Intellectual property law is crucial to protecting the creative works and inventions that drive entertainment and innovation, but it can be easy to confuse the terms associated with this branch of law. Copyrights, trademarks, and patents, though similar in purpose, offer very different types of protections, and it is important to understand the distinctions between each.
Today, in the second part of our three-part series covering common intellectual property questions, our business attorneys at Patrick Harper & Dixon, LLC will go over the second type of intellectual property protection: trademark. To learn more, read parts one (What is a Copyright?) and three (What is a Patent?) of this series, or contact our corporate lawyers today.
What is a trademark?
A trademark is a mark (it can be a word, phrase, symbol, or design) that identifies and distinguishes the source of a good or goods. Similarly, a “service mark” identifies and distinguishes the source of a service — but we will use the term “trademark” as an umbrella term to describe both of these protections from this point forth.
Products and services that are protected by trademark can be marked with a superscript ™ or ℠, or marked with an ® if they have been registered with the U.S. Patent and Trademark Office (USPTO).
Trademarks are a much newer legal protection than copyrights. While the latter was originally outlined in the United States Constitution, Congress only created trademark protection in the 1946 Lanham Act.
What is a trademark’s purpose?
The purpose of a trademark is to protect the use of commercial names, phrases, logos, slogans, brand identities, and product names. Trademarks are designed to protect not only companies and their commercial interests, but also consumers. They help to ensure brand consistency and limit buyer confusion by prohibiting the use of a known brand by a person other than the trademark holder.
What is protected by a trademark?
According to the USPTO, trademarks protect “any word, phrase, symbol, design, or combination thereof, that identifies and distinguishes the source of goods [or services] of one party from those of others.” Legally, trademarks are governed by the 1946 Landham Act.
What are the requirements for trademark protection?
According to the Landham Act (also known as the Trademark Act), there are two basic requirements to be eligible for trademark protection:
- The mark must be used in commerce, or registered with the intent to be used in commerce.
- The mark must be distinctive enough to identify the goods or services as being from one source over other sources.
What rights are granted by trademark ownership?
A trademark holder retains the “right to use the mark and to prevent others from using similar marks in a way that would cause a likelihood-of-confusion about the origin of the goods or services.”
To establish the boundaries of an unauthorized use of the trademark or a mark similar to the trademark, a court will typically look at whether or not the average consumer is likely to be confused by the use of the mark in question.
How is trademark protection granted?
Trademarks are registered with the USPTO, and the application process is very thorough. After receiving an application, the USPTO will have their attorneys closely scrutinize the mark to determine whether it conflicts with current trademarks. If it does, it will either be rejected outright or returned with requests for revision. If the application is approved, the mark is registered with the USPTO and can now be labeled with the registered trademark symbol: ®.
The USPTO recommends that before applying for registration, trademark applicants search the federal trademark database, the Trademark Electronic Search System (TESS), to see whether any similar marks have already been registered and are in use.
It is important to note that registering a trademark with the USPTO is not mandatory to gain trademark rights. You can establish “common law” rights to a mark based solely on the use of the mark in commerce. To indicate that you have adopted a mark as a “common law” trademark, you may use the ™ symbol for goods or the ℠ symbol for services.
However, federal registration of a trademark with the USPTO has several advantages, including:
- A public notice of the registrant’s claim of ownership of the mark
- Legal presumption of ownership of the mark nationwide
- The exclusive right to use the mark on or in connection with the goods or services set forth in the registration
- A stronger legal paper trail should you ever need to contest an unauthorized use of the mark
Many people choose to claim common law rights to a mark by using the ™ or ℠ symbols while waiting until the mark is federally registered, at which point they can use the ® symbol. Others never register their mark with the USPTO at all.
How long does trademark protection last?
Trademark protection lasts for as long as the mark is used in commerce. It does not expire after a set term of years. You can retain trademark rights forever as long as you continue to use the mark in commerce to indicate a source of the goods or services.
Trademark overlap with other types of intellectual property protections:
Short words or phrases can be trademarked in association with commercial use, and can also by copyrightable with sufficient creativity and originality. Additionally, creations such as graphic logos may be eligible for both trademark and copyright protection. The illustration may be copyrighted while the logo itself is trademarked for use in commerce.
To learn more about intellectual property rights and business law, be sure to read parts one and three of this series, in which our legal team provides respective overviews of copyright law and patents.
If you are near Hickory, North Carolina, you can also contact our small business attorneys directly at Patrick Harper & Dixon, LLP. Whether you’re seeking qualified advice for establishing trademark rights for your business or need more comprehensive business law services, our corporate lawyers have the experience and knowledge to develop creative solutions to any legal challenge. Contact us now.