Like many areas of the law, trademark has a deceptively simple surface that masks a complex and often counterintuitive system. Everyone has a passing familiarity with what a trademark is—we see them every day. But in practice there are several different types of mark, each with their own rules. Understanding the types of mark is an important step in grasping how to evaluate a proposed mark for potential infringement problems, and how to establish it as a protectable and registerable mark.
There are several features that are common to every type of mark. No matter what form a mark takes, these features must be present to transform it from its elementary form —as a word, a drawing, a packaging design, and so forth—into what the law considers to be a “mark”:
Trademarks and service marks
A trademark is the most familiar type of mark. In technical terms, a trademark identifies the source of goods. It may be a word, a phrase, a drawing, a symbol, or a combination of these elements. For example, Burger King’s trademark used on the signs of its restaurants combines words, drawings, and a particular color scheme. Burger King also has other trademarks, including in the phrase BURGER KING without additional design elements, and variations of its standard restaurant logo.
A service mark can be thought of as having the same rules as a trademark, only it is used in connection with services instead of goods. Like a trademark for goods, a service mark can be a word, phrase, drawing, or a combination of words and designs. Unlike a trademark, which is placed directly on products or on their packaging, a service mark is established through its use on materials that are closely linked to services. Service businesses develop their marks by putting them on customer-facing materials, like brochures, business cards, websites, and advertising.
As businesses compete to distinguish their products from others, design elements can begin to function as marks in their own right. Trade dress is a type of mark that focuses on the distinctiveness of packaging or design in the presentation of goods. It captures distinctive physical packaging of a product, and it can also be used to protect a business’s color scheme, particular choice of shapes, and so on. Courts have even ruled that the look and feel—though not the content—of a website can be protected as trade dress.
To be protected, a trade dress must have two key characteristics. First, it must be nonfunctional, which is to say that the packaging element that is claimed as trade dress cannot also have another purpose besides its packaging or design element. If a feature of packaging also provides utility, the design might more appropriately be protected under patent law rather than trade dress.
The second key characteristic can be one of two options. The trade dress must be inherently distinctive or it must have acquired a secondary meaning. Inherent distinctiveness is a subjective question that looks at how common the design or feature is, whether it is unique in the claimant’s particular field or industry, and whether the claimed trade dress is simply a refinement of common practices and does not represent a fundamentally new approach.
Proving secondary meaning for trade dress is more challenging than proving inherent distinctiveness. Secondary meaning is measured by the extent to which consumers associate a packaging design with a particular source. Proving secondary meaning can require expensive surveys, a long history of consistent advertising, extensive sales figures, and so on.
Christopher Peil is an experienced intellectual property attorney who represents clients in patent and trademark prosecution and defense. We can help your business protect its brand assets against infringement.