Trademark or Copyright?

Choosing the right protection to fit your needs

by Trademark Garden | May 8, 2018

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 IP protection, they actually protect different things, and knowing which is which can help you determine which you may need in a particular context.

TRADEMARK

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

  • Names of companies (Microsoft, Nike)
  • Names of product lines (iPhone, Nissan Altima)
  • Names of distinctive individual products (Twinkies, Cherry Coke)
  • Names of book, movie, and other creative media series (Harry Potter, Star Wars)
  • Non-functional forms of products (Wax seal on Maker’s Mark whiskey)
  • Logos of all kinds
  • Slogans of all kinds

Trademarks do not protect:

  • Individual book and movie titles* (Moby Dick, The Empire Strikes Back)
  • The content, story, writing, and plot of books, movies, and other creative media
  • Special methods by which goods are manufactured or services are provided
  • The unique function of inventions
*You cannot trademark book and movie titles for the books and movies themselves, but you can trademark them for supplementary goods like posters, clothing and games.

Trademark rights come in 2 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. So, say someone is selling clothing under the trademark Tommy’s Totally Tubular Tanktops, and can establish that they have had continuous sales in 20 states. They have common law trademark rights to Tommy’s Totally Tubular Tanktops in those states, even if they never filed anything with the USPTO, 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.

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. In my experience showing 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. The reason for this is that a 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 registration, the burden is not on you to prove that you do have rights in the mark as would be the case with common law rights, but it is on your opposing party to prove that you do not. As this is usually very difficult to do, these rights are considered very strong.

COPYRIGHT

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
  • All digitally stored copies and facsimiles of any of the above (MP3 files, a book in pdf format, etc.)

Copyrights do not protect:

  • Special methods by which goods are manufactured or services are provided
  • The unique function of inventions
  • Anything listed as protected by trademark

Copyright technically exists as soon as a copyright eligible work is laid down in a physical medium, 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. In essence the remedy for infringement of unregistered copyright in the United States are to file a DMCA takedown notice. 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 (though it certainly does) it is that 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.

Our experts can help get you a trademark registration or copyright registration.

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