TRADEMARK

 Definition of Trademark :
The modern definition of trademark is that “it is
a word, name, symbol, or device or a
combination thereof, used by a person
[including a business entity], or which a person
has a bonafide intention to use, to identify and
distinguish his or her goods from those
manufactured by others and to indicate the
source of those goods.”
 PURPOSE AND FUNCTION OF TRADEMARK
PURPOSE : The main purpose of trademark is to show the
difference about the quality of goods and service .
Trademarks perform two critical functions in the
marketplace:
1. They provide assurance that goods are of a certain quality
and consistency.
2. They assist consumers in making decisions about the
purchase of goods.

For example : If a trademark such as NIKE could be counterfeited

(imitating) and used by another on inferior merchandise
(goods), there would be no incentive for the owners of the
NIKE mark to produce high-quality shoes and to expend
money establishing consumer recognition of the products
offered under the NIKE marks .
 The term trademark thus refers to some
physical and tangible good, in common usage
the term trademark is often used to refer to
marks for both goods and service. The key point
in this legal description is that a trademark is a
visual mark that may use any combination of
letters and imagery to aid a company in
differentiating itself from other entities.
 The purpose of a trademark is to visually
represent a person, company, or product, and
trademark should be designed to provide easy
and definite recognition.
ACQUISITION OF TRADEMARK RIGHTS
 A person using a mark may have valid and enforceable
rights in a mark even though the mark is not registered
with the PTO, such an owner will have priority even over
a subsequent user who has secured a federal registration
for a mark with the PTO.
 For example: Sales within a company or to personal
friends are insufficient to show use, while soliciting
[plead for something] and accepting order is usually
sufficient to show commercial use. Thus, a person
using a mark may have valid and enforceable rights
in a mark even though the mark is not registered with
the PTO. Such an owner will have priority even over a
subsequent user who has secured a federal
registration for a mark with the PTO.
 Establishing a date of first use is critical for a
trademark owner because priority of trademark rights
is measured form this date. If one party first used of
mark on September 15, 2015 and another first used a
similar mark on October 15, 2015, the prior, or senior,
user will be able to preclude the junior user from
using a confusingly similar mark.
 The general rule is that acquisition of trademark rights
stem from use, there is one exception to this rule: the
intent-to-use application.
 After an applicant had begun using the mark and then
filed an application, the PTO might refuse registration
of the mark on the basis it was confusingly similar to a
prior mark or was subject to some other defect.
 To remedy this situation, the Trademark Law
Revision Act of 1988 allowed persons to file
applications for marks based on a bonafide intent to
use the mark in commerce in the future.
 Once the mark proceeds to registration, priority is
measured from the date the intent-to-use-application
was filed, even though that filing date may precede
actual use in commerce by more than three years.
COMMON LAW RIGHTS, FEDERAL REGISTRATION UNDER
THE LANHAM ACT LAW AND TREATIES GOVERNING
TRADEMARKS, AND STATE TRADEMARK RIGHTS
 Common Law Rights :
Trademark rights arise from use of a mark. It is not
necessary to secure permission or registration from any
governmental entity to acquire trademark rights. A party
who is using a mark without any such governmental
registration is said to have a common law trademark, it
can be enforced in any geographical area in which the
mark is used.
 Federal Registration :
Although there is no requirement that a trademark
owner apply for a secure federal registration of mark
with the PTO, registration on the PTO’s Principal
Register does offer several advantages:
1. nationwide constructive use effective from the filing
date of the application (the public assumed to have
notice that the registrant has nationwide priority in
the use of its mark as of this date) .
2. the ability to bar importance of goods bearing
infringing trademarks .
3. a possible basis to claim priority to an Internet domain
name and prima facie (literally, “on its face”) evidence of
the validity of the registration, the registrant’s ownership
of the mark, and the registrant’s exclusive right to use the
mark in connection with the identified goods and services
 Lanham Act :
The federal statute governing trademark rights is the
Lanham Act (also called the United States Trademark
Act ). In addition to providing for federal trademark
protection, the Lanham Act also includes statutes
prohibiting unfair competition. The Lanham Act has been
amended numerous times.
 Trade-Related aspects of Intellectual Property
Rights (TRIPs) :
This is an international agreement administered by the
World Trade Organization (WTO) that sets down minimum
standards for many forms of intellectual property (IP)
regulation as applied to nationals of other WTO Members.
It was negotiated at the end of the Uruguay Round of the
General Agreement on Tariffs and Trade (GATT) in 1994.
CATEGORIES OF MARKS
1. Generic Mark :
Generic marks are devices which actually name a product
and are incapable of functioning as a trademark. The prime
examples of former trademarks that became the generic name
for a product are ASPIRIN, XEROX and CELLOPHANE.
2. Descriptive mark : merely describe the services or goods on
which the mark is used.
For Example: The following imaginary marks could be considered merely
descriptive for computer peripherals:
1. FAST BAUD for modems (describing the quickness of the modem);
2. 104 KEY for computer keyboards (describing the number of keys
on a keyboard);
3. LIGHT for portable computers (describing the computer's weight);
and
4. TUBELESS for computer monitors (even if misdescriptive for a
monitor that contains tubes.
 Suggestive mark : suggest a quality or
characteristic of the goods and services.
1. MICROSOFT (suggestive of software for microcomputers)
2.NETSCAPE (suggestive of software which allows traversing the
"landscape" of the Internet)
3. SILICON GRAPHICS (suggestive of graphic oriented
computers) .
 Arbitrary Marks :An arbitrary mark utilizes a device
having a common meaning that has no relation to
the goods or services being sold.
1. APPLE (for computers)
2.LOTUS (for software)
3.SUN (for computers)
4.CROWN (For Television)
Reviewing a Proposed Mark:
Once a mark is selected, it should be carefully scrutinized to ensure that it
will not be excluded from protection under the Lanham Act.

