Learn the Language

1. What is intellectual property?

“Intellectual property” (IP) refers to creations of the mind, such as patents (e.g., useful inventions), copyrights (e.g., literary and artistic works), trademarks (e.g., words, slogans, logos and other source signifiers used in commerce), trade dress and designs (e.g., product and packaging designs), and trade secrets (e.g., proprietary business information).

Just as real property receives certain legal protections, intellectual property also is protected by a variety of legal schemes, including statutes that codify patent, copyright, trademark, design, and trade secret laws. When thinking about intellectual property and IP protection, it is useful to remember that an idea in and of itself is not protectable. Instead, it is the expression or the embodiment of the idea that can protected as the exclusive property of a single owner.

2. What is a trademark?

A trademark serves as an identifier of source by distinguishing the goods or services of one person or company from those of others.

Traditionally, a trademark consists of words, designs or a combination of both. The words may be invented (e.g., EXXON, XEROX, KODAK) or they may be any words that do not describe the goods and services identified by the mark (e.g., APPLE for computers and other electronic devices). A mark may also be a series of letters (e.g., BMW, KPMG, LG), of numerals (e.g., 501 for jeans, 4711 for cologne), or a combination of both (e.g., O2, 3M, F1). A logo may be a geometric or abstract design (e.g., the Mercedes Benz three-pointed star in a circle or the Nike swoosh), a stylization of everyday objects or images (e.g., the stylized scallop shell of Shell Oil Company), or a word mark depicted in a stylized typeface (e.g., the COCA-COLA mark in a unique script).

A trademark may also be a proper name (e.g., GIORGIO ARMANI, HUGO BOSS, MARILYN MONROE), a slogan (e.g., GOT MILK?, THE MAGIC OF MACY’S, JUST DO IT., Vorsprung durch Technik), a symbol (e.g., McDonald’s golden arches), a product design  (e.g., the design of Apple’s iPod), a package design (e.g., the shape of the Coca-Cola bottle), an animated image (e.g., Microsoft’s “Windows” logo formed from colored squares), or a combination of these elements, that serves a source-identifying purpose.

In some jurisdictions, even a sound (e.g., NBC’s chimes and MGM’s roaring lion), a color (e.g., Tiffany’s robin egg blue for jewelry and Owens Corning’s pink for insulation), a smell (e.g., freshly cut grass for tennis balls or a flowery musk smell in Verizon stores), or a hologram (e.g., 1997 MasterCard Globe Hologram Design) can be a trademark. These are referred to as nontraditional marks. (See No. 7.)

Depending on the country, the term “trademark” may be written as “trade mark” or “trade-mark” and the mark may be designated with a ™ symbol.

3. What is a service mark?

A service mark is similar to a trademark, but it is used to identify services that are offered and provided in commerce, rather than goods, and to distinguish them from the services provided by others (e.g., SINGAPORE AIRLINES, DEUTSCHE BANK). Often, the terms “trademark” and “mark” are used interchangeably to refer to both trademarks and service marks. In such cases and in certain jurisdictions, a superscript TM or SM symbol may also be used to denote a service mark.

See also: Service Marks Fact Sheet

4. What is a copyright?

A copyright is a bundle of rights granted to creators of original works for a limited period of time (often the life of the creator of the work, plus a certain number of additional years). Traditional copyrightable subject matter includes artistic, dramatic, literary, or musical works presented or “fixed” in a tangible medium (e.g., paintings, photographs, sculptures, books, musical scores, sound recordings, and films). Computer software also can be protected under copyright, as can some elements of an online website including graphics and text. Typically, copyright protection begins automatically when a work is fixed in a tangible medium and registration is not required. Depending on the jurisdiction, however, registration may be helpful or necessary to sue for copyright infringement and may affect the remedies that are available.

5. What is a patent?

A patent is a set of exclusive rights granted to an inventor for a limited period of time (usually 20 years for a utility patent) in exchange for the public disclosure of an invention. Depending on the jurisdiction, the patented invention must (i) be new or novel, (ii) be non-obvious or involve an inventive step, and (iii) be useful or capable of industrial application. In addition, the invention must constitute “patentable subject matter” (e.g., processes, machines, articles of manufacture, or chemical compounds). Protection is not automatic, as with a copyright.  Instead, a registration is required to receive patent protection for an invention.

Because patented works are considered useful to society, patent terms are considerably shorter than copyright terms so that the public will have access to inventions more quickly.

