The most important limitation lies in what can be trademarked. While the possibilities are nearly limitless, they all have one thing in common: they are non-functional. For example, a particular shape of a water bottle can be trademarked. However, a shape that substantially improves grip or otherwise enhances the usability of the bottle would likely run into troubles when it comes to trademarking. This limitation is designed to protect against using the trademark system to limit competition by registering functional elements and then pursuing trademark rights against a competitor.
One of the characteristics of trademark law is that it is limited to the area of any given country. Transnational trademarking systems also exist. For example, in the European Union, a Community Trademark registered with the Office for the Harmonization of the Internal Market applies Union-wide. However, a trademark registered in the United States will only be enforceable in the United States. This limitation is even more pronounced when it comes to unregistered trademarks, which usually can only be enforced locally. Only a registered USPTO trademark grants national trademark rights.
Fair Use Limitation
The fair use doctrine also applies to trademark law. Since many trademarks rely on words commonly used in everyday language, a trademark owner cannot enforce his rights if his trademark is legitimately used in a different context. Even if a trademark is arbitrary and fanciful, the owner may still not be able to enforce his or her rights if it is used in a manner qualifying as nominative fair use, for example, to identify and separate his or her goods or services from a competitor’s.
Goods are often sold in different countries, sometimes with different packaging and pricing. In the United States, a trademark owner is not able to block what’s known as “parallel imports”—when someone imports goods without the consent of the trademark owner in that country. For example, let’s say you own a trademark in the US and European Union, and you sell your product for less money in the European Union. If someone else buys your goods in the European Union, imports them to the US, and then resells them there for less money, you probably can’t use trademark law to fight it. However, if the goods are being imported from a country where the goods are not trademarked, then the trademark owner may be able to block this illegal importation of goods.
This article contains general legal information and does not contain legal advice. Rocket Lawyer is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.