Distinguishing trademark strategy from patent strategy

In my experience of advising businessmen on companies’ intellectual property strategy, I noticed an odd phenomenon: business guys often confuse trademark rights with patent rights and hence trademark strategy with patent strategy.  This blog post aims to clarify some basic features of trademark rights and patent rights and the distinction between the two forms of intellectual property.

Trademark rights arise in the United States from use of a mark.  It is a common law right that can only be obtained through the actual use of the mark in commerce.   This common law right relates to the goodwill that the mark has been associated with, meaning that the mark becomes an abstract or psychological symbol representing the quality of a goods or service.

Close your eye and think about that swoosh symbol of Nike—what images come into your mind? My bet is that the swoosh symbol conjures up various images of famous athletics in motion with their muscle toned bodies gleaming with sweats.  How do these images make you feel?  You feel like putting on a pair of Nike shoes and go out running now!  And all these are happening within a split second of you thinking about the swoosh symbol.  That is the power and the value of a famous trademark!  Therefore, in a marketplace, the goodwill of a mark translates to consumer loyalty to a brand, which a famous mark is often able to achieve.

Because a trademark’s value is associated with its use in commerce, the common law right attaches to the mark from the day the mark is used.  You don’t have to file a trademark application with the USPTO to obtain this common law right.  Therefore, you should always take note of the first use of your mark in association with your goods or service in commerce, which is your “priority” date of the ownership of the mark.

In comparison, patent right is a statutory right—it is a monopoly right for a period of time backed by a government’s enforcement power.  In exchange to this monopoly right, you must provide the public with the knowledge of a novel, nonobvious and useful invention in the form of a patent document having enabling description and the best of way of making or practicing the invention at the time of you filing the patent.  Think of it this way—the only reason a property right is attached to a patent is because the government provides you the access to the court system and its enforcement power to exclude others from practicing your patent without your permission.  Otherwise, a patent is just a piece of paper with technical descriptions and a bunch of oddly worded phrases titled “Claims.”

Savvy business guys are often familiar with the term “priority date” and “prior art” in the context of patents.  They often understand that they should file a patent application before public disclosure of an invention (as a public sale or publication).  However, these concepts are not necessarily applicable to the trademark system.  For example, one CEO once told me that he need to file a trademark application as soon as possible because the company was going to release the product soon.  Well, he was confusing the patent system with the trademark system.  Public use of a trademark will never bar your trademark application; however, public use/disclosure of an invention will bar the filing of a patent application 12 months from the first public use/disclosure date.

Another CEO once provided me a list of suggested countries that he wanted the company’s trademark to be filed in.  Several of the suggested countries were raw material supply countries—however, I know that the particular form of the consumer goods will not be sold in these countries.  I asked him why the selection of these countries and was told that he wanted to stop any potential infringer from manufacturing these goods.  When I asked him whether the consumer goods, which would be sold under the trademark, would ever sold in these countries.  The answer was no. 

This CEO is confusing trademark rights with patent rights.  You can prevent a manufacturer from making a patented goods without a patent license.  However, you cannot prevent the same manufacturer from making the goods as long as the manufacturer does not sell the goods under your trademark.  If the goods will never be sold or used in a country, there is really no value in filing a trademark application in the country.

In summary, for trademark strategy, you should always file in countries that the goods would be sold to your target consumers but not more; and for patent strategy, you should file in any country that your goods will be made, transported, distributed, sold, or used.

Thanks for reading.

Connie

cwan@patentonomy.com