What is a trademark?

A trademark is a type of intellectual property that purveyors of goods or services acquire by using some distinctive expression to identify their goods or services and to distinguish them from others available in the market. They protect brands and other non-functional aspects of goods or services by acting as an identifier. They also serve the important market function of communicating information about the quality of products and services to consumers.

A service mark is like a trademark except for it denotes a given entity provides a service as opposed to a product. Service marks generally afford the same rights on the holder as trademarks.

The distinctions between trademarks, copyrights, and patents, the three main types of intellectual property recognized in the United States, are not necessarily intuitive.

Copyrights are protections for original works of authorship, which are fixed in tangible form. This allows for the creators of literature, artwork, computer software codes, films, and other mediums of expression to publish, distribute, and profit off their creations without counterfeiters or copycats undermining them.

People who invent some novel instrument, material, or process, which has some utilitarian purpose may apply for and receive patent protection from the federal government. Medicines, computer hardware, and complex manufacturing methods are all common candidates for patent protection.

What types of things can you trademark?

Trademarks usually take the form of words or images, such as a company name or logo. However, a trademark can take the form of any word, name, device, symbol, shape, sound, texture, or even a smell, so long as it is used to identify and distinguish a good or service from others available in the market. Important to remember is that practically anything can be trademarked so long its purpose is primarily to help consumers identify a given product or service, not something inherently useful about the product or service. Some things you probably didn’t know are trademarked:

• Boise State’s blue turf football field
• making fiberglass insulation the color pink
• Fritos Brand Honey BBQ flavored corn chip’s spiral shape
• texture of the name “Stevie Wonder,” in Braille
• the sound of a lion roaring at the beginning of an MGM production
• the smell of Play-Doh.

And some interesting attempts to get federal trademark protection that were denied:

• Walmart’s application to trademark its familiar smiley face, on grounds that the picture existed in the public domain,
• Cadbury’s attempt to trademark a distinctive shade of purple, you know the one
• Syracuse University wanted the exclusive rights to use the word “orange” in connection with college sports.

What are the requirements for a trademark?

In the United States you establish trademark rights, not by registration, but by use of the mark in connection with the sale of some good or service. Merely by offering up some good or service, branded by a mark, you are beginning to establish the right to exclude others from using the mark. The strength of your legal rights to protect against competitors using your mark depend on the duration of its use, the geographic scope in which the goods or services are offered, the amount of recognition the mark has with the consuming public, and the distinctiveness of the mark.

This chart outlines the different categories of distinctiveness and how much protection they’re afforded:  

Should you register your trademark?

As previously indicated, owners are not required to register their trademarks in order to own them and exercise legally protected rights in them. However, registration does provide owners with real tangible benefits. Firstly, registration provides a presumption of validity in court if someone else tries to claim a right to your mark. Secondly, federal trademark registration creates the possibility of recovering attorney’s fees and triple damages in the event you successfully bring a suit against an infringer. This provides a substantial disincentive for potential infringers to keep using your mark after you demand for them to stop.

Owners have two options if they wish to register their mark: registering with the Federal Patent and Trademark Office (USPTO) or with the Department of State here in New York. Registering a trademark with the USPTO can be somewhat more expensive running anywhere from about $250 to $350, depending on the type of mark you are attempting to register. NY State registration, being only $50, is cheaper than federal registration, but offers a much more limited scope, geographically and substantively, of protections to registrants.

Use it or lose it.

One interesting aspect of trademark law that distinguishes it from other intellectual property regimes is that you can inadvertently forfeit the protection established by owning a trademark. If the owner of a trademark fails to maintain a trademark by continuing to commercially utilize it, it can lapse and anyone can use it without consequence. This can occur even where the owner’s registration is up to date!

With an ever-increasing portion of companies’ value determined by the intellectual property they own, it is more important than ever to make sure that your organization understands its trademark rights and that it determines what the best strategy for securing those rights is. For more information visit the USPTO’s website at https://www.uspto.gov/trademark or speak to an attorney.