What Material is Protected by a Trademark?
Many people confuse what is protected as a trademark with copyrights and patents. Each of these terms describes a protection for very specific types of intellectual property. “A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others,” Protecting Your Trademark – Enhancing Your Rights Through Federal Registration, U.S. Patent and Trademark Office, while a copyright relates to an original work of authorship and a patent protects an invention.
To receive trademark protection, no registration is required and one can obtain “common law” trademark rights simply by using a trademark in commerce. This method may be sufficient for some; however, in order to receive the significant advantages (described below) of owning registration on the Principal Register, the mark must be registered with the United States Patent and Trademark Office (“USPTO”) in Washington, D.C. The USPTO reviews all applications for trademark to determine whether the mark can receive trademark protection. While almost any word, phrase, graphic, shape or color, or combination thereof can be protected by trademark, the determination of whether one will receive trademark protection is subjective and not all trademark applications are approved. The more distinctive the mark is, the more likely it is to receive protection. Being distinctive is, without doubt, the most important aspect of the trademark. In order to receive protection, the mark must be able to differentiate one product or service from the products and services of all others; it helps purchasers of goods identify from whom they are purchasing everything from computers (the Apple computer versus the IBM computer) to cars (the Jaguar versus the Ferrari).
No simple test is used to determine whether a mark can receive trademark protection; rather, the USPTO reviews each application to determine whether the mark under consideration is so similar to one already registered as to create the “likelihood of confusion” among consumers. If the mark is “similar” to an existing mark and the goods or services of the applicant are related such that consumers might mistakenly believe the goods come from the same source, the likelihood of confusion exists and the application will be rejected. Two identical marks can, however, co-exist as long as the goods or services being offered are not the same, unless a court has previously found the mark is a “famous mark.” Even if two marks are confusingly similar, the likelihood of confusion will exist only if the goods or services are related. For instance, a proposed mark related to a washing machine, even if identical to one related to guitars might be approved because the two goods being offered are completely different and consumers would not be likely to confuse the source of them.
Although common law rights to a trademark can be obtained by simply using a mark in commerce, registration is important for most businesses. Once the mark has been registered and placed on the Principal Register of the USPTO, the owner enjoys:
- A legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
- Public notice of the claim of ownership of the mark;
- Listing in the USPTO’s online databases;
- The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol “®”;
- The ability to bring an action concerning the mark in federal court; and
- The use of the U.S. registration as a basis to obtain registration in foreign countries.
The trademark law and indeed all intellectual property law is extremely complex. If you are engaged in business and your livelihood depends upon being able to differentiate your goods or services from those of others, you are likely to want to register your trademark with the USPTO. Your ability to obtain that registration may well depend upon obtaining the services of an attorney to help you understand the law, traverse the process of registration and ultimately enforce your rights to prevent others from using your mark in the marketplace.
Michael Leonard, Esq. of San Diego Corporate Law is the attorney you can trust to assist you with understanding the law and registering your trademark, as well as your general intellectual property and business needs. He has the knowledge and experience to assist you in all of your legal needs. To schedule a consultation with Mr. Leonard to discuss your registration needs, or any other business-related matter, you can contact him by e-mail or by telephone at (858) 483-9200.