Trademarks-International

• Author: Ann K. Ford
• Pages: 45-87

45

Chapter 2

Trademarks—International

Ann K. Ford1

I. INTRODUCTION

Preparing to expand a brand to other countries can be an exciting, yet

harrowing endeavor. From deciding on the correct business model (which

may include franchising or other licensing arrangements) to financing, set-

ting up the business abroad, and protecting the intellectual property that

makes up the core value of your brand, a business owner may feel over-

whelmed. This chapter focuses on assisting those charged with counseling

business owners on the protection of their trademarks internationally.

First, we consider the trademark itself: How should brand owners

select the mark that will be the public face of their product and how will

those brand owners find out whether a mark is actually available for use?

Then, we consider when and to what extent brand owners must use a mark

to ensure adequate protection, and what steps they can take to prevent

unauthorized registration of an infringing mark. Finally, we address the vol-

untary transfer of rights of marks to other parties through assignment or

license.

II. SELECTING, SEARCHING,

AND CLEARING THE MARK

Although different statutory definitions exist throughout the world, gener-

ally a trademark or service mark is a word or symbol that acts as a source

identifier for goods or services. A “trademark” identifies the source of tan-

gible goods, such as food, apparel, or software, while a “service mark” iden-

tifies a source of services, such as personal fitness lessons, pet grooming

services, or financial counseling services. Practically speaking, a trademark

1. The author wishes to acknowledge Ashley Green, Alberto Zacapa, and Naomi

Abraham, who as law clerks for DLA Piper, helped make this chapter a reality.

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46 • The Intellectual Property Handbook

must be affixed to the tangible good or its packaging in a way that clearly

identifies the source of the goods as the trademark owner or authorized

licensee, whereas a service mark must be used with signage, advertising,

websites, or other materials that identify and distinguish the source of

the services being offered by the relevant entity. Significantly, especially

for businesses in the retail and other service industries, not all countries

authorize the registration of service marks.

Closely related terminology, such as “trade name,” a term used to iden-

tify an actual business entity, and “trade dress,” a term used to describe

a product’s distinctive overall look and feel, are also quite important.

Although a trade name differs from a trademark, it can still serve as an

important source identifier for an entity’s goods or services. Similarly,

although trade dress refers only to a product’s design, packaging, color,

or unique aesthetic in which services, such as restaurants or other retail

businesses, are provided, this too serves to identify and distinguish those

goods or services from those of others.

A. SELECTION: THE TRADEMARK SPECTRUM

Because a trademark or service mark (collectively referred to in this chap-

ter as “trademark”) serves as a source identifier, it is generally preferable

for an entity, particularly a new one, to choose the “strongest” trademark

possible. A strong trademark will help to distinguish the trademark owner’s

goods or services from those of its competitors. In the franchising arena,

strong trademarks are especially important because the franchisor is

essentially marketing the brand itself. Therefore, from a franchising per-

spective, the trademark becomes the key advertising component providing

the widespread recognition being sought by potential franchisees.

In general, as in the United States, many countries consider the strength

(or distinctiveness) of trademarks along a spectrum (from strongest to

weakest) as follows:

• Fanciful. This category consists of trademarks that have no dictionary

meaning, such as Xerox for copiers and Kodak for film. Fanciful

marks convey nothing about the nature of the product or service

sold under the mark, and can be recognized only through knowl-

edge about the marketplace. Thus, these marks are considered the

strongest types of marks. Notably, it is also possible that fanciful

trademarks will be considered so strong that similar marks of others

for dissimilar goods or services might be refused trademark regis-

tration or enjoined from use if the strong mark has achieved a cer-

tain level of fame. Potential examples of this principle might include

preventing the registration or use of trademarks such as Audi for

aspirin or Rolex for a soft drink.

• Arbitrary. These are marks already having an existing and possibly

well-known meaning but are used in connection with goods or ser-

vices that have no relation to the existing meaning of the word, such

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II. Selecting, Searching, and Clearing the Mark • 47

as Amazon for online shopping. Arbitrary marks are strong precisely

because they neither describe nor relate to the goods or services

offered under the trademark.2

• Suggestive. A suggestive mark suggests rather than describes a char-

acteristic of the goods it covers and creates an overall commercial

impression that requires consumers to use their imagination to

determine the nature of the goods.3 A suggestive mark has everyday

significance, but what it normally signifies is unrelated to the prod-

uct itself.

• Descriptive. The line between a descriptive mark and a suggestive

mark is very narrow.4 Generally speaking, however, if a mark

imparts information directly to the consumer, it is descriptive.5

Descriptive terms describe the goods or services sold by the entity,

such as “quick” or “good,” and absent a showing of secondary mean-

ing, are incapable of acting independently as source identifiers. In

addition, surnames and geographic terms, common choices for

trademarks, are considered descriptive in most countries. Second-

ary meaning, or its equivalent concept in countries around the world

(sometimes referred to as “acquired distinctiveness”), exists when

the trademark owner successfully proves that the trademark con-

sisting of descriptive words has become exclusively associated with

the source of the goods or services.6 Inorder to prove secondary

meaning, a trademark owner is usually required to provide evidence

of widespread use of the mark, as well as evidence of advertising

and promotional expenditures, and resulting consumer recognition

in the relevant country. Thiscanbeadifficult burden to sustain, and

thus descriptive trademarks should be avoided, if possible, because

2. Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 243–44 (5th Cir. 2010) (explain-

ing that in determining whether a trademark is arbitrary, it is important to ask whether

the mark is “so unique, unusual or unexpected in this market that one can assume without

proof that it will automatically be perceived by customers as an indicator of origin”).

3. Tumblebus, Inc. v. Cranmer, 399 F.3d 754, 761 n.5 (6th Cir. 2005) (holding that the dis-

trict court did not clearly err in classifying the mark TUMBLEBUS, for a business that “oper-

ated through busses retrofitted with gymnastics equipment, as a suggestive mark”).

4. Synergistic Int’l v. Korman, 470 F.3d 162, 171–72 (4th Cir. 2006) (holding that the term

“doctor” as used by the plaintiff as GLASS DOCTOR, for a glass installation and repair ser-

vice system, is deemed to be suggestive because the public is more likely to view the word

“doctor” to mean “healing” rather than “repair”); see also In re Application of Quik-Print

Copy Shops, 616 F.2d 523 (C.C.P.A. 1980) (holding that the mark QUIK-PRINT, for printing

and photocopying services, is merely descriptive, not suggestive, as it immediately brings

to mind for the consumers the type of service).

5. Id.; see also DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247,

1251–52 (Fed. Cir. 2012) (holding that the SNAP! design mark and the SNAP SIMPLY SAFER

mark for medical, hypodermic, aspiration, and injection syringes were merely descriptive).

6. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982) (explaining that sec-

ondary meaning is acquired when “the primary significance of a product feature is to iden-

tify the source of the product rather than the product itself”).

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