IPL 1 - Trademark Basics

Registration costs increase with more variations of the mark, additional classes of goods/services, and extra jurisdictions.

A new trademark application can be rejected if it is too similar to an existing, registered trademark.

Selecting the correct class of goods or services for your trademark application is crucial for a successful registration.

Establish clear guidelines for who is permitted to use the trademark after registration, especially for licensing agreements.

A registered trademark can be nullified if the owner hasn't used it within a five-year period.

Registering your trademark in future target markets, if affordable, can provide competitive advantages.

Objections to trademark registration can be based on the trademark itself (absolute) or other marks (relative).

A trademark that is distinctive enough to be registered, even if it's applied to unexpected goods/services or is suggestive (like Jaguar for cars).

A trademark that describes the goods' characteristics (e.g., fresh and crunchy for apples) and is therefore not distinctive enough for registration.

Trademark objection based on existing, similar trademarks, rather than the mark itself (absolute grounds).

A previously registered trademark used as a basis for objection to a new application.

A specific ground to reject a trademark application based on similarity to other marks, goods/services, and the likelihood of public confusion.

A three-step test used to evaluate trademark application objections based on prior marks, used as an alternative to other test-cases for the global appreciation test.

The first step in the Stavville test; determining if the application mark and earlier mark are similar.

The second step in the Stavville test; deciding if the goods/services covered by the application mark and earlier mark are the same or similar.

The third step in the Stavville test; determining if the public is likely to confuse the application mark with the earlier mark.

When trademarks are similar enough to cause consumers to mistake one for the other, leading to potential confusion about the source of goods.

Factors that are intrinsic to the nature of goods or influence how consumers perceive the source of similar goods.

Factors unrelated to the goods themselves, like price or packaging, that are controlled by a trader and cannot be considered when assessing confusion.

The process of extending the validity of a registered trademark for another 10 years after the initial registration expires.

The legal right to use a registered trademark exclusively, and to authorize others to use it under specific conditions.

The application date of a registered trademark or application must be earlier than the subject application to qualify as an earlier mark.

A comparison of trademarks to see if they look alike.

Comparison of how trademarks sound.

Comparison of ideas evoked by trademarks.

The inherent degree to which a mark is unique (e.g. made-up word).

Evaluating a mark as a whole, not piecemeal.

Mark similarity assessment should consider the perspective of an average consumer, exercising care and good sense, not an unthinking person.

The assessment shouldn't involve detailed comparisons, as people likely won't remember a mark exactly.

The final assessment is whether a competing mark is more similar or dissimilar.

Trademarks that combine words and graphical elements.

A four-step test used to determine whether two trademarks are similar enough to cause confusion in the marketplace. Steps include 1. Mark Similarity, 2. Goods/Services Similarity, 3. Likelihood of Confusion, 4. Overall Assessment.

Analyzing if two trademarks have similar visual, auditory, or conceptual aspects. This involves looking at the overall impression the marks make on consumers.

Examining whether the goods or services covered by the trademarks are similar. This involves considering factors like the class of goods, their uses, and whether they compete in the market.

Marks covering the exact same goods or services. For example, both marks claiming clothing and footwear.

Marks covering goods or services that are not identical but share some characteristics, such as being used for similar purposes or marketed through similar channels.

A set of criteria used to assess the similarity of goods or services in a trademark case, considering their uses, users, physical nature, and distribution channels.

Categorizations within the classification system for goods and services used in trademark registration, each representing a specific product or service type (e.g., clothing, financial services).

Goods or services that compete for the same customers or market share. The greater the competition, the more likely the goods or services are similar.

Assessing whether consumers are likely to confuse the trademarks, taking into account both mark similarity and goods/services similarity.

Weighing all the factors from the previous steps to make a final judgment about whether the trademarks are similar enough to cause confusion.