Common Misconceptions with Trademarks
- One particularly common misconception in trademark law is that a particular mark can be ‘reserved’ to be used at a nonspecific future point.
- This is, in fact, incorrect. A mark is only protected under trademark law if that mark is used in commerce as an identifier of specific goods/services.
- As a trademark applicant, you are unable to ‘reserve’ your mark for indefinite future use. You can, however, file an ‘intent-to-use’ provision to gain a limited reservation of a specific mark.
- An ‘intent-to-use’ provision requires a subsequent filing of further documentation in order to secure the rights for that mark, including a declaration of use.
- A declaration of use requires you to prove that you have used your mark in conjunction with relevant goods or services.
If you apply for an ‘intent-to-use’ provision, you are given a limit of six months in which to file your declaration of use of the mark. You may apply for extensions for up to 36 months, after which time the registration of that trademark will not be permitted.
Your Trade Name is Automatically Granted Trademark Rights
You can only be granted trademark rights if you place a formal application with Intellectual Property Australia and are successful in registering your mark. The reservation of your trade name, whether you’re part of a provincial or federal incorporation, does not infer automatic trademark rights.
Most people unfamiliar with trademarks think that they have the unrestricted right to use their surname as a mark for their company’s goods or services. This is actually a misconception: you do not have the automatic right to use your surname as a commercial identifier. For example, if your last name was McDonald and you wanted to open your own takeaway business, you could not: McDonalds Corporation already have the rights to your surname as their own trademark. The use of your last name as your business’s trademark would cause confusion amongst consumers and leave you open to legal ramifications. You may, however, sell Mark McDonald’s takeaway food, or Lisa McDonald’s.
You Trademarks Exist Purely for Your Benefit
Your trademarks not only benefits you, but it also benefits consumers. The true purpose of a trademark is to identify one product, along with its reputation for good or bad quality, from other similar products within the marketplace. This is why trademarks, with timely renewal, are indefinite, while patents and copyrights can eventually expire. Trademarks can also be sold to other companies or assigned to franchise holders, so that the ‘goodwill’ of that company is passed along with the name.
While descriptive trademarks are often successful in registration, the most descriptive trademarks are not always the best trademark. If your trademark is purely descriptive, it’s likely that your registration application will be rejected by IP Australia. This is because your mark could be deemed as ‘generic’. This means that your mark, while descriptive of the specific type of good or service, does not identify your company from others within the marketplace. The best type of trademark is generally a name that has no relation to anything at all: therefore, it becomes the most recognisable.
The idea behind this is that you, as the owner of the mark, increase the value of your trademark through advertising, marketing, and selling a good product. While a descriptive mark may help the consumer understand the precise nature of your goods or services, it will not help you stand out amongst your competition.
Descriptive trademarks are not always bad trademarks. In fact, many descriptive names make successful trademarks: this is only when the descriptive elements are used in conjunction with other elements of a name. A descriptive trademark will not be rejected on the basis of being descriptive: it will be rejected on the basis of being generic.
You Cannot Lose your Trademark Rights
While your trademarks, with timely renewal, can exist indefinitely, you can still lose ownership of that mark. Your trademarks are allowed to be constantly renewed because consumers rely on that mark to identify a particular good or service within the marketplace. However, should that mark become so familiar to the public that is no longer stands out as a specific product, but rather a type or class of product, then you will lose ownership of this mark. This is because your trademark has become generic, and generic terms cannot be registered as trademarks. Benchmark examples of trademarks that have become generic terms include aspirin, cellophane, lanolin, escalator, Laundromat, kerosene, and linoleum. These were once trademarked names that we now use to identify classes of products, rather than products produced by a particular manufacturer.
Your trademarks can be protected from becoming a generic term through careful advertising. For example, Kleenex tissues are always advertised as ‘Kleenex Facial Tissues’ to distinguish the product from the manufacturer: Kleenex being the manufacturer and facial tissues being the product.