TRADEMARKS DON'T GIVE ABSOLUTE MONOPOLY OVER WORDS AND IMAGES
Welcome back this is Andrei Mincov with Trademark Factory. In this video you will learn that trademarks don’t give you an absolute monopoly over words and images
There are two substantial limitations to the monopoly that trademarks grant their owners.
First of all, trademarks do not exist in a vacuum. They only provide protection in connection with specific products and services that the trademark owner offers to the public. For example, Apple Inc. does not have a monopoly over the use of the word “Apple”. Their trademark gives them the right to prevent others from using the word “Apple” in connection with computers and software.But , it does not prevent others from using it in connection with apples, restaurants, cigarettes, candies, gas stations etc.
This is how the same trademark BLUE SHIELD can be owned by two completely different entities: one provides medical insurance, the other sells welding equipment.
Another example: T-Mobile doesn’t own the color magenta. They cannot forbid an artist to use this color in his paintings. They can’t stop other people from using this color in furniture, but they can stop others from using that color in the field of telecommunications.
This makes it very important to create a proper connection between the trademark and products and services. If it is your trademark, you want to make sure that it covers all of your products and services.
For example, if you’re a steakhouse and you are using the trademark “We love animals”, you should consider extending your trademark to take-out and delivery services if you offer them.
If you are considering whether somebody else’s trademark will prevent you from offering your products and services under a particular name or design, you should check for which products and services that other trademark is registered and used.
For example, if you are planning to run a daycare using the trademark “We love animals”, just because there is a restaurant under the same name, should not be a problem, because the services offered by the daycare and the restaurant are very different.
Secondly, the word “using” in trademark law differs substantially from the word “using” in the common sense of the word.
In connection with products, a trademark is considered to be used if it is placed on the products themselves or on their packaging or if consumers of such products are otherwise made aware of the trademark when they obtain the products. In connection with services, a trademark is considered to be used if it is used or displayed in the performance or advertising of these services.
A simple website that features the trademark to advertise your services is sufficient for the purpose of establishing that the trademark is “used”. On the other hand, advertising a product is not sufficient for it to be recognized as the use of the trademark. What this means is that simply having a website that talks about your product will not satisfy the requirement of trademark use. However, if you provide an online store where visitors can order your products, that would be sufficient because you are not simply advertising the products, but are actually selling them through your website.
Mentioning a trademark in a blog post does not constitute the use of a trademark, unless the trademark is registered for writing blog posts or similar services. Using your iPhone to make calls does not constitute the use of the iPhone trademark.Also , unless you’re claiming to be an authorized dealer, you will not be “using” the iPhone trademark if you decide to sell your used iPhone on Craigslist.
So again, your trademarks are limited by the products and services for which they are registered or used. Also, not every mentioning of your trademark constitutes its use. So be careful with that.
In the next video you will learn the difference between registered and unregistered trademarks, something that you mark with r in a circle and tm sign.
We love helping clients protect their ideas and cover their assets, so if you have any questions regarding about intellectual property, feel free to call, send us an email or go to our website at TrademarkFactory.ca
Thank you for watching. Talk to you soon.
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