We've started our IP discussions with Trade Secrets and Copyrights but today I want to tackle the basics of Trademark protection. I hear trademark and copyrights getting confused all the time. They're actually very different in terms of what can be protected by each and what the test is to determine whether an infringement has occurred. Let's dive in, shall we?
First things first, a definition. A trademark is any word (or phrase), name, symbol, sound or design that identifies and distinguishes one company's products from those made or sold by competitors. When it comes to trademarks, what can be protected is very broad. In fact the U.S. Supreme Court has literally said they are to be viewed "in the broadest of terms".
The goal of trademark protection is to make it possible for companies to build "brand equity" or a reputation for consistent quality, reliability and value. If you're Tesla and you have a reputation for making quality cars, it would really suck if another company came along called "Tasla" that made not-so-great cars. It would suck on both sides: for the consumer who expects the quality of a Tesla but gets a Tasla quality car and also for Tesla whose brand is losing its credibility when consumers begin mixing up the two companies.
So what are some examples of protected trademarks? The Nike Swoosh from Nike, Inc. Christian Louboutin's red soles. Even distinctive colors like the brown UPS uses on its trucks and uniforms can be trademarked when consumers have come to associate them with the color. Same goes for distinctive scents and sounds (like the NBC chime).
Trademark law also extends to "trade dress" which are things such as distinctive packaging or even the configuration of a store when it indicates or identifies the source of the product and distinguishes it from others. For example, Apple, Inc. obtained trademark protection for "the minimalist design and layout of its retail stores comprised of a 'clear glass storefront by a paneled facade' and the signature 'oblong table with stools...set below video screens.'"
Another trademark protected piece is the "trade name" which is a business's formal, legal name, which must usually be registered with the state (or locally in some cases). This might actually be the most important trademark a company can own.
So what makes something trademark protectable?
When it comes to trademark protection, your identifying mark must be distinctive, meaning it uniquely identifies your company. The more distinctive, the better. It can't just describe what the company does. So generic words like "software" or "sailboat" aren't going to be protected. In contrast, if you have a distinctive mark that uniquely identifies the product to a specific company you will be protected.
If your mark is "inherently distinctive" you are going to have the strongest form of trademark. An inherently distinctive mark has no meaning within the industry before your company adopts it. There are three types:
So this should give you an idea of what Trademarks are. Stay tuned for future posts as we dive in deeper on how to choose strong trademarks for your company and how to protect them.