Image by Colin Behrens from Pixabay
Trademark vs. Copyright and Patent Protection: Areas of Specialized Expertise
Trademark law is often conflated with copyright and patent law by non-attorneys. On legal questions boards, questions posted by members of the public are often posted under a “copyright” category when “trademark” is more appropriate, or under “patent” law categories when either of the other two is more accurate.
What’s the difference between trademark law, copyright law, and patent law, then?
They are all area of what is called “intellectual property.” That is, a form of property ownership for things that are intangible rather than tangible. “Tangible” means that it can be touched, held, loaded on a truck … etc. “Intangible” means it cannot. It is an idea. Or a design. Or a creative work (even if it can be committed to tangible form, such as a painted or the sheet music for a song).
Some attorneys will claim to be general “intellectual property” attorneys, capable of representing clients in the Federal registration for or ownership litigation regarding patent, trademark, or copyright matters.
Others specialize in one of the areas.
Trademark, copyright, and patent law are separate areas of specialty, to be sure. Each features its own legal nuance, longstanding body of case-law, and widely differing standards for Federal registration.
Patent practitioners must, in particular, be members of what is called the Patent Bar to practice before the US Patent and Trademark Office (USPTO). Membership requires passage of an intense examination and a pre-law background in engineering or science.
There is no requirement that Trademark practitioners or Copyright practitioners be members of any particularized Bar association, but pre-law experience in related areas of expertise and legal expertise in these practices are just as necessary.
For example, The Hilla Law Firm, PLLC specializes exclusively in Trademark Registration and Maintenance matters with some occasional Copyright registration work.
Trademark Attorney John Hilla, prior to entering the legal profession, spent nearly 20 years working in graphic design, marketing, copywriting, and technical writing after obtaining his BA in English/Creative Writing.
Prior to entering the legal profession, Attorney Hilla designed logos and created business names and advertising phrases for clients in the auto industry, a rock music magazine, rock bands, and many others. He still has an eye for fonts, style, graphic design, and product and service description.
This comes in handy when defending USPTO Office Action Trademark Application Refusals. This is useful when advising clients as to the viability of their proposed trademark registration even at the initial consultation phase of representation.
Trademark Law is a natural fit for us. However, patent law is not. Attorney Hilla is more likely to cut off his own hand than repair a lawn mower, generally speaking.
That said, what and who are protected by a Federal Registration in each area?
Trademark vs. Copyright and Patent Protection: It Isn’t What’s Protected … It’s Who.
Federal Copyright Protection is designed to protect the work of an author.
An author is someone who creates a work. A work is something created by an author. What is protected by Copyright Registration is the original expression contained in that work.
For instance, if you snap a close-up photograph of a painting created by someone else, such that the photo is effectively a reproduction of the painting, this is not something for which you can register a copyright. In fact, if you sell your photo, you are likely infringing on the copyright of the artist who created the painting!
This is because there is no original expression in your photograph.
On the other hand, if you stand 100 feet back from the painting and snap an artful, black-and-white photo of art museum visitors milling around the painting, there is plenty of original expression in that photograph (although you may still want to be careful of the artist’s infringement claims!).
Patent law, on the other hand, is designed to protect “… any new and useful process, machine, manufacture, or any new and useful improvement thereof.”
In other words, it protects a “useful” process or device, or an improvement upon one.
Patent law protects a specific output by an “inventor” or one who has been assigned the right to file for patent protection by an inventor, as defined by law.
Trademark Registration, on the other hand, protects not the author, creator, or inventor but—the consuming public.
That’s right. The purpose of Federal Trademark protection is to offer consumers in the United States the protection of knowing what they are buying and from whom.
The purpose of trademark registration is NOT to protect you, the creator!
When you file an application with the USPTO for Federal Trademark Registration, you must demonstrate the following:
- That you are using the mark to identify a specific product or service to consumers;
- That the mark is being used in interstate commerce (i.e., being used in advertisements or other marketing efforts to attract customers or buyers across state lines);
- That the mark uniquely identifies YOUR product or service;
- That the mark is not likely to confuse consumers as to who is providing the product or service.
If these things can be demonstrated to the USPTO and the mark does not cause any third-party mark owners to oppose its registration, it will be approved for registration.
However, because, again, trademark registration is not designed to protect YOUR creative output, you must continually maintain the mark to keep your registration.
Between the 5th and 6th year following a successful Trademark Registration, and every 5 years thereafter, you must continually file a Statement of Use demonstrating continuing use of the registered mark in interstate commerce.
If you fail to do this (or actually stop using it), the registration will be Abandoned by the USPTO and available for use and registration by someone else.
This is quite different from copyright and patent registration protection, which remain yours when registered until they slide after many years into the public domain.
Trademark Registration: The Bottom Line
The bottom line is that with regard to trademark protection of your name, logo, or advertising phrase, it doesn’t pay to go cheap after investing all of your resources and time into the branding process.
Retain an attorney who is a trademark specialist.
The Hilla Law Firm, PLLC is located in the Motor City, but our trademark practice is national. We represent clients for trademark matters anywhere in the United States and beyond.
Virtual consultations offered with affordable flat fees.
Contact Us at (734) 743-1489 to schedule an initial consultation appointment to discuss your trademark needs.