What do trademarks protect?

What are trademarks and service marks?

A trademark (for products, often referred to as “goods” when discussing trademarks) or a service mark (for services) is something that identifies the source and quality of a product or service. They are referred to together as “marks.” Most of the rules that govern trademarks and service marks are the same. For simplicity, unless the rule is specific to service marks and services, we will talk about trademarks and products only.

A mark may be a word, design, color, scent, or sound. Once one company has chosen a particular mark to identify its products, no other company can use the same or similar mark to identify the same or similar products or services. The point of this is to prevent consumer confusion, the cardinal sin of trademark law. A consumer should, the thinking goes, always be able to identify the source of goods or services the consumer is purchasing by relying on a mark. If there is a likelihood of consumer confusion, or a risk that consumers may not be able to identify the source of products they are purchasing, the newcomer must change its mark.

Since a mark can be anything, are there limits at all on what marks may be?

Yes, there are several limitations on what marks may be and how they may be used. They must be used in commerce; they cannot be functional; they must be distinctive; and they cannot be descriptive or misdescriptive. Let’s explore what each of those terms means.

A mark must be used in commerce. This means that the mark must be used in association with the sale of products or services. In the case of trademarks, this means that the mark must be used on packaging for the product, on the product itself, or at the point of sale for the product. In the case of service marks, this means that the mark must be used in association with advertising for the service such that consumers understand that the mark represents the source of the services.

A mark cannot be functional. This means that a mark cannot be necessary for the product or service to work right, or for a person to describe the product or service. For example, a person could not use the word “door” by itself as a trademark for a company that makes doors. It would be impossible for other door makers to sell their doors if they were prohibited from using the word “door” to describe them. Likewise, the scent of a perfume cannot be trademarked because it is necessary for perfume to have a scent in order for it to function properly. Where a scent is not functional, though, it is a perfectly acceptable trademark. For example, a sewing thread can have a scent for a trademark.

A mark must be distinctive. This means that it must not be the same as or too similar to another company’s mark; and that it must be associated with the goods in the mind of consumers.

A mark may not be either descriptive or misdescriptive. If a mark is descriptive, it merely describes the goods or something about the goods. For example, a furniture store named “The Furniture Store” would be merely descriptive. If a mark is misdescriptive, it inaccurately describes a product in a misleading way. For example, the name “California’s Best” for a wine that is made in Kansas would be misdescriptive.

What about certification marks?

A certification mark is something that an issuer uses to certify something about the goods or services provided by another. It has similar rules to trademarks and service marks, and can take similar forms. The main difference is that the owner of the certification mark cannot be the user of the certification mark, whereas the owner of a trademark or service mark must use the mark or authorize a licensee to do so.

A classic example of a certification mark is the Energy Star mark. It is owned by the U.S. Environmental Protection Agency (EPA), but it is used by manufacturers of household electronics and appliances to show that their products are more energy-efficient than most other items sold in the same category. Only authorized manufacturers can use the mark, and there are rules about how to maintain certification.

Some parts of this post originally appeared on my law firm blog, the Web 2.0 Law Blog.

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