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Author’s Note: This is the first post in what will be an on-going series that will give a overview of ‘basic’ topics regarding Trademarks and Copyrights.  The hope is that this series will provide a strong introduction to Trademarks and Copyrights for readers who are relatively inexperienced, as well as a good refresher for others.

“What is a Trademark?” may seem like a ridiculously basic question (even though it is in the ‘Back to Basics’ series) and, even worse, may appear to be condescending (‘Of course I know what a Trademark is, idiot! Next post!’).  However, in order for us to have any meaningful discussion on trademarks and other deeper related issues, we must first both lay down a foundation where we mutually define and understand what a trademark *is* and, additionally and perhaps more importantly, what a trademark *purpose* it serves (i.e. why any business owner, lawyer, random person jaywalking should care).

"Trademarks. You keep using that word."

“Trademarks. You keep using that word.”

So, at the risk of sounding repetitive, what is a trademark?  The Lanham Act defines a trademark as  “any word, name, symbol, or device, or any combination thereof used by a person . . . 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 (15 U.S.C. 1127).”  That definition is a cumbersome sentence if there ever was one ( U.S. statutory language is not known for its conciseness or clarity).  It is much simpler to say that a trademark is anything used in commerce to identify and distinguish goods and/or services from those of competitors in the marketplace.  Even without having an established definition first, most people would be able to rattle off a number of perfect examples of trademarks.  Iconic brand names such as Coca-Cola, Kodak, Budweiser,  McDonald’s, and Wal-Mart.  Some may even mention several memorable, world-renown logos such as Apple’s Apple logo (not to be redundant), McDonald’s Golden Arches,  and the Pepsi logo.  However, examples of trademarked names and logos, while by far being the most common occurrences of trademarks, do not do justice to all the possible forms that a trademark could take, especially given the Lanham Act’s broad definition of what can serve as a trademark.  Trademarks have been awarded for sounds (such as the distinctive 3-note chime used by NBC), for distinctive product packaging or appearance like the Coca-Cola bottle shape (a category of trademarks that is called ‘trade-dress’ which we will discuss more in depth at a later date),  colors (such as the University of Michigan’s ‘maize and blue’ team athletic colors), and even for scented yarn!  Rumor has it that at one point a trademark was even awarded to an ice cream shop for an ice cream cone loaded with a distinctive combination of colorful ice cream flavors in a particular order.  The point is that really anything that helps distinguish products or goods from another (with some limitations that will also be discussed in the future) have the potential to be valid trademarks.

However, it is important to note that coming up with a clever name or distinctive logo does NOT give you a trademark.  Trademark’s are predicated on and come into existence only through use (unlike copyrights, which exist as soon as they are created).  In this case, the ‘use’ we are talking about is use in commerce.  A trademark only exists if it is used by the owner to identify and distinguish the goods and services that he/she is offering in the marketplace.  Use of a mark can be done in a variety of ways, such as being a companies’ name, appearing on product packaging, being used on letterhead or advertising, etc. . . The possibilities are endless, so long as it is a use that identifies and distinguishes goods and/or services that are being offered to consumers.  If there is no ‘use in commerce’ there is no trademark, even if a trademark right was granted previously (trademark abandonment issues is another topic that will also be addressed at a later date. . .consider this a teaser trailer).

The fact that trademarks must be ‘used’ in order to exist provides a natural transition to the question of what is the purpose of a trademark?  Trademarks themselves have existed in some form or another arguably since broader geographic trade and commerce began.  In Ancient cultures, such as those of Greece, Sumeria and Rome, signature rings were used to make unique wax impressions that were affixed to goods shipments.  During the Dark Ages of Early Medieval Europe and the time of the Viking raids, a swordsmith who produced high quality swords using very advanced techniques took painstaking efforts to inscribe his swords with the name ‘Ulfberht,’ possibly to distinguish and identify his highly desirable swords to consumers (PBS’ NOVA series did an episode on the Ulfberht Swords that is definitely worth viewing…or falling asleep during if documentaries aren’t your jam).   Medieval Guilds (early trade unions, essentially) adopted unique symbols that craftsmen could you use to designate their membership in the guild (and thus that they had the requisite skill in their craft).  As you can probably tell from these historical examples, one of the primary purposes of a trademark is to designate the origin or source of goods and services. It lets you know who made and/or provides a specific product.  For example, the name ‘Toyota’ appearing on the back of the car that you’ve been stuck in traffic behind for an hour, instantly communicates to you that Toyota is the manufacturer of that particular model and that if you wish to purchase it for yourself, you’ll likely have to go to a Toyota dealership.

