What is a trademark?

A trademark is a distinctive word, phrase, logo, domain name, graphic symbol, slogan, or other device that is used to identify the source of a product and to distinguish a manufacturer's or merchant's products from others. Some examples are Nike for sports apparel, Gatorade for beverages, and Microsoft for software.

Consumers often make their purchasing choices on the basis of recognizable trademarks (sometimes referred to simply as "marks"). For this reason, the main thrust of trademark law is to make sure that trademarks don't overlap in a manner that causes customers to become confused about the source of a product.

If two similar trademarks are being used by companies that provide different products or services, there may not be a trademark conflict. This is especially true if the two businesses serve only local markets and are hundreds of miles apart.

However, in the case of trademarks that have become famous -- for example, McDonald's -- the courts are willing to grant much broader protection and prohibit almost all use of the trademark (or anything close to it) by anyone other than the famous mark's owner. For instance, McDonald's was able to prevent the use of the mark McSleep by a motel chain because McSleep traded on the McDonald's reputation for a particular type of service (quick, inexpensive, standardized). This type of sweeping protection is authorized by federal and state statutes (referred to as anti-dilution laws) designed to prevent the weakening of a famous mark's reputation for quality.

In order to be eligible for trademark protection, a word or phrase must be "distinctive" -- unique enough to help customers recognize a particular product in the marketplace -- rather than generic, like "The Coffee House." A mark may either be inherently distinctive (the mark is unusual in and of itself, such as Diesel fashions) or may become distinctive over time because customers come to associate the mark with the product or service (for example, McDonald's restaurants).

What is a service mark?

For practical purposes, a service mark does the same thing as a trademark -- but while trademarks promote products, service marks promote services and events. Some familiar service marks are: Amazon.com (retail website), Jack in the Box (fast food service), Kinko's (photocopying service), Blockbuster (video rental service), CBS's stylized eye in a circle (television network service), and the FedEx logo (delivery services).

What is trade dress?

In addition to a label, logo, or other identifying symbol, a product may come to be known by its distinctive packaging -- for example, the yellow packaging of Kodak film. Similarly, a service may become known by its distinctive decor or shape -- for example, the orange-like structure of Orange Julius juice stands.

Collectively, these types of identifying features are commonly termed "trade dress." Because trade dress often serves the same function as a trademark or service mark -- the identification of goods and services in the marketplace -- trade dress can be protected under the federal trademark laws and in some cases registered as a trademark or service mark with the U.S. Patent and Trademark Office (USPTO).

What is a collective mark?

A collective mark is a symbol, label, word, phrase, or other mark used by members of a group or organization to identify goods, members, products, or services they render. Collective marks are often used to show membership in a union, association, or other organization -- for example, ILGWU is a collective mark for the members of International Ladies Garment Workers Union.

A collective mark can also be used as a trademark or service mark. For example, when the Girl Scouts sell cookies with their collective mark on the package, that indicates that goods are a product of the organization (that is, they are Girl Scout brand cookies). This way, the same collective mark can be used to indicate membership or to sell products and services.

What is a certification mark?

A certification mark is a symbol, name, or device used by an organization to vouch for products and services provided by others -- for example, the "Good Housekeeping Seal of Approval." This type of mark may cover characteristics such as regional origin, method of manufacture, product quality, and service accuracy.

Some examples of certification marks are: UL (the Underwriters Laboratories certification of electrical standards), Stilton cheese (a product from the Stilton locale in England), and Harris Tweeds (a special weave from a specific area in Scotland).

Q: What is a trademark?
A: A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

Q: What is a service mark?
A: A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

Q: How do I know whether I need patent, trademark, and/or copyright protection?
A: Patents protect inventions and improvements to existing inventions. Copyrights cover literary, artistic, and musical works. Trademarks are brand names and/or designs which are applied to products or used in connection with services.

Q: What are "common law" trademark rights?
A: Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration.

Q: Do I have to register my trademark?
A: No, but federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

Q: How do I find out whether a mark is already registered?
A: You may conduct a search free of charge on the USPTO website using the Trademark Electronic Search System (TESS) at http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=English&p_d=trmk. An attorney or private trademark search firms will conduct searches for a fee.

Q: Who may file an application for federal trademark registration?
A: Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.