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About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

CHAPTER NO. 4.3   Trademark Primer
Editor's Summary, Implications and Best Practices

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapter 4.3). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.

Editor's Summary

Trademarks can be an integral component of an IP management strategy and complement other forms of statutory IP protection (patents, trade secrets, and copyrights). In order to understand where trademarks can fit into “the big picture” of best practices in IP management, it is first necessary to understand what trademarks are and how they can be used.

Trademarks are a distinct legal form of intellectual property. Patents protect inventions and copyrights protect various types of literary and artistic works. In contrast, trademarks protect words and symbols. A trademark is a symbol, feature, or design that consumers associate with a particular product or service; the Coca-Cola® logo is an example of a very successful trademark. In the U.S., trademarks are governed by both state and federal law, while patents and copyrights are governed solely by federal law.

A trademark is a form of intellectual property that:

  1. Identifies a company’s or person’s goods, products, or services;
  2. Distinguishes those goods, products, or services from the goods, products, or services manufactured or sold by other persons or companies; and
  3. Indicates the source of the goods, products, or services.

Broadly speaking, a trademark can take the form of a word, phrase, number, symbol, logo, design, or a combination thereof. Trademarks can even be sounds, smells, or colors, as long as they are distinctive enough that the consumer can associate them with certain products or services. This association is known as distinctiveness.

Trademarks are organized into categories, depending on what they symbolize:

  • Trademarks, narrowly defined, identify and distinguish goods and products, rather than services. Examples include Nike’s “Swoosh” symbol, the word Tide® (laundry detergent) or IBM® (computer).
  • Service marks are used in the sale or advertising of services, rather than goods or products. Examples include McDonald’s® (fast food) and Microsoft® (commercial software).
  • Trade names are names of businesses. They are not normally registered unless they are also used as trademarks or service marks in conjunction with that particular business. McDonald’s® is a service mark known worldwide; McDonald’s Corporation is the associated trade name.
  • Trade dress refers to a product’s overall appearance or “image,” including its packaging, dressing, or design (for example, the décor of a franchised restaurant such as Taco Cabana Mexican).
  • Domain names identify internet addresses. Domain names can also become service marks, as in the case of the domain name “Amazon.com,” which inspired the service mark Amazon®.
  • Certification marks certify that products or services meet a certain level of quality. An example is the Vidalia® onion, whose mark indicates that it is sweet-tasting.
  • Collective marks identify the goods produced by a certain organization. An example is the International Ladies’ Garment Union mark, ILGU®.

The more distinctive the trademark, the greater the protection it confers. There are four general categories of trademarks:

  1. Fanciful marks are the strongest trademarks. They have no meaning in any language and only have associations with the products or services that they symbolize. Notable examples include Exxon® and Xerox®.
  2. Arbitrary marks have independent meanings, but no strong connection with the products they signify. Examples are Apple® computers and Shell® petroleum.
  3. Suggestive marks allude to the qualities of a product or service. Examples include 7-Eleven® retail stores and Coppertone® tanning products.
  4. Descriptive marks describe the product or service that they symbolize. This is the weakest type of trademark; in order to become protected as trademarks, they must acquire distinctiveness in the minds of consumers. Examples of descriptive marks are Chap-Stick® lip treatment balm and Raisin-Bran® cereal.

Generic descriptors—such as “blended whiskey,” “computer software,” or “mealy potatoes”—are not protectable as trademarks. Furthermore, it is important to remember that any poorly protected trademark can fall victim to “genericide” or “genericization.” Such trademarks as “aspirin,” “thermos,” and “kerosene” were eventually transformed, thanks to misuse and neglect, into common nouns with their own dictionary entries. Owners are required to protect the integrity of their marks, enforce their proper use, and vigilantly guard against any infringing activities.

Institutions should make it a priority to integrate trademarks into their IP management strategies. Trademarks can complement other forms of IP protection. Furthermore, they can serve to strengthen, and lengthen, the period of the owner’s proprietary rights to a product, especially in the case of pharmaceuticals: for example, the active ingredient of Claritin® has gone off-patent, but the trademark still continues to bring value to its owner.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

  • In order to establish the integrity and stability of commerce, particularly international commerce, governments should protect and respect the sovereignty of trademarks (both domestic and foreign).
  • Trademarks are directly tied to consumers, perhaps more so than any other form of IP protection because consumers rely on trademarks to help them make purchasing decisions. Hence, it is important to establish and maintain strong trademark rights protection.

For Senior Management (university president, R&D manager, etc)

  • Trademarks should be an integral component of any IP management strategy. The protection they provide complements the protection afforded by other forms of statutory IP protection (such as patents and copyrights).
  • It is important to understand that trademarks have substantial, albeit intangible, value: a strong trademark, for a product with real market potential, can bring value year after year.
  • Trademarks do not have statutory lifespans. They are valid for as long as there is an association between the good or service and the trademark.

For Scientists

  • Comply with best practices in order to maintain the value of your institution’s trademarks. Always use a trademark as an adjective describing the product, method, or service. Never use a trademark as a verb or noun!

For Technology Transfer Officers

  • When considering options for IP protection, don’t overlook trademarks. They can be used by themselves or they can be integrated into a larger strategy for IP protection. For example, a patented product or process can also be given a strong trademark.
  • Trademarks can be a source of income (for example via licensing) for many years. If your organization owns trademarks, it is essential to protect and promote them, and to avoid any misuse that might weaken them.

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapter 4.3). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.