Establishing trademark rights - use and registration

Trademark rights, such as the right to exclusive use of a trademark, can be established through actual use in the marketplace or registration with a trade marks office. In general, such rights will only apply in the jurisdiction where the trademark is used or registered, a quality which is sometimes known as territoriality. However, there are a range of international trademark laws and systems which facilitate the protection of trademarks around the world.

A trademark may be registrable (ie. be eligible for registration) if amongst other things it satisfies the essential trademark function, and is not generic or descriptive. A trademark may have "distinctive character" without being registrable.

Registrability can be perceived as a continuum, with generic and descriptive marks at one end of this continuum, "fanciful" or "invented" marks (eg. Kodak) at the other end, and suggestive marks and arbitrary marks laying somewhere in between these two points. Suggestive marks are marks which have some descriptive quality but which require imagination on the part of the consumer to identity this quality (eg. the Mercury image for FTD suggesting delivery speed) and arbitrary marks are usually common words which are used in a meaningless context (eg. Apple for computers).

Therefore marks which identify or describe a product or service, or which are in common use, or which are used as geographical indications, generally cannot be registered as trademarks, as they must remain available for use by anyone (eg. a generic term such as "apple"; or descriptive terms such as "red" or "juicy" generally could not be registered in relation to apples). Although these categories are most easily applied in relation to word marks, graphic elements are evaluated on a similar basis. For example, a pine tree shape is descriptive when used on pine-scented products.

However, in some jurisdictions even trademarks which are otherwise generic or descriptive may be registrable where the public associates these trademarks with a particular commercial origin or source. This association is sometimes known as secondary meaning (eg. in the United States) or as acquired distinctiveness (eg. in Common Law jurisdictions such as Australia, Hong Kong and the United Kingdom). In some jurisdictions, secondary meaning may be established if the trademark owner can demonstrate exclusive use of the mark for a defined period of time. Evidence of use and tools such as consumer surveys may also be used to show that the public will chiefly associate the descriptive mark with the trademark owner and its products or services.

Most jurisdictions exclude some categories of terms and symbols from trademark protection entirely. In addition to generic terms, excluded marks include marks used for official government business (eg. national flags; the symbols of the modern Olympic Games), marks that are deceptive as regarding the nature or origin (including geographic origin) of the products or services to which they apply, and marks that are considered morally offensive or obscene.