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Contents

Trademark

Chapter:
Ethical and Legal Considerations
Author(s):

Annette Flanagin

Trademark

Trademark and unfair-competition laws are designed to prevent a competitor from selling goods or services under the auspices of another. Trademark law, not copyright law, protects trademarks, service marks, and trade names.65 Trademarks are legally registered words, names, symbols, sounds, or colors or any combination of these items that are used to identify and distinguish goods from those goods manufactured and sold by others and to indicate the source or origin of the goods (eg, brand names).65 Examples of commonly recognized trademarks include Time magazine, NBC, and Coca-Cola. A service mark is the same as a trademark except that it is used to distinguish services, not goods, of a specific provider.65 Examples of service marks include McDonald’s (restaurant services), AT&T (telecommunications services), and Amazon.com (Internet services). The terms trademark and mark are often used to refer to both trademarks and service marks.65 Trade names are the names given by manufacturers or businesses to specific products or services. For example, Procardia is the trade name (or proprietary name) for the drug nifedipine (see also 15.4.3, Nomenclature, Drugs, Proprietary Names). Trade names are not legally protected in the same manner as are trademarks. Trademark law provides legal protection for titles, logos, fictional characters, pseudonyms, and unique groupings of words, symbols, or graphics.38,50,65 Whereas copyright law protects an authored work, trademark law protects the words and symbols used in the marketing of that work.

Trademarks are classified into 5 categories in order of their increasing distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful.38 Suggestive, arbitrary, and fanciful marks are more likely to receive trademark protection than are generic or descriptive marks.38 An example of an arbitrary mark (a common word that has no specific connection to its product) is the Nova television series; an example of a fanciful mark (created solely for use as a trademark) is Kodak.38 To receive trademark status, a mark must be distinctive (ie, not similar to other marks) and not generic or merely descriptive of a category of products. For example, trademark status was not awarded to World Book or Farmers Almanac because both were considered “merely descriptive of the contents of each publication,”50 and Software News magazine was not considered protectable because it referred to a class of products of which the magazine is a member (ie, it was generic).38 For additional information, contact the USPTO (contact information available in 5.6.15, Patents).

Titles.

Book titles are rarely protected under trademark law because of judicial reluctance to protect titles that are used only once.38(§25.03) A few exceptions to this norm have occurred with book titles that have engendered common secondary meanings, ie, become widely recognized and associated with the name of the author or publisher (eg, Gone With the Wind).50 The title of a series of creative works (eg, book series, journals, magazines, newspapers, television series, or software) may more easily receive trademark protection than can the title of a single creative work.38(§25.03),50 Thus, JAMA is a trademarked title. However, in the biomedical sciences it is often difficult to trademark journal titles that are generic and may not be distingishable from the science or field the journal serves, such as the Archives of Neurology or Neurology.

Logos.

Logos, designs, or symbols may also receive trademark protection if they distinguish particular goods or services and identify the source of those goods and services.38(§25.05) Examples of such logos include the Bantam publishing house rooster and Apple computer’s apple. A background design, apart from the words imposed on it, can be protected by trademark if it is of a distinctive quality and functions to identify the source of a good.38(§25.05)

Fictional Characters and Pseudonyms.

Fictional characters may be protected by trademark if they achieve secondary meaning and are widely recognized (eg, Mickey Mouse). Similarly, a pseudonym can be given trademark status.38

Trade Dress.

Trade dress is the visual or physical appearance of a product or its packaging, which, if distinct from that of other similar products, may be protected under trademark law (eg, the Coca Cola bottle or the label on Campbell’s soup). Trade dress includes graphic elements and design, typography, shape, and color. For example, the designs, including the borders, of the covers of the National Geographic and Time magazine have been awarded trademark status.38(§25.07),50

Application and Registration for Trademark Protection.

