- Posted on: Oct 11 2022
By: Farzad A. Panjshiri [10/12/22]
Most people think of a “trademark” as a word or a logo. But, what is a “trademark?” can be a surprisingly complicated question and by far supersedes most people’s imagination.
Trademark and Service Mark
• To begin, a “mark” can actually be a trademark or a service mark. There is a difference. Simplified, the Lanham Act defines in Section 1127 of 15 U.S. Code that:
• A trademark is any word, name, symbol, device, or any combination thereof used by a person to identify and distinguish their goods from others.
• A service mark has the same function but identifies “the services” of a business. Services are identified as businesses classified in the last ten classes of a 45-class international classification system covering all goods and services.
In the United States, marks can manifest themselves in many different formats other than words or two-dimensional designs. These more unique mark formats are referred to as “non-traditional marks,” which some countries recognize more than others. Marks can be registered as:
Phrases/Slogans (JUST DO IT. – U.S. Reg. No. 1,875,307),
Sounds (famous Tarzan’s yell for toys – U.S. Reg. No. 2,210,506),
Scents (bubble gum scent for sandals – U.S. Reg. No. 4,754,435),
Federal Mark, State Mark, and Common Law Mark
The U.S. recognizes three different legal forms of a mark.
Federal marks are marks registered with the United States Patent and Trademark Office (“USPTO”). USPTO marks protect specific goods or services throughout the entire United States and its territories.
A “state” mark protects the mark in connection with goods or services in the particular state or states in which the mark is registered (like a federal mark but limited to the specific state that grants the registration). These have become relatively rare once the federal registration system was established.
“Common Law” marks are rights received from the actual use of a mark in commerce, meaning the placing of a mark on goods traveling through commerce or advertising services offered in commerce. These rights are limited to the specific geographical area where the mark is used. In the U.S., unregistered marks are protected under the Lanham Act in 15 U.S. Code Section1125(a).
Trade dress includes two different types:1) product design and 2) product packaging. Any ambiguous trade dress is treated by default as product design. It is important that both types of trade dress comply with the distinctiveness and functionality requirements, which proves difficult in many cases.
Product design is the shape or configuration of a product. Product designs can never be“inherently distinctive” and need to always “acquire distinctiveness” or “secondary meaning” to be allowed for registration and enforcement. This means that the mark needs to be marketed with a product long enough for customers to learn that the particular mark feature identifies the specific company’s product or service. In many cases, this means the company must advertise that this feature (such as orange doors for U-Haul or the magenta color for T-Mobile) refers specifically to the company’s product or service offering.
Product Packaging is the dressing or packaging of a product and it may be inherently distinctive, but in many cases, the product packaging also requires demonstrating “secondary meaning.”
Both types of trade dress cannot be “functional,” meaning “essential to the use or purpose of the product” or lowering its manufacturing cost or improving product quality.
The Lanham Act defines a collective mark as a mark owned by the collective entity (cooperative, an association, or other collective group or organization) and used by the members of the collective. There are two types of collective marks: 1) collective trademark or services mark and 2) collective membership mark.
A collective trademark or services mark is a mark adopted by the collective and used only by its members who identify their goods or services and distinguish them from those of non-members. An example is the mark “CPA”, used to indicate members of the Society of “Certified Public Accountants.”
A collective membership mark’s only function is to indicate that the person displaying the mark is a member of the collective group. It does not require the collective or its members to use the mark to identify and distinguish their goods or services. A common example of this might be a motorcycle club that displays this mark on a clothing item.
The Lanham Act defines a certification mark as any word, name, symbol, or device, or any combination thereof used by a person to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. These certification marks are not used by the owner of the mark, but by authorized users who are required to comply with particular aspects of the goods or services typically set forth in a set of written “standards.”
These standards tend to distinguish three different types of certification marks:
1) Geographic origin certification mark: certifies that the goods/services or the authorized users originate from a specific geographical region.
2) Quality, materials, or mode of manufacture standards certification mark: certifies that the authorized users of the certification mark met certain standards regarding the quality, materials, or mode of manufacture for their goods or services.
3) Labor performed by member OR workers met standards certification mark: certifies that the authorized users of the certification mark are specific members of an organization or union who perform the labor to produce the goods or render the services OR that the workers meet a certain standard.
Understanding the type of mark you use and protecting your mark accordingly is crucial for an effective, long-term brand protection strategy and national registration. If you have questions or need assistance with the selection, protection, and proper use of your mark, we suggest you speak with a qualified trademark attorney to guide you on what is best for your mark and business.
 Aloe Creme Labs., Inc. v. Am. Soc’y for Aesthetic Plastic Surgery, Inc., 192 USPQ 170, 173 (TTAB 1976).