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Defining the Trademark - Module 1 of 5

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Module 1: Defining the Trademark


 A trademark is a word, phrase, symbol, sound or color used to identify the source of goods in the marketplace. Trademarks are most commonly associated with brand logos, such as the Nike “swoosh” or the Starbucks “mermaid.” The broadcast network NBC’s “chime” sound and Coca-Cola’s “red” color are also trademarks registered with the United States Patent and Trademark Office, or USPTO.

             Trademark owners are allowed a limited monopoly over the use of the protected mark, which is a mark used in commerce, preventing consumer confusion while also allowing brand recognition. Unlike other forms of intellectual property, trademarks registered with the USPTO can last indefinitely if proper maintenance procedures are followed.

             The three main legal sources of trademark rights are federal, state and common law. The Lanham Act, codified in Chapter 22 of Title 15 of the United States Code[1], is the primary source for federal trademark laws in the United States. Many states allow for registration of trademarks at the state level, and registrations are handled through either the local secretary of state or the department or chamber of commerce that oversees the jurisdiction. Common law trademark rights may be obtained simply by using a mark in commerce. However, common law and state trademark rights have disadvantages that can only be overcome through federal registration.

Other Intellectual Property Rights

Trademarks, patents, copyrights and trade secrets are all forms of intellectual property that allow the owner a limited monopoly. Intellectual property is intangible, compared to physical property rights, such as plots of land or vehicles. However, intellectual property is often distributed in a tangible form, such as a vinyl record that contains copyrightable sound recordings, or a plastic mop that embodies a patented self-wringing invention. Thus, an understanding of each type of intellectual property right is necessary in trademark law.

          A copyright protects an original work fixed in a tangible medium of expression. Title 17 of the United States Code lists the following as defined works of authorship: literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial and sculptural works, motion pictures and other audiovisual works, sound recordings and architectural works. Copyright protection specifically excludes ideas, procedures and processes.[2]

             For example, if someone has an idea for a song in her head and she performs it in front of a group, the song is not eligible for copyright protection since it was not fixed in a tangible medium of expression. However, if it was written down on a piece of paper, or recorded with a phone, it may be eligible for copyright protection.

             Copyrights last for the lifetime of the author, plus 70 years. If the work is created under a “work for hire” arrangement or anonymously, the copyright duration is 95 years from first publication of the work or 120 years from the date of the work’s creation, whichever is shorter.[3]

             A patent is issued by the United States Patent and Trademark Office and provides exclusive rights for an invention of a manufactured article, process or method, machine or composition of matter.[4] A patent is a negative right, meaning that a patent is not a right to do something, such as manufacture or distribute a widget, but rather the right to exclude others from performing actions as they relate to the patented invention. The term of a patent is 20 years from the filing date on the application.

             There are three types of patents: utility patents, design patents and plant patents. Utility patents are for inventions or discoveries of new and useful processes, machines or compositions of matter. Design patents are granted for original and ornamental designs of functional items. As described by the USPTO, “a "utility patent" protects the way an article is used and works.[5] while a "design patent" protects the way an article looks[6]. A plant patent is granted for the invention and asexual reproduction of any distinct and new variety of plant.

             According to the Defend Trade Secrets Act of 2016[7], a trade secret is “financial, business, scientific, technical, economic or engineering information” that has been made confidential due to independent economic value.[8] The Defend Trade Secrets Act allows a trade secret owner to sue for misappropriation in federal court.

             A well-known example of a trade secret is the blend of 11 herbs and spices behind Kentucky Fried Chicken’s original recipe for fried chicken coating. Coca-Cola is also known for keeping the recipe for its syrup under protection using trade secret law. Outside of the food industry, WD-40, a common household lubricant, is produced using a secret formula of chemicals protected by trade secret.

Types of Trademarks

The term “trademark” is widely used as a catch-all term for many different brand protection tools. In addition to a trademark, other options for protection include service marks, trade names, and trade dress.

A service mark is a word, name, symbol or device that identifies the source of services in the marketplace, rather than a specific product. Federal law[9] states that services marks can be “titles, character names and other distinctive features of radio or television programs and may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of a the sponsor.” Service marks are often used, for example, to distinguish well-known television characters who are parts of television series from branded products that result from its success. This is also how entertainers, such as musical bands, obtain trademark registrations for their names.