 Firstly they have check whether the mark contains scandalous

(giving offence to moral sensibilities and injurious to reputation)
 Whether consent from a living person will be required,
 Whether the mark is generic,
 Whether it is statutorily protected
 Whether the mark is descriptive of some feature of the goods
and services offered under the mark,
 It also see that the mark includes foreign terms
 Many law firms specializing in trademark work use a
questionnaire form or data sheet to gather basic information
from clients about their marks .
TRADEMARK REGISTRATION PROCESSES

PREPARING THE APPLICATION :

Once a mark has been selected and evaluated for use and registrability, an
application for federal registration of the /mark should be prepared and filed.
 An application is provided by PTO
 The name of the applicant
 The citizenship of the applicant
 The address of the applicant
 An identification of the goods and or services offered under the mark
 A drawing of the mark
 A verification or declaration signed by the applicant or agent or attorney
 The application is based on actual use of the mark or the owner’s intent to
use the mark.
 The process of moving an application through the PTO is called prosecution
[(law) the institution and conduct of legal proceedings against a defendant
for criminal behavior]
 The application must be in English.
 Electronically filed application are provided by the PTO
 Self application is also be prepared as the letter size (namely 8
½ inches by 11 inches) paper, typewriter, double-spaced, with
margins of at least 1 ½ inches at the left and top of the pages.
 The application should be written on only one side of the paper.
 The filing and prosecution of trademark application are governed
by the TMEP [Trademark Manual of Examination Procedure]
 The PTO introduced on electronic filing system in 1998.
 The Trademark Electronic Application System [TEAS].Permits
applicants to file numerous documents electronically.
 PTO considers the electronically filed document after
transmission.
The applicant
 The mark can be made only by the owner of the mark or, in the case of
intent –to-use application, by a person who has a bonafide to use the
mark in commerce.
 Application may be natural persons or business entities such as
corporation, partnership, association, unions or other organization.
 Government entities such as nations, states municipalities and other
governmental bodies.
 The applicant name must be in correct legal form
 A mark should be identified in the application by the name set forth in
its articles of incorporation.
 Clients often make mistakes in their corporate names or in the
punctuation
 The certificate of registration will issue in the name of the application
as set forth in the application
 If the application is a person or business that conducts business under
a fictitious [fake] business name, the application will be rejected.
 The applicant is a partnership For example: “Balboa Gardens
Partnership”, the application should be made by the
partnership itself and the state in which the partnership was
organized.
 A trademark or service mark application is usually filed in the name
of one party.
 The PTO has been reluctant [unwilling] to accept application by joint
applicants.
 A joint venture or a partnership cannot be joint applicants

Identification of Goods or Services :

The application must identify the goods and/or services
offered or to be offered under the mark that is the subject of
the application. Careful consideration must be given to
drafting this part of the application. Goods and services are
categorized by the PTO into forty-five separate classes, called
International Classes.
 If a mark is used for more than one class of goods or services, the
applicant may either file a combined application, listing all of the goods
and services.
 The PTO requires that the identification of goods or services be as clear,
accurate and concise as possible. Once the application filed, no other
item can be added in the process of registration, a separate application
should be applied.

