What is a Trademark?

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Types of Marks

Trademarks/Service Marks. A trademark is any word, symbol, design, device, logo or slogan that identifies and distinguishes one product from another. Other examples of trademarks include Bayer as a trademark for aspirin and Gallo as a trademark for wine. A mark that is used in the sale or advertising of services to identify and distinguish services performed for the benefit of others is known as a service mark. For example, Super Shuttle is a trademark for an airport shuttle service. Both service marks and trademarks are often referred to as trademarks (as we do at this website). A trademark does not have to be words, it can be a visual image (like the Disney mouse ears), music, package designs or even architectural features of a building. For example, McDonald's "golden arches" or the image of Colonel Sanders on Kentucky Fried Chicken are both trademarks. A trademark is usually applied to containers or labels for the goods. A service mark, however, is used in advertisements or promotional material that identifies the services rendered in commerce. A mark can function as both a trademark or a service mark. For example, the mark Abba is used by a Swedish pop group. When the group provides entertainment services such as concerts, Abba functions as service mark. When the group releases record albums, Abba functions as a trademark.

Collective Marks.  A collective mark is used by members of a cooperative, an association or other collective group or organization to indicate membership. This is the purpose of a collective mark -- to indicate that the user is a member of an organization. For example, the distinctive eagle, placed within the arrow-head shaped crest with the letters "GS" is a collective mark that indicates membership in the Girl Scouts of America.

Certification Marks. Certification marks have been described as a "special creature" of trademark law. The function of a certification mark is different than a trademark. A certification mark is used in connection with products and services to certify regional or other origin, material, mode of manufacture, quality accuracy, or other characteristics. A certification mark is always used in conjunction with another mark. That is because the owner of the certification mark does not produce or sell goods, it only certifies some quality of the goods or services.  For example, various companies grow and sell potatoes under different trademarks. However, if a consumer purchased a brand of potatoes that had a the IDAHO certification mark, then the consumer would have certification as to geographic origin of the product.

The Right to Stop Infringers

The owner of a trademark may exclude others from using a similar trademark on similar goods or services. The underlying principle of trademark law is to protect consumers against confusion. In some cases, use of a similar trademark may be barred even if consumers are not likely to be confused. This is because a court has determined that the use of the similar mark dilutes or tarnishes the trademark.

Goods and Services

One of the cornerstones of trademark law is that protection for a mark only extends to the particular goods or services with which the mark is used, intended to be used, or likely to be used. For example, one company may own a trademark for the term Camel for cigarettes. This company will have difficulty stopping another company from using Camel as a trademark for water storage containers.  The rationale is that the purpose of trademark is to avoid consumer confusion among competitive or related goods.

First Use in Commerce

Trademark law is regulated by both the federal and state governments. Depending on various factors, lawsuits for infringement of trademarks may be brought in federal or state court. Trademark rights are acquired by using the mark in commerce. Unlike other forms of intellectual property, trademark law does not grant rights to the person who first creates the trademark - only to the person who first uses it in commerce.

Federal Registration

Registering a trademark with the U.S. Patent and Trademark Office (USPTO) is not mandatory but it provides many benefits including:

  • Right to Use the ® Symbol. Only the owner of a federally registered mark may use the symbol 7, in conjunction with the goods or services. Constructive Notice of Date of First Use. The filing date of the application is the constructive date of first use of the mark in commerce and gives the registrant nationwide priority as of that date.
  • Right to Sue in Federal Court. The registration grants the right to sue in federal court for trademark infringement.
  • Statutory Damages and Attorney's Fees. The owner of a registered mark may recover lost profits, damages and costs in a federal court trademark infringement action. In addition, in some cases, the owner may be awarded treble damages and attorneys' fees.
  • Constructive Notice of Ownership Claim. Federal registration of a trademark provides constructive notice of a claim of ownership.
  • Criminal Penalties and Damages. Certain criminal penalties and treble damages may be assessed in an action for counterfeiting a registered trademark.