We begin this guide by answering a common question, “What is Trademark?”
Topics covered in this section:
- What is Trademark?
- Trademark Means a Mark
- A Bundle of Legal Rights
- The WIPO?
- What is the Difference Between the ® and ™?
- The Difference Between Trademark vs. Copyright
- Trademark vs. Patent
What is Trademark?
The answer is complicated, and trademark is deceptively complicated.
Trademark has a long and interesting history. Part of what makes trademark so complicated is that the notion of trademark has been around for centuries and has gained a variety of common meanings and certain assumptions in popular culture.
Trademark is a universe of terminology. Even common words like “goods,” “services,” and “in use” have special meaning.
Also, much of this guide covers federal trademark registration with the United States Patent and Trademark Office (USPTO), more on this later.
What Does Trademark Mean?
Let’s begin with the word trademark itself.
The word trademark has come to mean different things in different contexts. Trademark may mean a mark or it could also mean a bundle of legal rights one has in a mark. It might also be referring to any and all sub-topics, issues, laws, and research on marks and legal rights.
Trademark Means a Mark
Trademark usually refers to a word or words, phrase, design, logo, or slogan that serves as a source identifier of goods or services.
At its core, Trademark is a source identifier, but what exactly does that mean? What’s a source identifier? A source identifier triggers in the minds of consumers where a good or service comes from. This is a very powerful function of trademark and the source identifying nature of Trademark is an underpinning of modern trademark law. If we imagine how quickly seeing a swoosh on a shirt instantly, and in most cases subconsciously, triggers feelings and opinions about the nature and quality of that shirt one can quickly see the power of trademark. This is why companies spend so many resources on brand development and on enforcing trademark rights, they don’t want to dilute the source identifying power and good will created by the use of their mark.
Trademark is also distinctive. Distinctive means that to be a trademark, a mark should be different than other marks or the mere description of the goods or services it’s featured with.
So if we bring it all together:
Trademark means a distinctive mark used in commerce as a source identifier for goods or services.
A mark is a word, slogan, phrase, image, design, logo, sound, or even a scent used to identify the source of goods or services.
Brief History of Trademark
Trademark has its origins, in some ways, as far back as people made things. As a sign of the maker, artist, baker, builder, marks were often used by ancient peoples to denote that the good is one of their creations. The image above is an example of a Roman bread maker’s mark. The mark would be stamped onto the bread during baking so that once baked, the baker could be identified quickly. Similar marks were used on buildings and other goods.
Trademark’s origins continued into medieval Europe where marks were used by guilds who produced items during the time. Medieval use of trademark was at times required by the ruling class so that they could know who made, and who would be held responsible, should a product be defective. The image below is an example of various medieval guild marks.
Trademark Means a Bundle of Legal Rights
In addition to meaning a mark, trademark also means a bundle of legal rights or laws and systems used to register and protect trademark.
Trademark as a bundle of legal rights are those rights that generally allow one to restrict or prevent others from offering goods or services under the same or confusingly similar mark.
Trademark rights divide into common law rights and state or federal rights.
Common Law Trademark Rights
The law takes into account the fact that many people use trademarks but for whatever reason do not seek registration. These so called common law rights have been developed and defined in the courts over time and has led to a canon of interpretation and protections defined as common law trademark rights.
Common law trademark use is the use of an unregistered trademark and the default rights afforded that use that have developed over time in the courts.
Common law trademark rights are generally based on use. If one uses a distinctive mark with goods and/or services that use acquires the ability to prevent others from using a confusingly similar mark in the same geographic location. Common law trademark rights are usually limited to the geographic location of use (as opposed to federal trademark rights which grant national protection).
Federal Trademark Rights
In 1946 Congress memorialized trademark rights in legislation called the Trademark Act of 1946, also known as the Lanham Act (named for the bill’s sponsor Texas congressman Fritz Lanham) codified at 15 U.S.C. § 1051. The Act forms the basis of a set of federal rights as well as the basis of a framework of registration and cataloging marks at the national level.
The Act is divided into four subchapters:
- Principal Register
- Supplemental Register
- General Provisions
- The Madrid Protocol
The Principal Register subchapter ( at §§ 1051 – 1072) broadly covers the eligibility of marks to be registered to the Principal Register, and it covers the rights and limitations of marks that are principally registered.
The Supplemental Register subchapter (at §§ 1091 – 1096) broadly covers the eligibility of marks to be registered to the Supplemental Register, a secondary registry for marks which are not found to be sufficiently distinctive or are otherwise not eligible for registration on the Principal Register.
The Madrid Protocol subchapter (at §§ 1141 – 1141n) broadly covers the later adopted laws when the United States became a contracting member of the Madrid System for the international registration of marks. The Madrid System is administered by the World Intellectual Property Organization (or WIPO). The Madrid Protocol forms the basis of an international registration system for trademarks.
What is the WIPO?
The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations created to promote and protect intellectual property. Among the various tools and resources the WIPO makes available is a searchable database of international trademarks. The Global Brand Database is an invaluable resource for international trademark research.
Since federal protection grants the broadest protection this guide follows the path of a federal trademark registration.
What is the Difference Between the ® and ™?
The ® symbol is used with registered trademarks whereas the ™ symbol is used with unregistered trademarks. It’s very important to only use the registered trademark symbol on trademarks registered with the USPTO, the use of a registered trademark symbol on an unregistered mark might bring negative legal consequences.
Trademark vs Copyright
Trademark and Copyright are closely related and often overlapping but different forms intellectual property. A logo used by a business in commerce has both trademark and copyright considerations.
So what is copyright? How is copyright different than trademark?
Copyright is the tangible embodiment of a creative work. Some examples are the recording of a musical instrument or the taking of a photograph. The creative work, playing or framing the scene, are embodied in a tangible form, a recording or a photograph.
This begs the question, “Well isn’t a trademark a tangible embodiment of a creative work?”
The answer is yes it can be!
For example, a logo design has copyright rights (in the creative work), in addition to trademark rights (in the use of a mark with goods and/or services).
Trademark vs Copyright:
Different rights are granted with trademark and copyright. Trademark covers the use of a mark as a source identifier and prevents others from using a confusingly similar mark on good and/or services, generally. Whereas copyright covers the rights in an underlying design and prevents others from reproducing, copying, or otherwise using the creative work, generally.
Trademark vs Patent
Patent is another form of intellectual property, but it is perhaps less related to trademark than copyright.
A patent is a form of protection for an invention.
Let’s imagine an example of a pharmaceutical company called PillCo. PillCo develops a new medication. The company protects the invention from replication with a patent.
PillCo might also decide to release the new medication under a brand name, Newmed ®. It may seek trademark protection in addition to patent protection. Patent to protect the underlying invention and prevent others from manufacturing and trademark to protect the brand from others releasing medication under a similar name.
There are situations where the trademark and patent might become very overlapped much like copyright, such as with design patents. A design patent protects certain visual qualities of a manufactured item and so might have some overlap with trademark protection of a mark used on an item, but again patent and trademark are different forms of intellectual property which grant different rights to the holder.
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