Things every client should know about trademarks

What is the difference between a trademark, a service mark, and a trade name?

A trademark is a mark that is applied to goods. For example, if you sell shoes, then the mark you apply to the shoes (e.g., “UltraLights”) is a trademark.

A service mark is a mark that is used in the delivery of services. Thus, your bank may offer a checking account service called “Top Flight Checking,” and this mark would be termed a service mark, rather than a trademark, because it is used in the delivery of services (rather than being applied to a physical good).

A mark refers to either a trademark or a service mark. Although trademarks and service marks are different legal creatures, and the rules governing them do differ in some respects, in certain ways they are very similar, and so you will frequently hear trademark attorneys refer to your “marks” rather than your “trademarks and / or service marks” as a kind of shorthand when addressing issues common to both.

Finally, a trade name isn’t generally viewed as a trademark at all. Rather, it’s simply the name of a company. Trademarks relate to goods; service marks relate to services; and trade names relate to companies.

Why the distinction? Because various state and federal registration schemes draw distinctions between these categories, so it’s important to know and understand the differences.

For example, the U.S. federal trademark system doesn’t provide for the registration of trade names. Rather, it only provides for the registration of trademarks and service marks.

However, this frequently isn’t as much of an obstacle as one might imagine. When WordPerfect Corporation introduced its new word-processing software called WordPerfect, it might have originally envisioned that it would be attempting to secure a federal registration for its trade name Wordperfect Corporation. Instead, it likely would have learned from its trademark attorney that, while federal registration of the trade name was unavailable, it could nonetheless register the valuable “WordPerfect” mark as a trademark applied to goods (namely, a word-processing computer program). In the case of Wordperfect, the important business asset wasn’t the company name; rather, it was the name of the product appearing in the stores (and the product name was absolutely protectable as a trademark).

Understanding this distinction isn’t something any client should unduly concern itself with at the outset of an engagement. Rather, understanding and applying these distinctions is what you pay your trademark attorney for.

Thus, commence the engagement with your trademark attorney by simply discussing your products and marketing plans. During that discussion, the various symbols and product and company names you will be using will naturally arise. At this point, armed with the facts regarding your specific plans, your trademark attorney can outline a variety of strategies for protecting your mark(s).