In the United States, application for a trademark registration can be made under both federal and state laws. A legal expert should be consulted for information about registering trademarks in other countries. However, registering a trademark is not sufficient; actual use of the trademark in a given market ensures protection (ie, the longer the actual use of the trademark, the stronger the legal protection).38,50 Typically, the rights to a trademark belong to the first user in a specific geographic market.

Trademark protection is also governed by the national laws of individual countries and international treaties, such as the TRIPS agreement. In the United States, an application to register a trademark must be filed with the USPTO.65 Applying for trademark protection is more complicated than applying for copyright protection. The USPTO requires a formal application to be submitted (preferably electronically), along with a drawing of the mark, samples of the mark as it has been used, and a filing fee.65 The USPTO conducts a formal review of the application, which may take several months. The office may deny the request for registration if the mark is judged to be generic, merely descriptive, or similar to another registered mark (or a mark for which another application is under review). Registration may also be denied if the mark is not used or intended for use in interstate or international commerce. If the application is approved internally by the USPTO, a notice is published in the Official Gazette to make the application publicly known. During the 30 days following the Official Gazette notice, any third party can file a formal opposition to the application.65

If the application is approved, the USPTO will issue a certificate of registration if the mark is in use. If the mark is not yet in use, the applicant is required to file a statement describing the mark’s intended use and has 6 months to use the mark in commerce and submit a statement of such use or request a 6-month extension to file a statement of use.65

Trademark Symbols.

Once registered, the mark is entitled to carry the trademark symbol ®. Only those marks that are officially registered by the USPTO can use the official symbol ®. Marks that are under review may use the symbol TM or SM, but these do not have legal significance.65

Duration of Trademark Protection.

A US trademark registration extends for 10 years and may be extended indefinitely provided the owner continues to use the mark on or in connection with the applicable goods and/or services and files all required documentation with the USPTO at the appropriate times. For example, between the fifth and sixth years of the initial term and in the ninth year of every 10-year period thereafter, additional forms must be filed with the USPTO to ensure legal protection.65

Loss of Trademark Rights and Antidilution Law.

A mark can lose its legal protection if the owner discontinues using it (termed trademark abandonment), if the owner does not file a statement that the trademark is still in use between the fifth and sixth years of the initial term, or if the owner does not renew the registration by the end of each 10-year registration period.65 Trademark protection may also be forfeited if a mark becomes too generic or no longer identifies goods or services with a particular source (ie, the mark becomes “diluted”). In legal terms, trademark dilution is “the lessening of the capacity of a famous mark to identify and distinguish goods and services.”38(§25.02),66 For example, Webster's is no longer a registered trademark because the name lost its ability to identify a specific publisher of dictionaries, and “Zipper” used to be a trademark for “slide fastener.”

A mark used in multiple contexts by different product owners or service providers may diminish the ability of a given mark to serve as unique identifier of that product or service.38(§25.02) Such dilution of unique trademark status is known as blurring. A trademark may also be diluted by tarnishment, when a well-known trademark is improperly associated with an inferior or offensive product or service.38(§25.02) The following factors may be considered in judging such dilution of unique trademark status of one mark by another38(§25.02):

  • Similarity of marks

  • Similarity of the products covered by the marks

  • Sophistication of consumers

  • Predatory intent

  • Renown of the senior mark

  • Renown of the junior mark

For this reason, owners of trademarks will often send letters to editors and publishers objecting to misuse of their trademarks in publication. Such demands are intended to keep trademarks from being diluted by common use. For example, authors and editors should not use trademark names as generic verbs, nouns, or modifiers (eg, use “photocopied” rather than “xeroxed”).

Use of Trademarked Names in Publication.

Under the US Federal Trademark Dilution Act,66 restricted use of trademark names applies mainly to commercial use of trademarks, not to editorial use in publication. For example, a photography magazine may not use the word “Kodak®” as part of its cover design and a computer manufacturer may not place the word “Kodak®” on the front of a computer. However, an author or editor may include the word “Kodak”—without the trademark symbol—in an article about cameras and film development without risking trademark infringement.

