In our previous article, So What Exactly Is A Trademark?, we discussed the standard definition and role of trademarks. However, there are a few different kinds of trademarks and they correlate to the general thing that is being trademarked. Here are some of the most common kinds of trademarks (service marks, collective marks, and certification marks) as well as some examples of common trademark protection (trade names, trade dress, and anti-dilution).
Trademarks that are used to distinguish between the services of one individual, company, or entity and those of another are called service marks. The word “service” relates to the type of services performed for another and not merely performed for the benefit of the producer. Service marks are unique in that they do not apply to actual goods but rather to actions performed by the trademark holder. Depending upon whether the service mark is federally registered or not, you might see different symbols denoting its presence: ® if it is federally registered and ℠ if it is not federally registered. You can use the exact same mark as a service mark and a trademark in the sale of goods unless they cannot be distinguished from one another. Examples of service marks include logos emblazoned on delivery trucks and planes, marks on business cards of professional service providers, and even the roar of the lion at MGM Studios.
A collective mark is a trademark used by an organization, association, or other collective to signify membership in that entity or to distinguish goods/services emanating from that group and those not emanating from that group. The law actually provides for separate kinds of collective marks: collective marks and collective membership marks. With the former, members use the entity’s mark to separate their goods/service from those of nonmembers. With the latter, members use the entity’s mark to identify their membership in the entity. Examples of collective marks include the “CPA” designation that is used to identify someone is a member of the Society of Certified Public Accountants or when lawyers identify that they are a member of a certain bar association.
A certification mark is a very novel and important variety of trademark law. It is a mark used in the stream of commerce to identify goods/services by an individual or entity that does not actually own the mark. In fact, the owner of the mark is not allowed to use it. Associations, commercials groups, and similar entities typically own them. The owners must set standards by which others should conform to in order to use the mark. If someone meets those standards, then the owner generally must allow that party to use the mark. Ownership of a certification marks implies that owners have to monitor and enforce its use; otherwise, the mark can be lost. Parties use certification marks to identify that their goods/services hold the qualities and characteristics that the certification guarantees. There are three general kinds of guaranties: 1) region of production 2) method of manufacture or 3) background of employees. However, one certification mark can make more than one of these guarantees. Examples include the “Champagne” certification mark designating goods from the Champagne region of France as well as the CE mark designating “European Conformity” for products in the market from Europe.
Trade names are the monikers used by companies to transact business. They might differ from their actual legal names. Separate from trademarks, they function to identify companies instead of the goods/services those companies produce. Therefore, you cannot register a trade name as a trademark unless the former designates the source of goods or services. In other words, you cannot trademark a trade name to merely identify a business. However, your trade name will generally still have other protections such as state law registration and various common law actions. Many trade names simply take off the legal terminology surrounding the business' name especially with franchises, like McDonald’s.
Trade dress describes the look and feel of a good as well as the packaging encasing it. In certain instances, it can also include the product’s arrangement and shape. Trademark law protects trade dress if, and only if, it assists in identifying the source of the good like all other trademarks are supposed to. Since not all trade dresses do this, many are not registered as trademarks. Examples of trade dress include the peculiar shape of certain liquor bottles.
Dilution occurs when a mark suffers a loss in quality because of its association with another mark. There are two different ways this can happen. First, if consumers cannot tell the difference between two marks, then they will be blurred together and they can be diluted through a lack of identification. Second, if the association of one mark tarnishes the image of another, then the impaired mark is diluted through a reputation loss. An example of this would be if a shoe company started to mimic the red-bottom component of Louboutin shoes because many consumers would have hard time distinguishing between both brands. Their marks would be blurred together and diluted because of it.
In the next article, we discuss how trademarks are different than other kinds of intellectual property.
Next: How are trademarks different from other kinds of intellectual property?© 2016 John V. Robinson, P.C.
© 2016 John V. Robinson, P.C.