In addition to the types of patents discussed above (i.e., a “utility patent”), certain jurisdictions also offer separate protection for an article’s unique external appearance or design (i.e., a “design patent”), which may also have a different term. For example, in the United States the term for a newly filed design patent is 15 years from the grant date.

6. What is a trade secret?

A trade secret generally consists of confidential, proprietary business or commercial information that is used in business and gives the owner a competitive edge in the marketplace. Trade secrets may include confidential manufacturing and industrial process information, pricing and sales information, customer and distributor lists, and product formulas or recipes.

Some examples of well-known trade secrets are the proprietary formulas for the Coke soft drink and for the spice blend used in Kentucky Fried Chicken. Generally, trade secret protection is not based on a registration but arises automatically and remains in effect so long as the information remains confidential.

7. What is a nontraditional mark?

Elements other than words, graphic designs or logos sometimes can serve to identify the source of goods or services and therefore perform the function of a trademark. These elements include sound, scent, taste, touch, shape, and motion and are called nontraditional marks. (See also No. 8.)

The level of protection afforded to nontraditional marks varies among jurisdictions. What is considered a protectable nontraditional mark in one jurisdiction may not be granted any protection in another.

See also: Nontraditional Trademarks Fact Sheet

8. What is a three-dimensional mark?

If the three-dimensional shape of a product or the product’s packaging serves as a source identifier for the product, that shape may be protectable as a three-dimensional trademark. Three-dimensional marks (also known as “trade dress”) are one form of nontraditional trademark.

9. What is the Madrid System?

The Madrid System is an international trademark filing system that provides a means to seek registered protection for a trademark simultaneously in more than 100 countries around the world. The system is governed by two separate international treaties, the Madrid Agreement and the Madrid Protocol, and both are administered by the International Bureau of the World International Property Organization (WIPO) based in Geneva, Switzerland.

Under the Agreement, nationals of any member country may seek protection of a trademark that is registered in their country of origin, in all other countries and jurisdictions that are parties to the Agreement.

Under the Protocol, nationals of any member country may seek protection of a trademark in countries and jurisdictions that are contracting parties to the Protocol based on a pending application or registration in the applicant’s country or jurisdiction of origin.

See also: Madrid Protocol Fact Sheet

10. What is a European Union Trade Mark?

The European Union Trade Mark (EUTM) system offers trademark owners a unified system of protection throughout the European Union (EU) with the filing of a single application. If successful, this one application results in an EUTM registration that is recognized in all member states of the EU. As new member states are added to the EU, the coverage of an existing EUTM automatically expands, without any action or payment required of the EUTM owner. The protection of an extended EUTM in a new member state, however, dates from the admission date of the member state rather than the filing date of the EUTM. The initial registration period is ten years from the filing date of the EUTM application.

The registering authority is the European Union Intellectual Property Office (EUIPO) based in Alicante, Spain. An EUTM registration may be beneficial not only because the streamlined filing procedure saves time and money, but also because genuine use in one member state may be sufficient to protect an EUTM from cancellation on the ground of non-use in all member states. On the other hand, there is the risk that if a ground for rejection applies in just one of the member states, the mark cannot be registered as an EUTM. In this case, it may be possible to convert the EUTM application to applications for national trademark registrations in the EU countries where there is no obstacle to registration.

See also: European Union Trade Mark Fact Sheet

11. What is a Community Design?

A Community Design is a design that is protected in each of the member states of the EU, and the registering authority is the EUIPO. (See No. 10.) The Community Design Regulation creates protection for both Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs). RCD protection can last from the initial five-year period up to a maximum of 25 years and gives the holder the exclusive right to use the design and to prevent any third party from using it without consent. UCD protection is automatic and lasts for a maximum single period of three years from the date of disclosure.

See also: Community Design Fact Sheet

12. What is an industrial design?

An industrial design is the protectable aesthetic, nonfunctional aspect of a product, such as its color, shape, ornamentation, texture, materials, packaging, or a combination of these elements. Many jurisdictions have intellectual property laws that protect industrial designs. (See No. 11.)

13. What is a utility model?

Like a patent, a utility model protects an invention, but utility model laws typically provide shorter protection terms and have less-stringent requirements for obtaining protection.

Unlike industrial design laws which focus on a product’s aesthetic features, utility model laws focus on a product’s practical or useful features.

14. What is a certification mark?

A certification mark is a form of trademark that is used to certify that the material, mode of manufacture, quality, accuracy, region or other characteristics of goods or services sold under the mark meet the particular standards set by the mark owner. The owner does not use the certification mark itself, but instead allows others to use it on or in connection with their goods or services if they meet the defined set of standards. Examples of certification marks are the GOOD HOUSEKEEPING SEAL OF APPROVAL and UNDERWRITERS LABORATORIES (UL) Certification Mark for product safety.