The symbol ®, or letters TM or SM, should not be used in scientific journal articles or references, but the initial letter of a trademarked word should be capitalized.

On occasion, a trademark owner will request that its trademark or trade name appear in all capital letters or a combination of capital and lowercase letters often with the trademark symbol. Authors and editors are not required by law to follow such requests. It is preferable to use an initial capital letter followed by all lowercase letters (eg, Xerox, Kodak) unless the trademark name is an abbreviation (eg, IBM, JAMA) or uses an intercapped construction (eg, PubMed, iTunes) (see also 10.8, Capitalization, “Intercapped” Compounds; 14.0, Abbreviations; and 15.4.3, Nomenclature, Drugs, Proprietary Names). Online databases, if trademarked, can be listed in all capital letters (eg, MEDLINE, EMBASE, CINAHL).

International Trademark Protection.

Like copyright law, there is no international trademark law, and trademark protections are offered by different jurisdictions in different countries. However, WIPO (www.wipo.org) administers the Madrid System for the International Registration of Marks, which offers a route to trademark protection in multiple countries by filing a single application. Information is also available from the International Trademark Association (www.inta.org).

Trademark Protection Online.

A new use of trademark has emerged in the context of the Internet. Domain names are Internet addresses that point to a specific website, usually a home page. They are usually easily remembered names that are linked to numeric Internet protocol addresses, such as uspto.gov or harvard.edu.38(§25.09) Domain names include top-level domain (TLD) names (eg, “.com,” “.org,” “.edu”) and second-level names (eg, “jama” in jama.com or “nih” in nih.gov). A domain name is not automatically entitled to protection once registered; like other trademarks, it must be used in connection with the website located at that address.42

Since 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) has been responsible for managing the domain name system.67 Domain names can be registered by many different companies (known as “registrars”) that are authorized by ICANN. Domain name registrars have different terms for renewal of domain name registration, ranging from 1- to 10-year increments.67 At this writing, ICANN registrars manage the following TLD names: .aero, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel, and .travel. ICANN does not accredit registrars for TLDs that are restricted to specific entities and purposes, such as “.edu” for educational institutions, “.gov” for US government agencies, and “.mil” for US military sites. Country code TLDs may be obtained from host country agencies in accordance with rules determined by the Internet Assigned Numbers Authority (IANA).42

Disputes over ownership and rights to use domain names are considered under the principles of trademark infringement and dilution, with some specific additions to address cybersquatting and typosquatting.38(§25.09),42 Cybersquatting is “the act of obtaining a trademark associated domain name with the aim of selling it to the trademark owner or otherwise benefiting from the association with the mark.”38(§25.09) Typosquatting is “the registration of a domain name that is similar to another’s for the purpose of capitalizing on typos that may lead the user to the squatter’s website rather than the site the user intends to locate.”38(§25.09) In 1999, the Anticybersquatting Consumer Protection Act was enacted to address these problems of misuse of domain names.42

To make a successful claim against use of a specific domain name, the following must be demonstrated38(§25.09):

  • the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights,

  • the registrant has no rights or legitimate interests in respect to the domain name, and

  • the domain name has been registered and is being used in bad faith.

For more information on applying for and managing domain names and remedies for misuse of domain names, consult ICANN or WIPO (contact information for WIPO is available in 5.6.14, Copyright Resources).

  • Internet Corporation for Assigned Names and Numbers (ICANN)

  • www.icann.org

  • 4676 Admiralty Way, Suite 330

  • Marina del Rey, CA 90292–6601

  • Telephone: (310) 823–9358

  • Fax: (310) 823–8649

or

  • 6 Rond Point Schuman

  • Bt 5

  • Brussels B-1040, Belgium

  • Telephone: 32 2 234 7872

  • Fax: 32 2 234 7848

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