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What are Trademarks?

Posted by Wes Schwie | Jul 26, 2021 | 0 Comments

Trademarks, trade dress, and design patents are each exclusionary intellectual property rights that protect non-functional aspects of an owner's business operations and product lines by giving the owner legal rights to prevent others from using them. While each of these routes to protect an owner's intellectual property is somewhat similar and overlapping, differences exist.  Each intellectual property right will be discussed below and then compared and contrasted with the other.

What Are Trademarks?

Trademarks[i] and service marks[ii] are words, phrases, symbols, designs, or some combination thereof. The public uses trademarks and service marks to identify and associate a good (that is, some physical product) or service (such as plumbing, delivery, or photocopying services, etc.) with a particular source of that good or service.[iii] In other words, trademarks serve to distinguish in the “public mind”[iv] the origins of various goods and services. For example, when members of the public see the following marks on laptop computers:

they generally associate the laptop on which the trademark is found with Apple Inc., Dell Inc., and HP Inc. [v], respectively. The Apple, Inc. mark is an “image” mark, the Dell Inc. mark is a stylized “word” mark, and the HP, Inc. mark is a combined image and “word” mark.

Trademarks can protect images, words, word phrases, website domain names, and anything else that serves to identify the source of a particular good or service. Trademarks may take on a serious tone or its polar opposite – downright whimsical. The strength of a trademark depends upon many factors – time used, advertising efforts, and lack of descriptiveness, for example.

Trademark strength is derived through the descriptiveness of the mark. In other words, weaker trademarks are often more descriptive of a good or service, while stronger marks are less descriptive. For example, a pencil manufacturer can not claim trademark rights in the word “pencil” in and of itself since no one else would be able to use that word in association with pencils. The term is descriptive of the product itself. However, some unique or stylized version of “pencil” might be considered a trademark, and the owner could seek to stop others from using that particular stylized version of the word.

A little history on Trademarks

Trademarks have a long history with evidence of their use far predating the Roman Empire. The first trademark statute was enacted in 1226 A.D. in England under Henry III. The statute required that bakers place distinctive marks on their products so the baker of a particular loaf could be recognized. Modern legislation regarding trademarks, which to a great extent amounted to a codification of the common law developed in court cases, began to appear in the 19th century.

France introduced the world's first comprehensive trademark system in 1857. In the United Kingdom, the Trade Mark Act 1938 laid the groundwork for the modern U.S. system by permitting trademark registration based on "intent-to-use" and creating an examination process and a publication system for notifying the public. The 1938 Act contained other novel concepts such as "associated trademarks," a consent to use the system, a defensive mark system, and a non-claiming right system.

How We Can Help

Gallium Law has significant trademark experience. We would be happy to assist you in strengthening your brand and increasing the value of your business. Please call us at 651-256-9480 or fill out this Contact Form to speak with us before it's too late.

*The information provided in this article is not legal advice and should not be relied on as such. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.

[i] “Trademark” is defined at section 45 of the Lanham Act (also known as the US Trademark Act of 1946) as follows:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on theprincipal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

[ii] “Service mark” is defined in Lanham Act § 45, 15 U.S.C. § 1125, as follows:

The term "service mark" means any word, name, symbol, or device, or any combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as servicemarks notwithstanding that they, or the programs, may advertise the goods of the sponsor.  

[iii] The law regarding trademarks and service marks is nearly identical so for simplicity, this article will use “trademark” except where the use of “service mark” will be clearer.

[iv] To be clear on this point, the relevant “public” need not be the public at large, particularly in a trademark infringement situation. Oftentimes, marks are used in select or special markets such as microprocessors, femtosecond lasers, or a particular chemical line or the like. In such circumstances, the “relevant public” would be that select or special segment of the public at large that works in those markets.

[v] HP Inc. was formerly known as the Hewlett-Packard Company.

About the Author

Wes Schwie

Wesley Schwie is the founding Principal of Gallium Law and a registered U.S. patent attorney. Wes' practice encompasses all aspects of intellectual property law, including patent and trademark prosecution, licensing, litigation, portfolio management, due diligence, and infringement and validity counseling...


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