Trademark vs Copyright
Any trademark or copyright owner must know the difference between trademark vs copyright. Sometimes, a trademark can also work as a copyright. Few other times, trademark and copyright cannot co-exist under the law. On this page, we will explain in detail the difference between trademark vs copyright with examples.
- A trademark works as a source identifier of goods and/or services.
- The marked goods and/or services must be sold or offered for sale in interstate commerce.
- Copyright law protection exists for original work of authorship fixed in a tangible medium of expression.
- This original work can be perceived, reproduced either directly or with the help of a device.
Types of trademark
Trademarks can be classified based on two criteria. One is source-identifying nature and another is a type of mark.
Types of copyright
Authorship in original work can be in any of the following categories.
- Literary works;
- Dramatic works, along with the music;
- Musical works along with words;
- Choreographic works;
- Pictorial, graphical and sculptural works;
- Motion pictures and other audiovisual works;
- Sound recordings;
- Architectural works, etc.
Check 17 U.S.C. § 102 (a) for a full list of copyright categories allowed.
The following are examples of situations where you can get copyright protection. This is more clearer explanation of the items listed in statute 17 U.S.C. § 102 (a).
- Literary works:
- Computer programs.
- Single serial issues: These are issued on a scheduled timeline successively following a chronological order that can be continued indefinitely. Examples include newspapers, magazines, periodicals, journals, bulletins, newsletters, annuals, etc.
- Secure Tests and test items: Examples include secured tests such as SAT, GRE, LSAT, etc.
- Automated databases.
- Websites and website content: Examples include your website and website content. The content of the website require sufficient originality for copyright registration purposes.
- Performing arts:
- Musical compositions.
- Motion pictures including video recordings.
- Sound recordings.
- Multimedia works.
- Choreography and pantomime: Pantomime can be described as imitating, presenting, characters, “through the use of physical gestures and bodily movements.” Check copyright circular 52 for more on pantomime.
- Visual arts works:
- Architectural works.
- Pictorial, graphical and sculptural works.
- Other copyrightable works:
- Pseudonyms: Book authors sometimes prefer anonymity to avoid publicity. Using fictitious print names by an author to identify in public can be registered when applied with copyrightable content.
- Mask works: Three-dimensional images or patterns formed on the layers of the semiconductor material and fixed in a chip may get protection. Limitation of design choices or any particular design function may lower the chance of copyright protection. Ideas are not protected under copyright law.
Example with no trademark protection
- Expressions that cannot work as source-identifying will not get trademark protection.
Examples with no copyright protection
The following cannot obtain copyright protection. They include:
- Business names, titles, and short phrases.
- Catchphrases, slogans.
- Domain name or URL: Domain name alone will not get copyright protection. The domain name need to be accompanied with necessary originality on web pages to get protection.
- Character name.
- Product or service name.
- Band name.
- Title only with no copyrightable content. Examples include book title only, song title only, etc.
Trademark registration process
We have a detailed step-by-step trademark registration process on the trademark attorney page of this website. We will briefly mention the trademark registration process on this page for trademark vs copyright comparison purposes.
- Identify your brand name.
- Conduct a comprehensive trademark search.
- Review the search results and get an opinion letter from a trademark attorney.
- Select the type of mark and international class that describes your mark.
- You need to show a specimen to show use in interstate commerce.
- Apply for trademark registration using TEAS PLUS or TEAS RF application accompanied by USPTO filing fees. TEAS PLUS application costs $ 225 per international class. TEAS RF application costs $ 275 per international class. The selection of either one depends on the individual application.
- Examining trademark attorney may respond within 3-4 months with a non-final office action.
- Based on your response and specimen, you may be issued a trademark.
Copyright registration process
To apply for copyright registration, an applicant needs to submit the following. An online application is a preferable method for faster service at the copyright office.
- Completed copyright application form: The application includes the following:
- Original work title;
- Author name;
- Name and address of the copyright owner;
- Year of creation;
- Whether work was previously registered.
- Copyright filing fee: The electronic copyright application for basic claims is $ 55.
- Exception: If the registration is for the following:
- One work;
- You are the sole author;
- While not working for hire, then the copyright fee is $ 35.
- Exception: If the registration is for the following:
- Deposit of the non-returnable original work with the copyright office. The office will not review your application until they receive the deposit. The copy can be of multiple types.
- The physical or digital format of original work: If your work is published in a physical format, then you need to deposit a physical copy. It does not matter whether you have a digital copy. If you have a digital-only copy, then one complete electronic copy of digital work needs to be submitted.
