There seems to be a lot of confusion out there about what trademarks protect as opposed to copyrights and patents. It’s a pretty common question I’m often asked: should I protect this with a patent, a trademark, or a copyright—and what’s the difference. This post will be dedicated to answering that question. It will also be very long. Oh, and I suppose I need to include the standard disclaimer that trademarks are a very grey area of the law with a lot of “I know it when I see it” going on, so while I provide some examples throughout, it is important to have a licensed trademark attorney conduct a proper clearance search prior to applying for registration rather than just do it yourself or use one of those really low cost legal services providers (whose names I won’t mention here, but you know who they are).
We’ll start with trademarks because, well, that’s the topic of the blog post, and trademarks actually interweave very well with patents and copyrights. First and foremost, trademarks protect your brand from misuse by your business’s competition while establishing a cohesive brand for your current and potential customers. As a result, trademarks protect things like your business name, your product names, your service names, any logos you use with your business and products or services, any slogans you use with your business and products or services, certain distinctive sounds you may use to identify your business or your products, and certain distinctive colors you may use to identify your business or your products. In some cases, depending on the distinctiveness of the design, you may even be able to secure trademark registration of the design of a product itself (or at least the decorative bits) under a sub-type of trademark called trade dress. More on that later. Let’s start with your business name.
Trademarks Protect Business Names
When clients come to me looking for trademark protection, I almost always tell them that if they can only trademark one thing, they should trademark their business name. That’s because no matter what you sell, and no matter what services you provide, they’ll all be linked back to your business—and your business is the first key step in establishing your brand. There are exceptions, of course, such as companies that are owned by other, larger, holding companies and it really won’t make any sense to trademark the name of the holding company since the public never really sees anything the holding company directly manufactures or sells, but for the most part, especially for small businesses and startups, protecting the name of your business with a trademark is paramount.
Trademarking your business’s name, however, is one thing, but trademarking a business model or a business idea is something quite different. In other words, you can’t trademark a business model or a business idea. Why? Because what’s the product or service being sold? Trademarks do not protect things as amorphous as your idea for a business. Trademarks also do not protect the general model of your business because that’s not the end product or service you’re selling to your customers—merely a means to and end. However, and here’s our first crossover with another type of intellectual property law, you can patent a business model. Well, technically you patent a business method, which is different from a model in that the model is just the basic outline of how you’re going to grow and develop your business while a business method is the specific way of operating that business. But enough about patents, let’s get back to trademarks.
Trademarks Protect Product Names
Most people think of the name of a product when they think of trademarks. And rightly so, since trademarks protect product names so well. In fact, some companies opt to protect the names of their products before they protect their business names, especially in cases where the product is so much more customer focused than the business itself.
Now, in terms of what types of products can be trademarked, that can be a bit of a tricky question. Generally speaking, any product name can be trademarked so long as it is not interfering with another trademark such that it causes confusion with that other trademark. Also, your product’s name cannot be too generic or descriptive. In other words, you can’t trademark Kleenecks for your new line of facial tissue since it would be too similar to Kleenex. And you can’t trademark the word “Cards” for your new line of playing cards since that’s a merely descriptive term for what the product is and not a unique name to brand the product in and of itself.
Trademarks Protect Service Names
Well, let’s get something straight here first. Technically trademarks protect product names and service marks protect service names. But trademarks roll off the tongue a lot easier than service marks, so that’s what I’ll be sticking with here. Similarly to products, you can absolutely use a trademark to protect the name of your company’s service. Whether you’re a plumber, a web startup, or a food truck, the service you provide can easily be trademarked—provided you follow the same rules about confusion and genericness outlined above.
Trademarks Protect Logos
And here we come to another area of trademark law that overlaps with another branch of intellectual property. Logos can be protected by trademark law when they are used to identify a business, product, or service. At the same time, if your logo is really unique and you want to give it that little bit of extra protection, you can also copyright your logo since it is a unique artwork. As with trademarking a business name, product name or service name, the same general trademark rules apply: no confusion, no genericness. Unfortunately, it seems that with logos, there’s often of a desire to piggyback off the popularity of something else, as I’ve recently seen logos that mimic the Breaking Bad logo, sports teams logos, and some that look just like the typography used to brand certain movies. Along with those general rules for trademarks, you’ll also want to keep an eye out for unique problems with images, such as whether they depict a living person, and whether they’re using a flag as a part of the logo.
Trademarks Protect Slogans
Slogans are just like business names, product names, service names, and logos, in that so long as they’re used to brand your product or service, you can trademark a slogan. Keep in mind that you’re not going to find much luck trademarking a slogan that’s already common use, unless you can really show that the general public easily associates that slogan with your product. And in general, because the whole goal of the trademark office (well, one of them anyway) is to prevent confusion among the public as to which product came from which company, a slogan needs to be used on a very regular basis with the product or service in question in order to render it trademarkable.
Trademarks Protect Sounds
Now here’s an area of trademark law that doesn’t get brought up too often: sounds. Yes, you can trademark a sound. And yes, it is very difficult to trademark a sound. As a result, there are very few sounds that qualify for federal trademark registration. That said, if your business uses a sound that is immediately recognizable, like the Intel chimes or the Apple startup sound, then there is a possibility it qualifies for trademark protection. It also helps if you can reduce that sound to sheet music. Ultimately, registration for sounds depends on how long you’ve been using that sound, whether that sound is instantly recognizable as belonging to you even when taken out of context, and is unique enough not to be confused with any competitors’ sounds.
Trademarks Protect Colors
Here’s another unique aspect of trademark law. You can use a trademark to protect a color used to identify your brand. Most commonly, we think of Tiffany blue, that easily identifiable darker version of robin’s egg blue but not quite turquoise color, as a trademarked color, but other companies (even an insulation company) have registered marks for their distinctive colors.
So there you have it, an overview of what trademarks protect. At this point, you’re probably thinking a number of things: 1) How can I register a trademark for my business now that I know it may be protectable? 2) I’m super confused…Why did he have to give me so much information at once? 3) What about that trade dress thing he mentioned before? Well, I have solutions to all of your questions. First off, Norton Law Corporation can help you register your trademark for a flat fee plus the government fling fees. Second, if you’re confused and you’d like to chat about trademark law or really any aspect of business law in general, shoot me an email or give me a call from our contact page. Finally, trade dress is being saved for another post since it can be a huge discussion in and of itself.