Trademark, Copyright or Patent: Which U.S. Right Protects What

The three rights side by side

Intellectual property is a group of separate rights. Each has its own subject, its own start date and its own rules about suing. The table below states the main differences under U.S. law.

Note 1

Trademark: the sign that points to you

The USPTO describes a trademark as any word, phrase, symbol, design or combination that identifies your goods or services. A trademark identifies the source and helps customers tell you from competitors. You become the owner by using it, but those rights are limited to the geographic area where you provide your goods or services. A federal registration creates rights throughout the United States and its territories.

You may use TM for goods or SM for services without any filing. The registration symbol ® is only for a registered mark and only for the goods or services in the registration (TMEP §906). Registration also gives you a legal presumption of ownership and the right to bring a federal lawsuit, and lets you record the registration with U.S. Customs and Border Protection (USPTO).

Remedies in trademark cases are not the same as in copyright cases. The earlier post said that statutory damages of up to $150,000 can apply to trademark infringers. That figure belongs to copyright. In trademark law, statutory damages are for a counterfeit mark, which the statute defines as a counterfeit of a mark registered on the Principal Register for the goods or services concerned and in use: from $1,000 to $200,000 per counterfeit mark per type of goods or services, and up to $2,000,000 if the use was wilful (15 U.S.C. §§1116(d), 1117(c)).

Copyright: the expression, not the idea

Copyright subsists in original works of authorship fixed in a tangible medium (17 U.S.C. §102(a)). Protection is automatic, and the Copyright Office says publication is not necessary. Copyright never extends to an idea, procedure, process, system, method of operation, concept, principle or discovery, however it is described or illustrated (§102(b)).

Registration is a separate step with real effects. For a U.S. work, no infringement suit can be started until registration has been made, although a person whose proper application was refused may still sue if the Register of Copyrights is served (§411(a)). Statutory damages and attorney's fees are not available for infringement that began before registration, unless the work was registered within three months of first publication (§412). The Copyright Office adds that a registration made within five years of publication is prima facie evidence in court, and that mailing a copy to yourself is not a substitute for registration.

Copyright does not protect names, titles, slogans or short phrases (37 CFR 202.1(a)). The Copyright Office adds that logo artwork with enough authorship can be protected, and that an artistic logo may also be a trademark. So a logo can hold two rights while its wording alone holds only the trademark one.

Patent: a grant for an invention or a design

The USPTO describes three kinds of patent. A utility patent may be granted to anyone who invents or discovers a new and useful process, machine, article of manufacture or composition of matter (35 U.S.C. §101). A design patent covers a new, original, ornamental design for an article of manufacture (§171). A plant patent covers a distinct new plant variety. Novelty is tested under §102 and non-obviousness under §103.

A patent is a grant, not a registration of something that already exists. Infringement means making, using, offering to sell, selling or importing a patented invention during the term of the patent (§271(a)). The earlier post said you cannot get a court decision without registering a patent. The accurate statement is that there is no patent right to enforce until the USPTO issues the patent.

Timing matters. A disclosure made 1 year or less before the effective filing date is excepted from prior art under §102(b)(1), subject to the conditions in the statute. That is why the earlier post's advice to patent before launching is sound. Whether a particular sale or display counts as a disclosure for this exception is a question to check with a patent practitioner before any launch. The earlier post's remark that a phone holds about 250,000 patents could not be sourced and was removed.

When one product touches more than one right

A single product often involves all three. A printed T-shirt shows how the rights fit together:

• A phrase on the shirt is not protected by copyright because it is a short phrase. It is protected as a trademark only if buyers see it as the brand. The USPTO treats merely decorative matter as not functioning as a trademark (TMEP §1202.03), which answers the earlier post's concern about phrases registered only to block others.
• The artwork around the phrase can be a copyrighted work if it is original, and copyright arises on creation.
• An ornamental design applied to an article can in some cases qualify for a design patent, which covers appearance only.
• A new mechanism in the product would need a utility patent, and only a granted patent can be enforced.

Online marketplace takedowns

Each platform runs its own complaint process, so read its current rules. For copyright, the statute sets what a takedown notice must contain: a signature, identification of the work and of the material, contact details, a good-faith statement, and a statement of accuracy under penalty of perjury that the complainant is authorized to act for the owner (17 U.S.C. §512(c)(3)(A)). A person who knowingly and materially misrepresents that material is infringing is liable for damages (§512(f)). The earlier post's claim that holders of improper trademark filings face criminal penalties could not be sourced and was removed.