            Service marks may also be used in connection with communication-based services. For example, the AT&T chime is associated with long distance telecommunication while the NBC chimes are used in connection with entertainment services. By way of illustration, the ‘Starbucks’ mark is used by the company as both a trademark and a service mark. Starbucks provides services through their coffee shops, where baristas make lattes and other beverage, but it also provides coffee as consumable consumer goods. Both examples show that a mark can be used, and registered, as both a trademark and a service mark simultaneously.

           A trade name is the official or registered name under which a company or organization does business. Depending on the jurisdiction, a trade name is sometimes referred to as a “doing business as” name or a fictitious name. The main distinction between a trademark and a trade name is that a trade name does not provide any legal protections over the use of the name as a brand or in commerce.[10] Trade names are commonly established at the time of filing to do business or creation of partnerships or corporations. The differences between trade names and trademarks are important in the event a company begins to use its trade name as a trademark to identify its goods or services. Without proper research, the trade name that becomes a trademark could be infringing upon an existing trademark.

                Design or packaging of products or services sometimes becomes so distinctive that they are a key identifying elements of the product’s recognition in the marketplace. Under these circumstances, trademark law may allow for trade dress protection to prevent confusion around the origin, sponsorship or approval of the goods. Trade dress law is found in Section 43(a) of the Lanham Act, codified in Title 15 of the United States Code.[11] Although there is no requirement of federal registration with the USPTO to obtain protections for trade dress, there are advantages to registration. For example, registration causes a shift in the burden of proof from the proponent of the trade dress protection to the party attacking its applicability.

               One of the most famous trade dress cases is Two Pesos, Inc. v. Taco Cabana, Inc.[12] Taco Cabana centered on a dispute between two Texas-based Mexican restaurants in which Taco Cabana accused competing restaurant Two Pesos of copying the design of its restaurants, thereby infringing upon its trademark. The case was tried at the district court level, and the jury noted that the Taco Cabana trade dress had not acquired “secondary meaning” in the Texas market. Despite this, Taco Cabana was awarded damages for the infringement. Ultimately, the Supreme Court affirmed this idea, holding that trade dress is inherently distinctive, and that secondary meaning was not a requirement for trade dress protections under the Lanham Act.

                 In 2013, the USPTO granted Apple Inc.’s application to register the design and layout of its Apple Store retail stores as trade dress. Although the original application was filed on May 12, 2010, it wasn’t granted until January 22, 2013.

                 A certification mark is any word, name, symbol or device used to communicate to a consumer that a good or service has met particular standards, allowing them to use the mark. Under the Lanham Act, certification can be based on regional or other origin, material, mode of manufacture, quality, accuracy or approved by a particular union or other organization. [13]

                Examples of registered certification marks include the CERTIFIED GENUINE IDAHO POTATOES GROWN IN IDAHO mark registered by the Idaho Potato Commission and the ENERGY STAR registered certification mark registered by the U.S. Environmental Protection Agency.

             Collective marks are used to designate trademarks or service marks as being used in commerce by the members of an association, union or trade association. Collective marks are defined and authorized for trademark protection by Sections 1054 and 1127 of the Lanham Act. A popular example of a collective mark is FTD, which is used by flower shops to signify membership in a national flower delivery system.


Trademark Symbols

             There are three main symbols associated with the use of trademarks and service marks: ™, , and ®. Each provide a different meaning and must be used appropriately.[14] Improper usage can result in misunderstanding the true meaning of the symbols, which can cause claims of fraud and infringement even in the absence of fraudulent intent.

             The ™ symbol is used in connection with common law trademarks. Anyone can use the ™ symbol to communicate that he is claiming trademark ownership over the word, phrase, logo or mark being used in connection with the goods offered. It is common practice to use the ™ symbol through the trademark prosecution process, and thereafter, even if the registration is refused by the USPTO.

                The symbol is used in connection with service marks and does not provide any purpose other than to communicate a claim of ownership over the word or logo being used in connection with services offered.

             The ® symbol is reserved exclusively for trademarks registered with the USPTO and serves as public notice that the mark is protected. It can be used in connection with both registered trademarks and service marks, but only after an application has been granted. Intentional misuse of the ® symbol can lead to claims of fraud, but often is simply the result of misunderstanding or misinformation.

                There is no requirement that a trademark symbol be placed in a specific location on a mark. Traditionally, the symbols are placed in the top or bottom right-hand corners of a mark. Use of the symbols is important in proving proper notice to the public that the mark is protected, and it’s recommended that the symbols be used in some capacity.

                 Now that we have established what constitutes a trademark, we will next turn to the process of registering and protecting the various marks covered by trademark protection.