A trademark is a word, name, symbol, or device that is used to distinguish one’s goods from others’ goods. A service mark is a mark that is used in the marketing of services rather than goods. The processes for protecting trademarks and service marks are the same, so for simplicity, we will use the term “mark”.
Marks can be protected in three ways: common law use, federal registration, and state registration. You do not have to register a mark under the common law; rights in a mark can be established by proof of legitimate use of the mark. However, only limited protection is provided under the common law.
Federal registration of a mark provides the broadest protection of the mark, but is also the most expensive and time consuming. Federal registration provides constructive notice of a registrant’s claim to a mark, meaning that all others are presumed to know that the mark is registered and cannot be used by anyone other than the registrant. There is a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide. The registrant of the mark also has the ability to bring action concerning the mark in federal court.
State registration, however, is simpler and less expensive than federal registration, with protection of the mark being limited to the state(s) in which it is registered.
While a mark cannot be protected by copyright, business literature can be copyrighted. This applies to company brochures, advertising, marketing materials, and so on. No publication or registration or other action in the Copyright Office is required to secure copyright. Copyright is secured automatically when the work is created, and a work is “created” when it is fixed in a copy for the first time. In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright. However, registration is not a condition of copyright protection; meaning, you get some “common law” protection. Even though registration is not a requirement for protection, the federal copyright law provides several inducements or advantages to encourage copyright owners to register. Among these advantages is that registration establishes a public record of the copyright claim.
To determine whether mark or copyright registration is something you should pursue, we will need to discuss further the “names” and types of materials you may be interested in protecting and their importance to your business.
By Guest Blogger Mary J. Drury, Esq.