Intellectual Property: Trademark Rights

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

My name is Enrico Schaefer and I specialize in trademark and intellectual property issues.  Today, we’re going to be talking a bit about intellectual property and trademark rights.  Some of the questions we receive from clients and prospective clients all the time are, “what is the difference between the various types of intellectual property?”  “Is a trademark intellectual property?” “What is the difference between a trademark and a copyright?”  “What is the difference between a patent and a trademark?” “What is the difference between a patent and a copyright?”  Today, we’re going to have a little bit of an intellectual property primer and we’re going to talk a little bit about the differences between various forms of intellectual property and, in fact, what is intellectual property.  Today, we’re going to be dealing with a very broad topic of IP.

Now, if you go to the Wikipedia entry, you’ll see a great rendition of information about intellectual property.  Essentially, intellectual property talks a lot about the exclusive rights that are granted to a person or a company to something that is intangible.  So, when you think about intellectual property, you’re always thinking about this concept of exclusive rights.  In addition, exclusive rights are important because what you’re doing is you’re trying to figure out why this is important.  And the reason it’s important is because when someone has exclusive rights, they’re the only one in the world that gets to use that idea, that name, that brand, that piece of artwork, that photograph, so we’re always dealing with the concept of exclusive rights in dealing with intellectual property.  Moreover, bundled with that exclusive right, which goes to the owner, is the concept that you can license your intellectual property and, more importantly, that you can stop people from using your intellectual property if they do not have permission. Thus, you can send them a trademark infringement threat letter, a copyright infringement threat letter or a patent infringement threat letter.

Let’s talk a little bit about intellectual property law and what that seeks to convey.  Again, intellectual property law seeks to convey exclusive rights to a variety of intangible assets.  By intangible assets, we mean something that cannot be touched.  So, for instance, if I have a shoe company and I’m manufacturing shoes, I’d have a tangible asset, the shoe.  But if I idea, then I have an intangible piece of property.  If I have a name that goes with my product, a brand, then that is an intangible asset.  So, there are different types of intangible assets and thus, there are different types of intangible property.  Some types of intangible property deal with copyrights and if we take a look at some of the first examples here of music, literary and artistic works, these are intellectual property rights that are going to be governed by copyright law.  When we look at discoveries and inventions, we are going to be talking about patents and trade secrets, both different types of intellectual property.  If we’re going to be talking about words, phrases, symbols and designs, we’re in the area of law known as trademark law. Trademarks are a type of intellectual property which protect and provide exclusive rights to the use of a word, a phrase, a symbol or design.  The Nike swoosh is a trademark of the Nike Corporation and only Nike can use that swoosh.  American Airlines is the name of an airline company.  It is a word and only American Airlines can use that word.

So, these are the types of things that we call IP (intellectual property).  Today, we’re going to be talking a little bit about a particular type of intellectual property and that is trademark intellectual property.  So, trademark intellectual property is going to be the type of intellectual property that deals with words, phrases, brands, slogans, these types of things.  So, let’s start out by talking a little bit about what is a trademark.

A trademark is something that is going to designate goods or services in the market, so that if you are going by the company name Traverse Legal, people know when they go and see a designation of a website as Traverse Legal, or another use of the word Traverse Legal that they’re dealing with my law firm.  So, Traverse Legal is, in fact, a trademark.  There are lots of trademarks out there.  Everyone who, in fact, uses a brand or a company name is in all likelihood using a trademark.  So, trademark is something that is distinctive.  And by distinctive what we mean is that it’s going to be something that is going to be unique identifier for you.  And a distinctive mark is something different than a generic mark.  So, if I say I’m going to run a tool company and I’m going to sell tools and I named my company “tools”, that’s not distinctive.  If I’m going to run a tool company and call it Geronimo, that is distinctive, so a brand has to be distinctive in order to have trademark rights.  And it is going to be used by an individual a business, an organization or some other legal entity to identify products or services (goods or services) in the market.  So, it’s going to tell consumers who you are, and it’s going to give consumers confidence to know when they buy something from you, they, in fact, are dealing with you.

So, we’ve got different types of trademarks.  If it’s a common law trademark and you’re not registered yet, you can use the TM designation to say I’m claiming this word as my trademark.  If you are providing services as opposed to selling goods, you can use the SM designation.  And once you get registered with the trademark office, you can use the circle ®, which not only tells someone that you’re claiming a trademark, but also that it is registered and you are going to protect it to the nth degree.

A trademark can be a word or a name, it can be phrase or a slogan, it can be a design or a logo or an image, and all these things can be protected as trademarks. And, of course, if you own a trademark and someone is using something that is confusingly similar, the owner of the trademark can sue for trademark infringement, can send a threat letter alleging trademark infringement, this type of activity is very, very common.  So, obviously, there are lots of trademarks out there and many of them are very familiar to all of us. So, if we get into this little image here, you’ll recognize a lot of these trademarks, right?  You’ve got Coca-Cola, you’ve got Christian Dior, you’ve got Google, these companies have the exclusive right to use these names, these words and the designs that you’re seeing here in commerce and no one can use something that’s confusingly similar.

Keep in mind that trademarks are protected beyond the literal word or the literal design; it really is anything that it is similar.  So, if you were to take a look at Levi’s here.  If you were to start a jean company and use a red logo that was vertical that used this block style of letters, even if you picked a different word altogether, you might be the subject of a threat letter for trademark infringement from Levi.  If you’re software or hardware vendor and you used an Intel type logo or deign for your brand, you might get a threat letter, even if you pick a different company.  And if you are Canon and you’re in the photography and printer business and someone else tries to register a trademark or use a trademark that is Cannon or Cannin, you’re probably going to get a trademark infringement threat letter because trademarks are broader than the actual use of the word and the actual design; they protect around designs.

So, at, we’ve got a lot of information about trademarks.  We encourage you to go to our website and take a look around.  We have everything there that you need to know in order to determine how to register a trademark, to understand what a trademark is, and how to protect or license your trademark.

The key items that I want you to take away for today are that IP (intellectual property) contains a lot of different elements, but if you have intellectual property, whether a copyright, a patent,  a trade secret or a trademark, you have the exclusive right to use that in commerce.  That means you can stop other people from using things that are, in fact, similar.  The other concept I want you to take away today is that a trademark is a name, a phrase, a symbol or design that designates who you are and tells the world your name.  You need to protect it and you need to establish it; you need to grow it as an asset.

My name is Trademark and Intellectual Property Attorney Enrico Schaefer and we will see you next time.  Have a great day!

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