The trademark is a tradition with a history as long as the marketplace. Since ancient times, proud craftspeople have put their individual marks on their work, and consumers have long depended on trademarks both to authenticate the source of the goods they buy and to stand for them as a mark of particular quality. For this reason, in order to provide a means to ensure that trademarks correctly and honestly identify the source of goods and services traded in public markets, trademark law has developed as much for the protection of consumers as for the protection of the trade interests of business.
U.S. trademark law evolved from English common law, as did much of the body of law in the United States. References to trademark issues being adjudicated can be found in English common law dating as far back as the 13th century, although the first particular trademark statutes did not appear in English law until the 17th century. U.S. courts relied upon English trademark laws and precedents until the middle of the 19th century, when the first state trademark statutes began to appear. The U. S. Congress enacted the first federal trademark statute in 1870.
A different kind of “intellectual” property
Although trademarks and trademark law are generally considered to be in the category of intellectual property and intellectual property protection, respectively, along with patents and copyrights, there are, in fact, major differences that set trademarks apart from other intellectual property. Fundamentally, the basis of patent and copyright protection is set out specifically in Article I, Section 8, of the U.S. Constitution, giving to Congress the power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” In contrast, federal trademark law rises only indirectly from the U.S. Constitution. It derives from the Commerce clause of Section 8, which delegates to Congress the power to regulate trade.
The most important factor that distinguishes trademark rights and their protection from those of other intellectual property lies in the area of how and whether the property is used. Both under common law and statutory law, an Author inherently owns the copyright in a “work of authorship” from the “moment of creation” [note] of the work. Regarding inventions, although patent rights are not inherent, but rather are granted by governments to an inventor upon proof of an invention’s novelty and usefulness, the law considers that an invention exists (except for a few extraordinary cases) from the moment that it is “reduced to practice” — which simply means that the inventor has described the invention sufficiently for someone “skilled in the art” to make, use, or “practice” the invention. However, patent rights and copyrights do not depend upon the manufacture and sale of the invention nor on the public dissemination of the work of authorship. The Patent Act states quite clearly that the patent right is the right to “prevent others from using” the invention. Similarly, the copyright is the exclusive right to make and distribute copies of a work of authorship. Neither right requires the inventor or author to make their work available to others, or even to use it themselves, while copyright and patent protection exist.
In sharp contrast, rights in a trademark exist only when a trademark is used in trade, only for as long as the trademark remains in use in trade, and only to the extent to which it is used. That is, although U.S. trademark law allows for certain potential trademark rights to be “reserved” before the mark is actually used (under a bona fide intention to use the mark), the fact remains that until a trademark is actually used to identify a product or service sold in a marketplace, no trademark right exists in that mark. Further, if a trademark disappears from use in the marketplace for a period of time, the trademark rights that existed in that mark disappear along with it. And further still, rights in a particular trademark extend only into the particular market or markets in which the mark has been used or is well known, and they apply only to the particular kinds of products with which the mark has actually been used. In an extreme case, trademark rights in a particular mark may extend only to the city limits of a single city and identify but a single product. On the other hand, a particular mark, through its continuous and widespread use in the marketplace, may become so completely identified with certain products and their source that the trademark rights in that mark can become nearly universal, both in terms of the marketplace and in terms of the products which it could be used to identify.
In general, however, the rights you have in any trademark are limited to the kinds of goods and/or services with which the mark is used in commerce and goods and services “closely related” to them. That is, while one person or company may own a particular mark for easy chairs and television sets, another person or company may, at the same time, own rights in the identical mark for hockey sticks and travel services. The distinguishing mechanism preventing a “likelihood of confusion” arising from the use of identical or very similar marks is taken to be the separation between their respective “channels of trade.” As a result, while people the world over recognize Ford for cars, trucks, and auto financing, and the Ford Motor Company owns 125 of the 128 registrations of the word mark FORD, the other three registrations are owned by others who use the mark on vitamins, chewing gum, and vending machines.
Also unlike copyrights and patent rights, trademark rights, once acquired, exist for as long as the owner of the mark continues to use it. Although certain rights and benefits are protected only by maintaining registration of a mark, ownership and the exclusive right to use it can endure virtually forever, while copyrights and patent rights endure only for a specified period of time, after which the created thing goes into the “public domain” for use by all. This points to another important difference between the notion of trademark protection and idea behind the protection of other intellectual property. The benefit to society of an invention or work of authorship is that the public may (eventually, at least) freely use and/or enjoy it. So, in order to encourage inventors and authors to (ultimately) give to the public things people can use and enjoy, society first gives the exclusive right to use the thing, as he or she sees fit, to the inventor or author — who may see fit to keep the thing in a vault for the time allowed. In contrast, the benefit to society of a trademark is its exclusive and unambiguous identification of the source — and so the quality — of goods and services that the public may buy. So, it is incumbent on society to see to it that a trademark always belongs exclusively to the particular maker of the goods or provider of the services which the mark identifies to the public.
Thus, trademark law is trade law. In that regard its purpose is to protect the often significant investment made by companies and individuals into establishing their reputation for the quality and character of their products, but trademark law is also among the earliest of the consumer protection laws. It protects the “mark” which, in the marketplace, identifies to consumers the source of the goods and services they may want to buy, and so prevents inadvertent confusion among consumers, and the willful deceit of consumers, as they go to the market and make their buying decisions.