Trademark vs Patent

United States Patent and Trademark Office (U.S.P.T.O.) is responsible for evaluating, issuing, and management of trademarks and patents. Understanding the distinction between trademark vs patent is necessary for any organization. In this article, I explain the differences in prerequisites required for trademark vs patent. Patent law is complicated and there are several layers of intricacies in each area of the registration process. As this is a comparison of trademark vs patent article, expansive patent law concepts are written concisely.

Trademark

  • Trademarks function as a source identifier to goods and/or services that are sold or offered for sale in interstate commerce.
  • I covered trademark eligible subject matter, functionality, distinctiveness for trademark vs patent comparison purposes.
  • Trademark protection can extend forever, as long you pay the USPTO renewal fee and maintain the brand “good faith.”

Patent

A patent is:

  • A limited private property right granted by the government in exchange for certain public disclosures;
  • Provides the owner with the right to exclude others from practicing the claimed invention;
  • For a limited period of time. A utility patent is given only 20 years from the date of non-provisional patent application.
 

Trademark eligible subject matter

Trademark eligible subject matter encompasses any word, name, device or a combination to identify goods and/or services in interstate commerce. The following are mostly not eligible for trademark protection because they do not serve as source identifiers. The below list is not exhaustive. Some of them are listed for informational and comparative purposes.

  • Trade names (or business names) with no source-identifying function cannot be granted a trademark.
  • Features that are merely ornamental or decorative are not eligible for trademark registration. However, if the mark is serving as a source-identifying function and incidentally as a decorative, then it may become eligible.
  • The mere informational matter is ineligible for trademark registration. If the consumers in the industry felt that the mark is just conveying information, then it is ineligible for registration.
  • The title of a single creative work is not eligible for trademark registration. However, if the title is a part of a series of creative works, then it may become eligible.
  • Mark that only identifies a character in creative work is not eligible for a trademark.
  • Scent can be registerable if it is used in a non-functional manner. Examples of functional and utilitarian use include perfume or deodorant smell and are not distinctive. 
  • Hashtags on social media may become registerable if it identifies a source of goods and/or services. Consideration is given to the overall placement of hashtag, commercial impression, and identification of goods.
  • The immoral or scandalous matter is not eligible for trademark registration. The examining trademark attorney will look at the ordinary and common meaning when considering the scandalous matter.
  • Deceptive marks are also not eligible for trademark registration.
  • Descriptive marks may become eligible to trademark registration only on the supplemental register. These descriptive marks may become eligible to get registered on the principal register if they acquire secondary meaning.

Trademark must be non-functional

  • Marks that are functional cannot get U.S. trademark registration. 
  • Trademark law does not allow registration for “matter that, as a whole, is functional.” See 15 U.S.C. §1052(e)(5)
  • The functionality or utility of a product serves as a key distinguishing factor between a trademark vs patent.
  • They are two types of functionalities:
    • De Facto functionality: When the design of a product has functional features, it is called De Facto functionality. It is still possible to identify a source and obtain trademark protection.
    • De Jure functionality: It only works well as a product because of its design, or its features. 
  • Apparatus, designs that are functional may be eligible for patent protection due to utility. This is one of the distinguishing features between trademark vs patent.
  • Functionality Test: 
    • Morton-Norwich factors:
      • Existence of utility patent on the product showcasing the utility.
      • Advertising utilitarian superiority of the trademark product may go against the claim of non-functionality. 
      • The method and cost of manufacturing also influence functionality determination.
      • Availability of alternative designs to competitors. See In reMorton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A. 1982).
  • The examining trademark attorney at USPTO conducts independent research based on the shared specimen. 

Inherent distinctiveness

A trademark must be distinctive before trademark registration in the principal register. There are two ways to show distinctiveness. They are:

  • Inherent distinctiveness.
  • Acquired distinctiveness.

Inherent distinctiveness concept is derived from federal case law.

  • “A mark is inherently distinctive if its intrinsic nature serves to identify a particular source.” See Wal-mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 210 (2000).
  • Inherent distinctiveness can be credited to brands that satisfy the following criteria:
  • Example of Inherently distinctive mark:
trademark vs patent
 

Types of marks

All of the marks are not inherently distinctive. Some are more distinctive and few others are less distinctive. Determining the amount of distinctiveness is necessary to grant trademark registration. There are four types of marks. Below are listed in the order of increased distinctiveness:

  • Generic mark: It is a member of a group and can only be classified by the basic characteristics of the group. There are no individualized characteristics to identify them.
  • Descriptive marks: Identified by a characteristic or quality of a good or service.
  • Suggestive marks: These marks require the consumer to use some imagination to understand offered goods or services. 
  • Arbitrary or fanciful marks: These marks bear no relationship to the products or services offered.
See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 768 (1992). Generic marks have no protection, whereas fanciful marks are highly distinctive, and thus protected.

Acquired distinctiveness or secondary meaning

Whenever the trademark is not inherently distinctive, then you may prove distinctiveness by second meaning. “A name has acquired secondary meaning:

  • When the primary significance of the term in the minds of the consuming public is not the product but the producer.” See Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir.2007)

There are two ways to prove acquired distinctiveness. They are based on the following:

  • Direct evidence:
    • Consumer survey: This is a highly expensive proposition for a trademark applicant. These surveys need to be independent and not biased by your sponsorship of the survey.
  • Circumstantial evidence:
    • Acquired distinctiveness test for 11th circuit:
      • “The length and nature of the name’s use; 
      • The nature and extent of advertising and promotion of the name;  
      • The efforts of the proprietor to promote a conscious connection between the name and the business; and
      • The degree of actual recognition by the public that the name designates the proprietor’s product or service.” See Conagra, Inc. v. Singleton., 743 F.2d 1508, 1513 (11th Cir.1984). 
  • Trademark is not functional but distinctive situation:
    • If the product design is not functional, then the mark may be registered on the supplemental register.
    • If the product design has acquired distinctiveness, then it can be registered on the principal register. 
  • Trade dress exception: Trade dress is different from the trademark. Trade dress is the overall look and feel of the product including packaging etc. For trade dress, showing of acquired distinctiveness is not enough for trademark registration. If the trade dress is functional, it cannot be registered for trademark. 