- Published or unpublished nature of work;
- Publication location is in the United States or a foreign country.
Trademarks can last forever. However, you need to take measures to protect the brand name with “goodwill” and make periodic payments to USPTO.
- Incontestable trademark affidavit: If the trademark registration is in continued use for 5 years, then you may file the trademark affidavit.
- Section 8 affidavit: Between the 5th and 6th year after trademark registration, the owner must file a Section 8 affidavit. Further, section 8 affidavit needs to be filed between 9th and 10th year after trademark registration. Then, section 8 filing each successive 9th and 10th year from the previous filing. This shows that the trademark is in-use and maintaining it’s “goodwill” in public.
Copyright duration is limited. The copyright duration is dependent on three factors. They are:
- Original works created on or after January 1, 1978:
- Sole author or joint works: The duration is the last living author’s life plus 120 years.
- Work made for hire: The duration is 95 years from the date of first publication or 120 years from creation date, whichever is earlier.
- Original works copyrighted before January 1, 1978.
- Works not copyrighted but in existence before January 1, 1978.
The trademark owner must renew every 9th and 10th year after trademark registration. For renewal purposes, a trademark must be in continuous use. No additional specimen is required for renewal.
For original works published on or after January 1, 1978, there is no copyright renewal.
There are two types of license grants. They include:
- Exclusive trademark license: This is not common and locks-up the brand name with the licensee. The licensee is the party receiving the license.
- Non-exclusive trademark license: This is the most common option for trademark owners to monetize the ownership of the brand.
Trademark grant clause
The trademark grant clause is the most important in the license agreement. It defines the boundaries of the offered license. Grant clause should include a licensed trademark and any other related marks agreed under the term-sheet.
Sub-licensing of trademark
Trademark owners may allow sub-licensing in the granting clause. Sub-licensing gives authority to the licensee to allow the use of the trademark by the third party. Sub-licensing can be very lucrative to the trademark licensee.
Quality control provisions
Trademark owner must make sure to maintain quality and consistency of the brand name.
- Overall look and feel of the brand need to be consistent throughout the use. This applies in non-exclusive license situations as well.
- Conduct regular inspection and audit check to see the maintenance of branding and labeling of a product.
Avoiding gray market goods
Gray market goods are authorized to be sold in a territory or a foreign country. Geographical price differentiation is one of the methods trademark owners and brands use to make royalties. For example, the price of a Nike shoe is lower in a developing country when compared to the United States. However, unauthorized third parties cannot import goods from a lower price territory to another territory for a good margin.
There are two types of copyright license grants. They include:
- Exclusive copyright license.
- Non-exclusive copyright license.
Copyright assignment must be in writing and signed by the owner or their representative. Assignment of copyright transfers ownership. Please check 17 U.S.C. § 204(a) to know further about the copyright assignment statutory text.
Recordation of copyright assignment
Copyright assignment recordation at the copyright office has certain advantages. Recordation gives priority over subsequent bona fide purchasers for value based on recording and public notice.
Contracting around first sale doctrine
First sale doctrine is an affirmative defense under copyright law. Once the copyright owner chooses to place the original work in the stream of commerce (i.e., for sale), then the exclusive distribution right has been exhausted. Please check 17 U.S.C. § 109 (a) for statutory text.
Based on the above statute, it became important to cleverly draft the licensing agreement to avoid first sale doctrine. 9th Circuit court of appeals laid out a test to determine whether the work is a sale or a license.
Test for first sale and copyright license determination
The test for determining whether something is a sale or a copyright license is dependent on factors. “A software user is a licensee rather than an owner of a copy where the copyright owner
- Specifies that the user is granted a license;
- Significantly restricts the user’s ability to transfer the software; and
- Imposes notable use restrictions.” See Vernor v. Autodesk, Inc., 621 F.3d 1102 (9th Cir., 2010).
In this page, we covered the comparison of trademark vs copyright with examples. Further, we also covered registration process for both trademarks and copyrights. Brief explanation of licensing concepts for both trademarks and copyrights is included.
Page Author: Bharath Konda, Esq.
Bharath Konda is a trademark attorney. He has a law license in Minnesota and the District of Columbia. He provides trademark registration services for individuals and businesses. You can check the Bharath Konda attorney profile page at MN state Bar Association. Further, feel free to check the attorney profile on legal information retrieval websites such as Avvo and Justia. Some of the sample trademark attorneys answered questions are on platforms such as Justia ask a lawyer and lawyers (dot) com platform.