Certification marks may also be used to indicate that the work to produce the goods or services was performed by members of a union or another approved organization, such as the CERTIFIED ASTHMA & ALLERGY FRIENDLY and the International FAIRTRADE Certification Marks, which guarantee that production of goods adheres to specific standards.

See also Certification Marks Fact Sheet

15. What is a collective mark?

A collective mark is a form of trademark that is owned by a cooperative, an association, or any other collective group whose members use the mark to indicate membership in the group and to identify their goods and services and distinguish them from goods and services of non-members. An example of a collective mark in the United States is REALTOR, which identifies members of the National Association of Realtors.

16. What is a geographical indication?

A geographical indication (GI) is a word or symbol that indicates the geographical origin of a product and/or the specific product features attributable to its geographical origin. For example, BORDEAUX is a geographical indication for wine originating from the region of Bordeaux in the south of France.

Each country approaches the protection of GIs differently. In some jurisdictions, a GI must be registered to be protected, whereas in others nothing formal is required. To ensure protection of their GIs, many countries have entered into bilateral, multilateral, and international agreements. Generally, once GI protection exists, all bona fide producers of a covered product may use the geographical indication in relation to any covered product that meets the applicable standards.

See also Geographical Indications Fact Sheet

17. What is a trade name?

A trade name is a commercial name used by a company in its business activities. A company’s trade name may also be its corporate name and, depending on the context in which it is used, may function as a trademark or service mark and be registered as such. An officially approved trade name or corporate name typically can be used on legal documents, but it cannot be used in ordinary trade if it infringes another’s trade name, trademark, or service mark.

18. What is trademark infringement?

In legal terms, an infringement refers to a violation of a law or a right. Trademark infringement is the violation of or damage to another party’s trademark rights arising from unauthorized use of their mark or a mark that is confusingly similar. The basic test for trademark infringement is whether the use of a mark by one party creates a likelihood of confusion among consumers in the relevant marketplace in relation to the same or a similar mark belonging to another party. A trademark does not have to be identical to infringe another trademark.

While the legal definition of infringement varies somewhat between jurisdictions, the most common standards for determining infringement are: (a) close similarity of a mark and its associated goods or services to a prior mark and its associated goods or services; or (b) use of a mark that creates a likelihood of confusion with a prior mark among the relevant consumers. Trademark law in some jurisdictions incorporates both concepts.

See also Trademark Infringement Fact Sheet

19. What is likelihood of confusion?

The phrases “likelihood of confusion” and “confusingly similar” refer to the legal standard required to prove infringement of a trademark in many jurisdictions. Determining whether there is a likelihood of confusion between two marks involves the consideration of multiple factors, but in general, it exists if relevant consumers are likely to be confused or mistaken about the source of products or services as a result of encountering a confusingly similar mark in commerce.

20. What are famous marks and well-known marks?

If a mark is legally determined to be famous or well known, it may be entitled to a broader scope of protection than it otherwise would be and so infringement may be easier to establish. Also, in many jurisdictions famous marks are protected against use for even unrelated goods and services.

Although some jurisdictions treat famous marks and well-known marks as synonymous, most jurisdictions distinguish between them. In these jurisdictions, famous marks enjoy a higher degree of reputation than well-known marks. A well-known mark often will be protected only for the goods and services with which it is already associated, whereas a famous mark may be protected from unauthorized use in connection with noncompeting or unrelated goods and services. Typically, a famous mark must be registered in its home country to be protected, whereas a well-known mark usually is protected without the need for registration.

See also Famous and Well-Known Marks Fact Sheet

21. What is trademark dilution?

While the law differs between jurisdictions, in general trademark dilution involves the unauthorized use of a famous mark for unrelated goods or services that nevertheless causes consumers to associate the unauthorized use with the famous mark and its owner. As a result, the ability of the famous mark to identify a single source as the origin of products or services is diminished or “diluted.”

There are two kinds of trademark dilution: blurring (where use of the new mark weakens the connection in consumer’s minds between the famous mark and the relevant products or services) and tarnishment (where the new mark is derogatory or unwholesome or the new mark is used for low-quality or otherwise inferior products or services).

Additional Resources

Geographical Indications, Certification Marks, and Collective Marks: An International Guide

A searchable guide of basic, practical information on protection for geographical indications, certification marks, and collective marks in numerous jurisdictions worldwide.

European Union Trade Mark and Madrid Protocol Comparison Fact Sheet

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