TRADEMARKS
Introduction and
International Regime
Victor H. Bouganim
WCL, American University
What is a Trademark?
 A sign
able to
distinguish the goods
or services of one
company from those
of another.
 The sign has to be
presented as a mark.
 A property right.
 A monopoly.
Functions
 Indication
of origin.
of quality.
 Identification,
communication,
advertising:
 Indication
Association
Victor H. Bouganim, WCL, American University, Spring 2001
Trademarks - Some Examples
Victor H. Bouganim, WCL, American University, Spring 2001
International TM Regime
 Registration
– Most countries offer Trademark protection, normally by
way of registration.
 Trademarks
rights are territorial.
– Therefore, international trademark protection requires
separate registrations in every target-country.
 Common
Law Trademarks
– Trademark rights based on use of marks on goods in
commerce are recognized at common law
Victor H. Bouganim, WCL, American University, Spring 2001
International TM Conventions
 TRIPS, Art.
15-21.
 The Paris Convention
 The Madrid Agreement for International
Registration of Marks, 1891
 Trademarks Law Treaty, Geneva 1994.
 The 1957 Arrangement of Nice Concerning
the International Classification of Goods
and Services
Victor H. Bouganim, WCL, American University, Spring 2001
TRIPS - TM Regime

An attempt to narrow the gaps in the way these rights are
protected around the world, and to bring them under
common international rules.
– Incorporate by reference the provisions of the Paris
Convention.
In
particular: Protection of well-known marks, according to
Art. 6Bis.
– Articles 15-21.
Members
are required to provide registration of distinctive
visual marks.
Sound and fragrance marks are optional.
– Art. 22-24 - Geographical Indications.
Victor H. Bouganim, WCL, American University, Spring 2001
Paris Convention - TM
 Established
1883, last amended 1979.
 160 states are signatories, including U.S.
 Effort to harmonize some trademark rules.
 National treatment.
 Right of priority of 6 months.
 Article 6bis
–
–
Gives owners of “well known” trademarks the right to
block or cancel the unauthorized registration of their
marks
Is the mark well known locally or internationally
is a frequent issue
Victor H. Bouganim, WCL, American University, Spring 2001
Madrid Agreement and Protocol
 1891,
the Protocol entered into force in 1995.
 Create a system for international registration of
marks, which is administered by the WIPO.
 About 60 countries are parties, but not the U.S.
 This system permits a trademark owner to have
marks protected in several countries by simply
filing one application with a single office, in
one language, with one set of fees.
 Community TM is available in the EU.
Victor H. Bouganim, WCL, American University, Spring 2001
Trademark Law Treaty
 Geneva,
1994.
 26 participating countries (as of Jan. 2001),
including the U.S.
 Indicates the direction of international
trademark regulation and protection.
 Alternative to the Madrid System on
international registration of trademarks.
Victor H. Bouganim, WCL, American University, Spring 2001
TM - The Nice Agreement
 1957,
last amended in 1979.
 65 participating countries, including U.S.
 Addresses the question of registration by
“class” or “classification” of goods.
 Article 1 adopts a single classification
system for goods and services.
Victor H. Bouganim, WCL, American University, Spring 2001
Class Discussion
 How
can international conventions assist in
the protection of international trademarks?
 What is the role of TRIPS in international
trademark protection?
 Is trademark registration a guarantee against
trademark piracy?
 Can a trademark be valid in one country and
generic in another?
Victor H. Bouganim, WCL, American University, Spring 2001
U.S. Trademark Law
Trademarks are protected by:
 Common law
 State registrations
 Federal registrations - The Lanham Act
–
–
–
Permitted for all marks capable of distinguishing goods and
services.
Mark becomes valid for a term of 10 years following registration.
Registration can be renewed indefinitely.
Use Requirement: Marks must be used on goods
 “bona fide intent”: registration within 12 months before use
 “good cause”: registration within 36 months before use
 No use or over-use may result in losing the TM.
Victor H. Bouganim, WCL, American University, Spring 2001
Trademarks - History
TMs date back as much as
4000 years.
 Purposes of early marks:

– exposure of producer’s
name to potential
customers
– proof of sale by a
particular merchant to
resolve disputes
– guarantee of quality

Same purposes evident in
modern statutes.
Until 1870, TMs were
protected at common law in
the U.S.
 1870 - First Federal TM
statute struck down as
unconstitutional.
 1881 - Congress reenacted
TM legislation under the
Commerce Clause.
 TM Act of 1905
 Lanham Act of 1946

Victor H. Bouganim, WCL, American University, Spring 2001
U.S. Statutory Overview



Early TM infringement was limited to
the use of an identical name or mark in
the sale of identical goods, where the
intention was to deceive consumers.
The Act of 1905 eliminated the
requirements of identicality and
intention to deceive, substituting the test
of likelihood of confusion.
The Lanham Act further liberalized TM
law:
– advantages to registration
– prohibition against unfair competition
– protection to unregistered marks
Victor H. Bouganim, WCL, American University, Spring 2001
TM v. Copyright & Patent
Trademark
Copyright & Patent
Does not depend on
novelty, invention,
discovery.
 Awarded to those who
were the first to use a
distinctive mark in
commerce.
 No explicit policy to
encourage TMs.


