When it comes to intellectual property rights, confusion abounds. Between copyright, trademark, service mark, and patents, questions arise as to what rights apply. The purpose of this article is to help shed some light on the differences. Remember, this article is an educational resource only and is not to provide legal advice.
What Is a Trademark or Service Mark and How Do They Differ From Patents and Copyrights?
A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.
What is a trademark or service mark?
• A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.
• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.
Do trademarks, copyrights, and patents protect the same things?
No. Trademarks, copyrights, and patents protect different types of intellectual property. A trademark (or service mark as the case may be) typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention.
Likelihood of Confusion with Other Marks
The United States Patent and Trademark Office (USPTO) examines every application for compliance with federal law and rules. The most common reason to refuse registration is a “likelihood of confusion” between the mark of the applicant and a mark already registered or in a prior-filed pending application owned by another party.
The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source. Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark. That is, generally two identical marks can co-exist, so long as the goods and services are not related.
Each application is decided on its own facts and no simple mechanical test is used to determine whether a likelihood of confusion exists.
Mistakes Do Happen
An author filed a trademark application claiming exclusive rights to the word “cocky” in Romance book titles. Once she obtained the trademark registration she went all out and sent multiple notices requiring authors to change the title of their books. She attempted to block the sale of books by romance writers who used that word in their title. Amazon even complied with her take down request.
“Cocky” is a popular word in the genre, and it didn’t take long for her registration to be contested, especially when a recipient of one of her demands happened to be an intellectual property attorney and the registration was clearly an error on the part of the USPTO.
The law is explicit — only series titles can be trademarked, NOT book titles, and common words can’t be trademarked unless the word creates an association with a specific source (i.e. an individual author) in the minds of the public. Moreover, the USPTO specified that a trademark owner in a book series title cannot prevent that mark from being used in a single book title. “Only series titles can infringe another series title.”
Next month we’ll take a look at contracts, an area encompassing everyone whether you are traditionally published or self published. What has your experience been?
(c) 2019 Karen Van Den Heuvel Fischer
