I have written a lot of blog posts over the last 15 years or so. A lot of these posts are on very specific issues that come up infrequently. Quite a few of them are on obscure topics. But I don’t think I have ever addressed the fundamental question of “What is a trademark?” Time to write about some trademark basics.
What is a Trademark?
Although we most often think of a trademark as a word (think: NIKE), or a few words (think: JUST DO IT.), or a symbol (think: the Swoosh logo), a trademark can actually be anything that identifies a brand owner to you, the customer. The Lanham Act, the body of law that regulates federal trademarks, defines “trademark” (and service marks) as:
- any word, name, symbol, or device, or any combination; and
- which is used by a person (or entity); and
- which is used in commerce; and
- to identify and distinguish their goods (or services) from those of others; and
- to indicate the source of the goods (or services), even if that source is unknown.
There is a bit to unpack there. Let’s tackle each bullet point on its own:
A Trademark Is Any Word, Name, Symbol, or Device, or any Combination
Usually, a trademark is made of words or symbols. Most of the trademarks you encounter every day are of these form. We can them “word marks” – for words – and “design marks” – for logos. Often times, trademarks are combinations of words and design elements; some people call these design marks, some call them composite marks.
But, a trademark can really be anything. Like a color, or a sound or a smell. If you think of the blue color that Tiffany & Co. uses on its boxes, that is a protected color mark. Because it is a non-standard type of trademark, it is actually called “trade dress,” but it still a form of trademark protection.
The lion’s roar at the start of an MGM movie? Also a trademark, called a sound trademark. Think of the NBC chimes, or the Harlem Globetrotters jingle, or the THX music. Those are all sound trademarks.
A Trademark Must be Used
A trademark has to be used. I started to write, “Obviously, a trademark has to be used.” But, in many countries, trademarks do not have to be used – people or companies can file and register trademarks without proving that they have even used them. But here in the US, all trademarks (with the exception of trademark applications based on foreign trademarks), have to be used.
“Use” means the trademark is placed on or near the products or services. The trademark owner can apply the trademark to product packaging, or put it on the product itself, or display it in an advertisement for services, etc. But the mark must be used in connection with the product or service.
Used in Commerce
This can get quite complicated. I will probably go into more detail in a later blog post.
The US Patent and Trademark Office is a federal governmental entity. It operates as part of the Department of Commerce, which can only regulate activity under the jurisdiction of the Commerce Clause of the Constitution. This limits the authority of the Trademark Office.
Under the Commerce Clause, the government has the power “to regulate commerce with foreign nations, and among the several states, and with the Indian tribes.” Because Congress has the power only to regulate commerce among the states, the Trademark Office can only regulate trademarks that are used among the states.
So, for the Trademark Office to register a trademark, the owner must use it on products or services affecting commerce among the states. Said in another way, the sales activity must affect interstate commerce, or the Trademark Office cannot regulate the trademark used with that sales activity. Said in yet another way, and very generally, your products or services must be sold across state lines to qualify your trademark as being used in commerce and thus eligible for federal trademark protection. There are exceptions, of course, but I will get into those in a later post.
A Trademark Indicates the Source of the Goods or Services
I’ve taken these last two out of order. A trademark always indicates the source of the product or service with which the mark is being used. That just means that a trademark operates to brand the product or service. When consumers see a trademark on a product or service, they associate it with a specific brand and the qualities and characteristics that correspond to that brand, for better or worse.
You do not necessarily need to know who or what that source is. Often times, you don’t. you interacts with hundreds of trademarks every day. You think of the trademark as the company. NIKE, SONY, LOGITECH, DANNON, TILLAMOOK, MCDONALDS, FROSTED FLAKES. But how much do you know about the company that provides that product?
The cereal example is an easy one. Everyone knows FROSTED FLAKES. Some people know that Frosted Flakes comes from Kellogg’s. Fewer people know that the company is actually called Kellogg North America Company. Does any of that matter to the 7-year old eating Frosted Flakes? Not really – she just knows that she likes the cereal called FROSTED FLAKES or the one with Tony the Tiger on the front (also a trademark).
Identifies and Distinguishes Goods or Services from Those of Others
Very similarly to indicating the source, trademarks distinguish sources. A trademark protects the consuming public’s expectation of consistency.
A company works hard to build goodwill in its trademarks, or establish a reputation or known quality for its brand. That reputation or quality may be one of high quality, low prices, a particular tang to its food, the way its product feels, anything. But, that quality is something that company wants the consumer to use to differentiate other products.
When that 7-year old eats her Frosted Flakes cereal, she knows it will taste differently from the Cheerios cereal her brother eats, because they come in boxes marked with different words and logos.
A trademark is any sign, symbol, design, or expression that identifies and distinguishes the goods or services of a particular person or company from those of others. It acts as a badge of origin, representing the reputation and quality associated with a specific brand. The primary purpose of a trademark is to protect the unique identity of a brand and prevent confusion among consumers.
If you have further questions about trademarks, or need help searching and selecting a good trademark or filing for federal trademark protection, please contact Phoenix trademark attorney Tom Galvani at 602-281-6481.