It’s best to start any simple discussion of trademarks by distinguishing them from copyrights because they are often used interchangeably and incorrectly. While both trademark and copyright protect expressions, copyright protects any expression in a tangible form with the exception of names and titles, and trademark protects a business name or product. Often, however, copyright and trademark protections will apply to the same expression.
Generally, trademark law protects the name of a product or service, or any distinctive symbol, product shape or slogan used in advertising or on a website, even down to the distinctive features of a particular name or logo, such as the clear and distinctive lettering of the Coca-Cola logo. Essentially, the more distinctive the name or logo, the greater your chances of protection. Should a question arise regarding trademarks, courts will usually favor the business that first used the mark, where the second use of the mark would likely cause customer confusion. The particulars of these regulations are spelled out in federal statutes known collectively as the Lanham Act and state statutes which govern the use and protection of marks within that state’s geographic boundaries .
A trademark is considered “inherently distinctive” if it is unusually creative. If your unique logo is as distinctive as McDonald’s Golden Arches or the Nike swoosh, or includes made up words such as Xerox or Exxon, they are memorable and out of the ordinary. Inherently distinctive marks also include imaginative images or words that are surprising or unexpected in the context of their usage.
Trademarks or service marks consisting of someone’s name, or common or ordinary words, typically receive less protection because of their common usage. However, a non-distinctive mark may become distinctive over time if it develops great public recognition through usage and a great marketing campaign, such as aspirin or Kleenex. Yet even brand names, such as Victoria’s Secret, are not sacrosanct when it comes to receiving the ultimate protection of a mark and may still be substantially challenged by the smallest of businesses, as we will see in next week’s discussion of trademark infringement and dilution in the case of Moseley v. V.Secret Catalogue, In c..
While certain common law rights for a mark stem merely from the use of it, you will receive the greatest protection if you register the mark with the federal government and possibly the state government as well. Any mark registered with the federal government should be marked with the ® symbol and unregistered marks should be marked with the ™ symbol. Service marks, which are used for services rather than goods, may also be marked with ® once registered; however, the SM mark is often used prior to the mark’s registration although it has no legal bearing. Under U.S. law, service marks have a different standard of use in order to count as a use in commerce. Whereas a trademark needs to used on or directly in association with the sale of goods, a service mark must be used in commerce to complete the registration and protect against possible infringement. While federal registration was established by a federal statute it is not required to establish your rights in the mark but it is advisable to establish your origin and use and create substantial additional rights not available under common law.
The US Patent and Trademark Office offers an extremely user friendly website but it is always best to consult an attorney for your particular situation.