Designed to protect
and reward creations
which are new or
creative.
– E.g., an invention; a
new expression.

Encourage and
promote creativity and
the progress of arts
and technology.
Victor H. Bouganim, WCL, American University, Spring 2001
TM Protection
Purposes
Costs
Prevents consumers from
buying the wrong product
 Saves consumer time and
cost of researching brands
 Encourages TM owner to
offer quality product
 Prevents unjust
enrichment of potential
infringer


May inhibit free
competition
 TMs may deceive
consumers
 Monopoly of language
 Some producers may be
“warehousing” words or
combinations of words
Victor H. Bouganim, WCL, American University, Spring 2001
What Can Be Protected as a TM?
 Names
 Symbols
 Logos
 Company
Names
 Slogans or Phrases
 Trade Dress
 Color
 Fragrance
 Sounds
Victor H. Bouganim, WCL, American University, Spring 2001
Trademark - Definition
The term “trademark” includes any word, name,
symbol, or device, or any combination thereof-(1) used by a person, or
(2) which a person has a bona fide intention to use in
commerce and applies to register on the principal
register established by this Act, to identify and
distinguish his or her goods, including a unique product,
from those manufactured or sold by others and to
indicate the source of the goods, even if that
source is unknown. Lanham Act Sec. 45
Victor H. Bouganim, WCL, American University, Spring 2001
Service Mark
The term “service mark” means any word, name,
symbol, or device, or any combination thereof-(1) used by a person, or
(2) which a person has a bona fide intention to use in
commerce and applies to register on the principal register
established by this Act, to identify and distinguish the
services of one person, including a unique service, even if
that source is unknown. Titles, character names, and other
distinctive features of radio and television programs may be
registered as service marks notwithstanding that they, or the
programs, may advertise the goods of the sponsor.
Lanham Act Sec. 45
Victor H. Bouganim, WCL, American University, Spring 2001
Certification Mark
The term “certification mark” means any word, name,
symbol, or device, or any combination thereof-(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a
person other than the owner to use in commerce and files an
application to register on the principal register established
by this chapter, to certify regional or other origin, material,
mode of manufacture, quality, accuracy, or other
characteristics of such person’s goods or services or the
work or labor on the goods or services was performed
by members of a union or other organization.
Lanham Act Sec. 45
Victor H. Bouganim, WCL, American University, Spring 2001
Collective Mark
The term “collective mark” means a trademark or
service mark-(1) used by the members of a cooperative, an association,
or other collective group or organization, or
(2) which such cooperative, association, or other
collective group or organization has a bona fide intention
to use in commerce and applies to register on the
principal register established by this chapter, and
includes marks indicating membership in a union,
an association, or other organization.
Lanham Act Sec. 45
Victor H. Bouganim, WCL, American University, Spring 2001
Certification Mark v. Collective Mark
Certification Mark

Generally used by trade
associations or other
commercial groups to identify
a particular type of goods.
– e.g. “UV” - Ultra-Violet
protection for sunglasses; “Intel
Inside”.


Serve to certify conformity
with centralized standards.
Meant to bear the “seal of
approval” of a central
organization.
Collective Mark
 Use only by members of an
organization to identify
goods or services and
distinguish them from those
of nonmembers.
 The collective itself does not
sell goods or perform
services.
 Sole purpose is to
indicate membership.
Victor H. Bouganim, WCL, American University, Spring 2001
Trade Names
 Rather
than goods or services, trade names identify
the company itself.
 Trade names cannot be registered under the Lanham
Act unless they actually function to identify the
source of particular goods or services, rather than
merely identifying a company.
 Trade names are generally registrable in state
offices, and state and federal common law may
provide protection against confusingly similar
company names.
Victor H. Bouganim, WCL, American University, Spring 2001
Slogans
 Slogans
may serve as trademarks.
 Complies
with traditional trademark logic
that a combination of words capable of
distinguishing goods or services is
registrable.
 A slogan’s
descriptive feature does not
automatically disqualify it from
registration.
Victor H. Bouganim, WCL, American University, Spring 2001
Color, Fragrance, and Sounds
 Color:
color can be protected by a
trademark if it is linked in the public’s mind
to the source of a particular product.
 Fragrance: fragrance can receive
trademark protection if it is distinctive, and
not merely functional.
 Sounds: sounds are not per se
unregistrable; may receive protection if
distinctive or arbitrary.
Victor H. Bouganim, WCL, American University, Spring 2001
Qualitex Co. v. Jacobson Products Co.
U.S. Supreme Court (1995)





Qualitex produced and sold green-gold dry-cleaning press pads.
Jacobson copied the color for their own dry-cleaning press
pads, claiming that color was not entitled to trademark
protection.
Issue: whether the Lanham Act permits the registration of a
trademark that consists solely of a color.
The Court found that a color by itself may meet ordinary legal
trademark requirements.
It is the source-distinguishing ability of a mark--not its status as
a color, shape, fragrance, word, or sign--that permits
the mark to meet these requirements.
Victor H. Bouganim, WCL, American University, Spring 2001
Trade Dress
 The
design and
packaging of materials,
or the design and shape
of a product itself.
 The Lanham Act
protects trade dress.
 Must serve the same
source-identifying
function as trademarks.
Victor H. Bouganim, WCL, American University, Spring 2001