Hologram trademark
Encyclopedia
A hologram trademark is a non-conventional
trademark
where a hologram is used to perform the trademark function of uniquely identifying the commercial origin of products or services.
In recent times holograms have been increasingly used as trade marks in the marketplace
. However, it has traditionally been difficult to protect holograms as trademarks through registration, as a hologram was not considered to be a 'trademark'. This issue was addressed by the World Trade Organization
Agreement on Trade-Related Aspects of Intellectual Property Rights
, which broadened the legal definition of trademark to encompass "any sign...capable of distinguishing the goods or services of one undertaking from those of other undertakings" (article 15(1)).
Despite the recognition which must be accorded to holograms trademarks in most countries in other fields of the art, the graphical representation of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.
, hologram trademarks are generally not acceptable if they cannot be represented graphically or if they are regarded as more than one mark, see first external link.
, Article 4 of Council Regulation (EC) No. 40-94 of 20 December 1993 ("signs of which a Community Trade Mark
may consist") relevantly states that any CTM may consist of "any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In Sieckmann v German Patent Office (case C-273/00) http://www.copat.de/markenformen/C-273-00EN.pdf the EcJ states that graphical representation, preferably means by images, lines or characters, and that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
This definition generally encompasses only very simply structured holograms, and therefore an applicant for a CTM may use one photograph or some views to graphically represent their trade mark, see first external link.
, the trademark manual for examination requires under 1202.14 that a hologram used in varying forms does not function as a mark in the absence of evidence that consumers would perceive it as a trademark. See In re Upper Deck Co., 59 USPQ2d 1688 (TTAB
2001), where the Board held that a hologram used on trading cards in varying shapes, sizes, and positions did not function as a mark, because the record showed that other companies used holograms on trading cards and other products as anti-counterfeiting devices, and there was no evidence that the public would perceive applicant's hologram as an indicator of source. The Board noted that "the common use of holograms for non-trademark purposes means that consumers would be less likely to perceive applicant's uses of holograms as trademarks." 59 USPQ2d at 1693.
Therefore, in the absence of evidence of consumer recognition as a mark, the examining attorney should refuse registration on the ground that the hologram does not function as a mark, under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127. Generally, if a hologram has two or more views, the examining attorney should also refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark. In re Upper Deck, supra. See TMEP
§807.01.
Provided the applicant can demonstrate that the use of a hologram or moving image both serves as a mark and is not functional, an application for such a mark may be made to either register. That being said, Examining Attorneys are instructed to refuse an application for registration of a hologram if the applicant does not provide evidence of consumer recognition of the hologram as a mark. the applicant seeking registration of a hologram must submit a drawing of the mark that captures the dimensions thereof. Further, Examiners are instructed to refuse registration of any holograms that show two different images on the grounds that the application is seeking protection for two separate marks. Further, the application must include detailed written description of the mark. During publication the drawing pages for these marks are published and thereafter the drawing page is incorporated into the registration certificate which is made available at the USPTO as well as the USPTO website, see first external link.
Non-conventional trademark
A non-conventional trademark, also known as a nontraditional trademark, is any new type of trademark which does not belong to a pre-existing, conventional category of trade mark, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of...
trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
where a hologram is used to perform the trademark function of uniquely identifying the commercial origin of products or services.
In recent times holograms have been increasingly used as trade marks in the marketplace
Marketplace
A marketplace is the space, actual, virtual or metaphorical, in which a market operates. The term is also used in a trademark law context to denote the actual consumer environment, ie. the 'real world' in which products and services are provided and consumed.-Marketplaces and street markets:A...
. However, it has traditionally been difficult to protect holograms as trademarks through registration, as a hologram was not considered to be a 'trademark'. This issue was addressed by the World Trade Organization
World Trade Organization
The World Trade Organization is an organization that intends to supervise and liberalize international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade , which commenced in 1948...
Agreement on Trade-Related Aspects of Intellectual Property Rights
Agreement on Trade-Related Aspects of Intellectual Property Rights
The Agreement on Trade Related Aspects of Intellectual Property Rights is an international agreement administered by the World Trade Organization that sets down minimum standards for many forms of intellectual property regulation as applied to nationals of other WTO Members...
