What’s Protected by Trademark?

A “trademark” can be any word, name, symbol, or device, or any combination thereof *used by a person (or entity), to identify and distinguish goods or services from those manufactured or sold by others, and to indicate the source of goods or services. (For purposes of this discussion, “trademark” will refer broadly to both trademarks and service marks)

*Trademarks can be registered federally either as currently in use, or having a bonafide intent to use, but generally speaking, trademark rights arise on use, not registration.

A trademark is one component of the business’s overall reputation and goodwill, which is commonly referred to as the “brand.” Trademarks can be words, symbols, logos, or any other device that is used as a trademark to distinguish the source of goods or services from others. Trademarks can even be sounds (NBC chimes bumper logo), colors (John Deere green), or scents (Play-doh). So long as the public is able to recognize it as a trademark, it can function that way. There are some trademarks that cannot be registered federally due to specific rules (e.g. prohibition against descriptive marks, marks that are offensive, marks that are primarily a surname), but inability to register does not mean that it cannot be used as a trademark.

Trademark law is a little different than the other types of intellectual property law in that its underlying policy objective is primarily focused on its benefit the public, not necessarily the owner of the trademark. Put another way, the main objective of trademark law is to prevent consumer confusion as to the source of goods or services in the marketplace, and this is accomplished by granting mark owners exclusive rights to use their marks in commerce and mechanisms to enforce their rights (namely, a cause of action in court).

Generally speaking, trademark rights arise upon first use, not first registration, except in cases where a federal application is filed under an “intent to use” basis prior to an actual use by a third party. A federally registered mark will have rights to the entirety of the United States, while an unregistered mark (called a common law mark), will have rights in the territories where it is actually in use. This could be limited to one state or even one city. If two unrelated entities are both operating using the same unregistered mark for the same or similar goods/services, there can be risk of consumer’s confusing one for the other and a potential legal battle between the two parties, so it’s important to check whether someone else is already using a mark before adopting it as your own.

Trademark rights only attach to the goods/services for which they are used. You can’t for example, trademark a slogan in the abstract, you must be using it in connection with the sale of particular goods or services, and your rights to it as a trademark will only attach to those goods/services (or closely related goods/services). Marks that have become famous (it’s a very high bar, think Coca-Cola, Apple, Nike, Disney) receive additional protection, and seem to be able to prevent use of the mark in all but nominative situations. In other words, famous marks are so distinctive to the public that if they are used at all, even on goods/services not offered by the markholder, the public would think there’s an association, so the law affords additional protection beyond the standard likelihood of confusion analysis used in an infringement lawsuit to determine whether two marks are too similar.

Not only must the trademarks be used in order to obtain and retain rights in them (trademark rights can be lost for non-use), the rights must also be enforced. Trademarks risk becoming diluted if infringement goes unchecked and risk becoming generic if they are co-opted into the general lexicon; a fate that has already claimed marks such as cellophane, trampoline, laundromat, videotape, escalator and even aspirin. Xerox was the subject of a somewhat famous corrective advertising campaign designed to prevent the Xerox name from becoming generic (a process called genericide). You can probably think of other brands seemingly at risk for genericide because of how the public uses the name: Band-aid, Kleenex, Ziploc . . . Protecting the brand means taking care to protect the trademark(s) used by the business, and it’s up to the trademark owner to police and enforce use of its trademark(s) to prevent trademark infringement and genericide.

About The Author: Alex Mueller advises businesses, artists, creatives and entrepreneurs in transactional matters, including business formation/structure, drafting and negotiating agreements, licenses, vendor agreements, and intellectual property matters such as clearance, risk analysis, market strategies and licensing agreements and intellectual property registration and enforcement. Her practice is concentrated on Copyright, Trademark and Entertainment law.