Trademark vs Copyright – Understanding the Different Protections of Intellectual Property

4 minute read

One of the most common sources of confusion among people seeking legal protection for their intellectual property (“IP”) is the difference between trademark and copyright. Although both are types of registered IP protection, they actually protect different elements and types of objects, and knowing which protection to seek can help you determine which you may need in a particular context.

We will discuss the different types of objects that can be protected, with specific examples, and highlight the contrasts between trademarks and copyrights

Trademark

One of the essential functions of a trademark is to allow a consumer to identify a particular source for a product or service. The same way when you see the Golden Arches as you’re driving down a highway, you know that you can expect a particular meal that includes hamburgers.

Trademarks protect “source identifiers” of goods and services, this includes:

  • Names of companies (Apple, Google, Amazon)
  • Names of product lines (MacBook, iPhone, Camry, Jeep Wrangler)
  • Names of distinctive individual products (Oreos, Nike)
  • Names of book, movie, and other creative media series (Seinfeld,
  • Game of Thrones, Harry Potter, Star Wars
  • Non-functional forms of products (Wax seal on Maker’s Mark whiskey, sprig of mint on a Mint Mojito at Philz Coffee)
  • Logos of all kinds (swoosh mark for Nike, mermaid for Starbucks, three stripes for Adidas)
  • Slogans of all kinds (Just Do It, Think Different)

Trademarks do not protect:

  • The content, story, writing, and plot of books, movies, and other creative media
  • Designs
  • Special methods by which goods are manufactured or services are provided
  • The unique function of inventions

Trademark rights come in two basic varieties, common law rights, and rights stemming from a trademark registration. Common law rights come from simply using the word or words in commerce to identify a given set of goods and services, but are limited to a particular geographic scope of the business market. So, say someone is selling clothing under the trademark Mousilli Mops, and can establish that they have had continuous sales in 20 states. They may have developed common law trademark rights to Mousilli Mops in those states, even if they never filed anything with the USPTO or with their Secretary of State’s office in the 20 states, at least on paper.

The problem with common law rights is that they are only as good as your ability to enforce them, which means that in practice you need to have a lot of evidence of ongoing sales in the states in question, as well as constant supply of money to pay attorneys to enforce your rights. For this reason, federal registrations are practically a no-brainer for people serious about protecting their brands. They also provide protection throughout the entire country, rather than just the states or markets where you had a continuous presence and market.

In fact, rights from a federal registration are what most people think of when they think of having a trademark as these rights tend to be much easier to enforce both in court, and out. Pointing an opposing party a valid Principal Register trademark registration tends to diffuse the vast majority of disputes before they ever get even close to a court proceeding, saving a lot of time and money. Especially once you have put a potential infringer on notice of their infringement.

A federal trademark registration creates a presumption of the trademark holder’s exclusive rights in the trademark. This places the burden of proof on the other party, to attempt to overcome the presumption. This means that if you hold a trademark registration, the burden is not on you to prove that you have rights in the mark as would be the case with common law rights, but it is on the opposing party to prove that you do not. Because this is usually a very difficult burden to meet, these trademark rights are typically considered very strong.

Copyright

Copyright is protection for the expression of an idea as captured in a recorded form. This is what is typically sought after for creative expressions of art, music, books, and film.

Copyrights do protect the content of creative works laid down in some physical medium, this includes:

  • Printed books, brochures, pamphlets, poems, documents, etc.
  • Recorded films
  • Recorded music
  • Board games, card games, tabletop roleplaying games and their attendant rules sheets, rulebooks, etc.
  • Paintings, drawings, sculptures, and other physical pieces of art
  • Software source code
  • Unique interfaces or designs (though not the functional elements)

Copyrights do not protect:

  • Special methods by which goods are manufactured or services are provided
  • The unique function of inventions
  • Any performance that is not recorded
  • Generic expressions of data (phone book, contact lists, etc.)
  • Anything listed as protected by trademark

Copyright technically exists for the author as soon as a copyright eligible work is recorded, so, as soon as a book is written, movie is filmed, or painting is painted. That said, as with common law trademark rights, unregistered copyright is not very strong and doesn’t provide a lot of easy remedies for infringement.

The remedy for dealing with infringement of copyright in the United States are to file a DMCA takedown notice. This is considerably easier if you have a Copyright Office registration that you can cite in your complaint.

If you want to have the ability to sue (and credibly threaten to sue) infringers for damages, you will need a federal copyright registration. As with trademarks, the greatest practical advantage of a registration is not that it gives you better chances in court, but it is the threat of being able to sue infringers for money damages is likely to keep you out of court, as most infringers do not want the very costly uphill battle of fighting a federal registration.

Especially since once an infringer is put on notice, statutory damages for copyright infringement are up to $150,000 per instance.

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