, which broadened the legal definition of trademark to encompass "any sign...capable of distinguishing the goods or services of one undertaking from those of other undertakings" (article 15(1)).
Despite the recognition which must be accorded to holograms trademarks in most countries in other fields of the art, the graphical representation of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.
Canada
In CanadaCanada
Canada is a North American country consisting of ten provinces and three territories. Located in the northern part of the continent, it extends from the Atlantic Ocean in the east to the Pacific Ocean in the west, and northward into the Arctic Ocean...
, hologram trademarks are generally not acceptable if they cannot be represented graphically or if they are regarded as more than one mark, see first external link.
European Union
In the European UnionEuropean Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
, Article 4 of Council Regulation (EC) No. 40-94 of 20 December 1993 ("signs of which a Community Trade Mark
Community Trade Mark
A Community M application in any member state can defeat the entire application, a CTM registration is enforceable in all member states.The CTM system is administered by the Office for Harmonization in the Internal Market , which is located in Alicante, Spain .- Character and advantages :The...
may consist") relevantly states that any CTM may consist of "any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In Sieckmann v German Patent Office (case C-273/00) http://www.copat.de/markenformen/C-273-00EN.pdf the EcJ states that graphical representation, preferably means by images, lines or characters, and that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
This definition generally encompasses only very simply structured holograms, and therefore an applicant for a CTM may use one photograph or some views to graphically represent their trade mark, see first external link.
United States
In the United StatesUnited States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, the trademark manual for examination requires under 1202.14 that a hologram used in varying forms does not function as a mark in the absence of evidence that consumers would perceive it as a trademark. See In re Upper Deck Co., 59 USPQ2d 1688 (TTAB
Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board is a body within the United States Patent and Trademark Office responsible for hearing and deciding certain kinds of cases involving trademarks. These include appeals from decisions by USPTO Examiners denying registration of marks, and opposition proceedings...
2001), where the Board held that a hologram used on trading cards in varying shapes, sizes, and positions did not function as a mark, because the record showed that other companies used holograms on trading cards and other products as anti-counterfeiting devices, and there was no evidence that the public would perceive applicant's hologram as an indicator of source. The Board noted that "the common use of holograms for non-trademark purposes means that consumers would be less likely to perceive applicant's uses of holograms as trademarks." 59 USPQ2d at 1693.
Therefore, in the absence of evidence of consumer recognition as a mark, the examining attorney should refuse registration on the ground that the hologram does not function as a mark, under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127. Generally, if a hologram has two or more views, the examining attorney should also refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark. In re Upper Deck, supra. See TMEP
Trademark Manual of Examining Procedure
The Trademark Manual of Examining Procedure is a manual published by the United States Patent and Trademark Office for use by trademark attorneys and trademark examiners. It describes all of the laws and regulations that must be followed in order to apply for and maintain a trademark in the...
§807.01.
Provided the applicant can demonstrate that the use of a hologram or moving image both serves as a mark and is not functional, an application for such a mark may be made to either register. That being said, Examining Attorneys are instructed to refuse an application for registration of a hologram if the applicant does not provide evidence of consumer recognition of the hologram as a mark. the applicant seeking registration of a hologram must submit a drawing of the mark that captures the dimensions thereof. Further, Examiners are instructed to refuse registration of any holograms that show two different images on the grounds that the application is seeking protection for two separate marks. Further, the application must include detailed written description of the mark. During publication the drawing pages for these marks are published and thereafter the drawing page is incorporated into the registration certificate which is made available at the USPTO as well as the USPTO website, see first external link.
External links
- Welcome to the non-traditional Trade Mark Archives — the non-traditional trade marks archives of Ralf Sieckmann include, amongst other things, a database of sound trade marks (see "sound marks" link)
- holograms - the next generation of trademarks? — contribution of Ralf Sieckmann in IP Review 13, Jan. 2006 and http://downloads.brainguide.com/publications/PDF/pub61868.pdf of the 2007 listing.
- The fresh version of Non-Traditional Trade Mark Archives under publications