Patent eligible subject matter

  • “Whoever invents any new and useful process, the machine, manufacture, or composition of matter” may obtain a patent. See 35 U.S.C. §101.
    • Exception: The following are not eligible for patent protection.
      • Products of nature;
      • Abstract ideas; and
      • Natural phenomenon.
  • Abstract ideas and scientific truths are not afforded any patent protection. However, a novel structure that is useful based on scientific truth may be given patent protection.
  • Machine-or-Transformation Test (or MOT): This test is a useful indicator and an important clue about the patent-eligible subject matter. MOT test alone is not enough for patent eligibility determination. Below is the Machine-or-Transformation Test:
    • It is implemented by a particular machine in a non-conventional and non-trivial manner; or
    • Transforms an article from one state to another.
  • Test for patent-eligible subject matter:
    • First, evaluate if the patent is directed to an abstract idea;
    • Second, if the claims “contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” See Alice Corp. v. CLS Bank International 134 S.Ct. 2347 (2014).

America Invents Act (or AIA)

AIA changed procedures for patent registration and brought US patent procedures in-line with the world. For this legal article purposes, I will not discuss pre-AIA law. To get patent registration, your patent must be patent-eligible subject matter, novel, non-obvious, and definite. I will explain three important statutes under AIA. They include:

  • Novelty – 35 U.S.C. § 102. Check for statute amendments in the above hyperlink.
  • Non-obviousness – 35 U.S.C. § 103. Statute amendments are available in the above hyperlink.
  • Written description, indefiniteness, and enablement – 35 U.S.C. § 112. Look for statute amendments in the hyperlink.

Novelty

  • Before I start talking about novelty, there are some basic patent concepts that need to be understood.
  • Prior art: When something is available to the public, obvious, or already patented, then it is called prior art. Prior art is not eligible for patent protection.
  • AIA applicability: For US patent documents, at-least one claim having an “effective filing date” on or after March 16, 2013, comes under AIA law.
    • Effective filing date: It is the earliest of the following:
      • Actual filing date;
      • Domestic benefit date: It is the earliest filing date of the following:
        • Non-provisional US patent application: Must meet the below criteria:
          • The common inventor of earlier and later patent application.
          • The earlier application must disclose the invention claimed.
          • The later document must reference the earlier application and be filed while the earlier one is pending. 
        • Provisional US patent application:
          • A later patent document is filed within 12 months of the earlier application.
      • Foreign priority date.
  • Novelty: The claimed invention was not 
    • Patented;
    • Described in a printed publication;
    • Or in public use;
    • Sale; or
    • Otherwise available to the public before the effective filing date of the invention.” See 35 U.S.C. § 102(a)(1);

                                                         OR

Non-obviousness

Non-obviousness can be defined as the following:

  • “The differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious;
  • Before the effective filing date of the claimed invention to a person having ordinary skill in the art;
  • To which the claimed invention pertains.” See 35 U.S.C. § 103.

PHOSITA: This is not a statute related acronym. However, this term gained popularity because of the federal case law and USPTO patent registration guidelines. PHOSITA means a person having ordinary skill in the art. PHOSITA is actually quite knowledgeable in the industry with the expectation of learning new skills. For example, an electrical engineer as a PHOSITA is expected to know all the underlying electrical engineering concepts.

Obviousness factors: The supreme court of the United States laid out four factors to analyze obviousness. They are:

  • “Determine the scope and content of prior art.
  • Identify differences between the claimed invention and prior art.
  • Determine the level of ordinary skill at the time of invention/filing.
  • Is there objective evidence of non-obviousness?” See Graham v. John Deere Co., 383 U.S. 1 (1963).

KSR Supreme court case: KSR case law further refined the obviousness inquiry for a patent. The decision stated that it is “important to identify a reason that would have prompted a [PHOSITA] to combine the elements in the way the claimed new invention does.” See KSR International Co. v. Teleflex Inc.,  550 U.S. 398 (2008).

  • Teaching, suggestion or motivation (or TSM) test provides “helpful insight” to identify a reason for combining prior art.

Written description and enablement

The patent application contains a specification section. The following statutory definition covers both written description and enablement.

  • “The specification shall contain a written description of the invention; and
  • Of the manner and process of making and using it;
  • In such full, clear, concise, and exact terms;
  • As to enable any person skilled in the art to which it pertains;
  • To make and use the same…” See 35 U.S.C. §112(a).
  • To satisfy the written description requirement for a patent application, a drawing may suffice.
  •  Enablement requirement is satisfied when the invention informs any person skilled in the art to make and use it.

Indefiniteness

Indefiniteness is one of the reasons for receiving patent office action. To understand this concept, let’s look at the statutory definition and then federal case law.

  • “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter.” See 35 U.S.C. §112(b).
  • A patent is invalid for indefiniteness:
    • “If its claims, read in light of the specification delineating the patent, and the prosecution history;
    • Fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).
    • Further, the court stated that allowing imprecision in the application might cause a claim to be “insolubly ambiguous.”

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 platform and lawyers (dot) com platform.