of distinctiveness.
Depending on ones view of the current topsecret formula for cocacola, the. Section 41, the distinctive character continuum and the twostep process in short, s 41 contemplates that a mark may be accepted for registration on the basis of prima facie distinctiveness or a showing of factual distinctiveness. The documents you receive from ip australia about your lack of distinctiveness trademark objection will tell you which of the above two sections of the act have been raised. Generally speaking, a trademark may lose its distinctive character by. In other words, because of the extensive use and promotion of the mark, consumers now directly associate the mark with the applicant as the source of those goods. A written chemical formula representing a substance that would produce. Everything you need to know trademark law resources types of trademarks how to register a trademark. A critical assessment of trade mark distinctiveness and. Acquired distinctiveness or secondary meaning, oct. Keep in mind that a mark registered on the supplemental register is not available for recording with u. The ecj expressly stated that the assessment of distinctiveness through use is the same for colour as for any other marks. Marks that are descriptive or misdescriptive can acquire distinctiveness in the. How to claim acquired distinctiveness under section 2f.
Formula 1 is the brand used to identify the most prestigious motor racing competition in the world. The date at which the distinctiveness of a mark must be established is the date of the application and the rights of parties must be determined as on the date of application. Distinctiveness is typically divided into five groups. The patent courts decision, by rejecting kipos amended guidelines, restores a reasonable standard for determining the distinctiveness of three dimensional trademarks. Trademark distinctiveness refers to the features of a registered design that identifies products or services as originating from a specific company. The reason for this significance is, that interpretation of nonlinguistic symbols figures, lines. A trademark is anything used to identify the source of a product or service, including a word, phrase, slogan, logo, color, smell, sound. The trademark spectrum of distinctiveness by collin roberts.
In two recent decisions, the colombian trademark office held that a registrable trademark can consist of a combination of descriptive terms, provided that the combination as a whole does not refer exclusively to a quality or essential characteristic of the associated product or service. According to settled case law, distinctiveness of a trade mark within the meaning of. What is trademarks distinctiveness what why it matters. A registrable trademark may consist of a combination of.
Trademark law and the criteria of distinctiveness the inhouse. A trademark is anything used to identify the source of a product or service, including a word, phrase, slogan, logo, color, smell, sound, shape, package design, or a combination of these. You cant formulas, but there are other ways you can protect them from the. A written chemical formula representing a substance that would produce the particular odour or. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services, then the mark is registrable on the principal register under 2f of the trademark act, 15 u. The ability of a mark to distinguish in commerce the goods and services of one party form those of another.