Trademarks and Service Marks and Trade Dress, oh my!
There are so many types of trademarks that we lawyers tend to refer to them generally as either trademarks, or “marks” because the distinctions aren’t that important. For example, if you must know what is a service mark, it is identical to a trademark, except that it protects a service instead of a product or good. Simply put, the service mark vs trademark distinction is nothing more than whether or not you sell a product or a service.
Likewise, a trade name is just a trademark for what you call yourself, a collective mark is just a trademark for membership associations (like the “Girl Scouts”), and a certification mark is just a trademark to establish quality control like the (“Kosher” symbol on your pickles). But regardless of the name, all of the above trademark types are designed to establish your brand as the source of a particular product, service, membership, or quality, and differ very little in how they are obtained or enforced.
But sometimes your brand is recognizable just by looking at the product itself. Trademark protections that cover the shape or configuration of an actual product is called a trade dress. For example, if you order a fast food kid’s meal and that meal comes in a box with handles that are shaped into golden arches, you would probably identify that product as a Happy Meal® from McDonalds® on that basis alone. That is a trade dress, and it is different than simply putting the name McDonalds® or BigMac® on a product or its packaging.
Common Law v. Registered Trademarks
Common Law Trademarks
You do not need to actually register a trademark to obtain some basic, “common law trademark rights” rights in your brand. In fact, common Law trademarks are automatically created the moment you distinguish your brand from that of a competitor.
Trademarks claiming these protections often show a “TM” or “SM” symbol next to the mark. However, common law trademark rights are “territorial” in nature, meaning they can only be enforced where you can demonstrate proof of priority. For example, if you opened a restaurant in Texas, and your competitor later opened a restaurant across the street, your common law trademark rights would likely allow you to force that competitor to either stop or rebrand. But if the competitor was in New York, your common law trademark would likely be unenforceable against them because the infringing use is outside of the trademark’s territorial rights.
Federal trademark registrations and state trademark registrations often show an “®” symbol next to the mark, and are far more powerful than common law trademarks. A state trademark registration provides the presumption that your trademark is valid in that state, and the presumption that your use of the trademark was first. Likewise, a federal trademark registration provides proof of validity and the presumption of first use anywhere in the United States, Puerto Rico, and Guam!
For example, if you opened a restaurant in Texas and a competitor later opened a restaurant in New York, your federal trademark registration would likely allow you to force them to stop or rebrand even if you have never been to New York. There are of course many nuances to obtaining and enforcing registered trademarks, so make sure to consult an attorney before committing to any specific plan.