Additionally, trademarks can also be used to designate the quality of a good or service to would-be buyers.  In the case of the Ulfberht swords, the branding of the sword was also meant to assure buyers of the swords ability as a superior weapon. Same with the Medieval Guild symbols, which communicated to the public that the craftsmen had the necessary training and skills. Wrapped in with the notion that trademarks can designate quality, is that trademarks also serve a  consumer protection purpose by allowing buyers to know that the article they are looking to purchase has that necessary quality that they were looking for.

Furthermore, as an extension of the quality purpose, trademarks also serve as a repository/rally point for the reputation/good will that the trademark owner has in the marketplace.  The use of a trademark can be used to trigger in the minds of consumers past experiences, memories, and opinions/impressions (good and bad!) it had of using/receiving the associated good and services or even of other goods/services that were provided by the trademark owner.  For instance, seeing the ‘White Castle’ logo for many would trigger a mental impression of cheap, small, greasy burgers.  The name ‘Red Lobster’ may induce memories of tasty seafood dishes and end-less cheddar biscuit, or long-wait times and under-cooked food, depending on one’s experience of that restaurant chain.  That being said, if trademark’s can be a focal point for consumer goodwill/reputation, it is not too much of a stretch to say that a trademark (particularly names and logos) can encapsulate and form a company’s brand and identity.  Consider the images that Apple’s name and logo conjure up of cutting, revolutionary technology and devices that have made our lives easier and the immense popularity and loyalty that that brand enjoys, to the extent die-hard customers will camp out sometimes days in advance in front of an Apple Store in order to ensure they can purchase the latest iPhone as soon as it is available, and you can see that there is much merit to this.  That being said, this aspect also gives companies the opportunity to try to intentionally instill in the minds of the public attributes that the company wants to be directly associated with it.  For example, the famous IBM Corp. ‘8-bar’ logo was designed specifically to give an impression of speed and being on the cutting-edge. Thus, it is no exaggeration that trademarks can have a powerful effect on the market and consumers, given their ability be a vehicle for the public’s good-will and trademark owner’s reputation/market identity.

Finally, in light of the above roles, trademarks also serve a consumer protection and unfair competition prevention purpose.  By indicating origin and quality, a trademark can help assure buyers that they are actually receiving the goods or services that they desire, probably due to their reputation, and not some imitation or inferior product.  In the reverse, a trademark helps, in part due to the exclusive rights to its use that are granted to the owner, prevent unfair competition by allowing owners to distinguish their products and services from competitors, especially those who would attempt to ‘palm off’ their products as being genuine products provided by the trademark owner (Going back to the Ulfberht swords, there have been discovered other Viking swords, which are of clear lesser quality and craftsmanship, that have similar ‘Ulfberht’ inscriptions, albeit with different spellings and lettering.  It is speculated by historians that these sword were forgeries that were sold as authentic Ulfberht’s, which if true, might make this the first known case of trademark infringement!).  In both cases, trademarks can serve to diminish or prevent confusion being created about a good/service and its origin, quality and reputation.

In summary, it is fair to say that a trademark is anything that is used in commerce in association with goods and/or services to distinguish them from others and can serve the purpose of indicating origin and quality, while also being a lynchpin for goodwill and reputation in the market, as well as being a vehicle for a trademark owner’s public identity.