REGISTRATION :
 A registration will issue about twelve weeks after publication in the official
gazette
 If no notice of opposition is filed to the application
 For an ITU [Intent-to-Use] application registration will occur after
publication in the official Gazette.
 The PTO will issue a certificate of registration for the mark
 The term of the registration is presently ten years from the date the
mark is registered [for registration issued before November 16, 1989,
the term is twenty years] “TM” for Trademark & SM for service mark.
 COPYRIGHTS
 “The legal protection given to published works forbidding anyone but
the author from publishing or selling them. An author can transfer the
copyright to another person or corporation, such as a publishing
company.”

 Copyright is a form of protection provided by U.S. Law to the

authors of “Original Works of Authorship” fixed in any
tangible medium of expression.
 The manner and medium of fixation are virtually unlimited.
 Creative expression may be captured in words, number, notes,
sounds, pictures or any other graphic or symbolic media.
 The subject matter of copyright is extremely broad, including
literary, dramatic, musical, artistic, audiovisual and architectural
works.
 Copyright protection is available for both published and
unpublished works.
 Common Law Right
 Originality of Material
 Fixation of Material
 Works of Authorship
 Exclusions from copyright protection
 The Rights afforded by copyright law
1. Rights of Reproduction
2. Rights to prepare Derivative works
3. Rights of distribution and the first sale
doctrine
4. Rights to perform the work publicly
COPYRIGHT OWNERSHIP ISSUES
 Issues about ownership arise when more than one person
creates a work.
 Ownership of a physical object is separate and distinct from
ownership of the copyright embodied in the material object.
 Unless copyright has been explicitly conveyed with those
physical articles, the original authors generally retain all other
rights associated with the works.

 1. Ownership Rights in Joint Works

 2. Ownership in Derivative or Collective Works
 3. Works Made for Hire
Copyright Registration
 A work is “created” when it is fixed in a copy or phono record for
the first time.
 Although not required to provide copyright protection for a work,
registration of copyright with the Copyright Office in expensive,
easy and provides several advantages, chiefly, that registration
is a condition precedent for bringing an infringement suit for
works of US origin.
 To register a work, the applicant must sent the following three
elements to the Copyright Office: a properly completed
application form, a filing fee, and a deposit of the work being
registered.
 Registration may be made at any time within the life of the
copyright.
THE APPLICATION FOR COPYRIGHT
REGISTRATION
The following persons are entitled to submit an application for
registration of copyright
 the author (either the person who actually created the work or,
if the work is one made for hire, the employer or commissioning
party)
 the copyright claimant (either the author or a person or
organization that has obtained ownership of all of the rights
under the copyright originally belonging to the author, such as a
transferee)
 the owner of exclusive right, such as the transferee of any of
the exclusive rights of copyright ownership (for example, one
who prepares a movie based on an earlier book may file an
application for the newly created derivative work, the movie);
and
 the duly authorized agent of the author, claimant, or owner of
exclusive rights (such as an attorney, trustee, or anyone
authorized to act on behalf of such parties)
Application Forms
 The Copyright Office provides forms for application for copyright
registration.
 Each form is one 8 ½ by 11” (inches) sheet, printed front and back.
 An applicant may use photocopies of forms
 The Copyright Office receives more than 6,00,000 applications each
year, each application must use a similar format to ease the burden of
examination.
 The type of form used is dictated by the type of work that is the subject of
copyright.
Following are the forms used for copyright application.
 Form TX (Literary works, essays, poetry, textbooks, reference works, catalogs,
advertising copy, compilations of information, and computer programs)
 Form PA (Pantomimes, choreographic works, operas, motion pictures and other
audiovisual works, musical compositions and songs.
 Form VA (Puzzles, greeting cards, jewelry designs, maps, original prints,
photographs, posters, sculptures, drawings, architectural plans and blueprints.
 Form SR (Sound recording)
 Form SE (periodicals, newspapers magazines, newsletter, annuals and Journals.
Etc.
Notice of copyright
 Since March 1, 1989 (the date of adherence by the United States to
the Berne Convention), use of a notice of copyright (usually the
symbol © together with the year of first publication and copyright
owner’s name) is no longer mandatory, although it is recommended
and offers some advantages.
 Works published before January 1, 1978, are governed by the 1909
copyright Act.
 Under that act, if a work was published under the copyright owner’s
authority without a proper notice of copyright, all copyright protection
for that work was permanently lost in the United States.
 With regard to works published between January 1, 1978, and March
1, 1989, omission of a notice was generally excused if the notice was
omitted from a smaller number of copies, registration was made within
five years of publication, and a reasonable effort was made to add the
notice after discovery of its omission.
 THANKYOU