Trademarks: The IP that isn’t IP

I have asked, begged, cajoled and — well, no I haven’t threatened Ed Timberlake; who could do that? — but in any event, he won’t write a guest post on this topic. So I have to rely on this tweet to get the post going:

Ed is right, and you could add a few more hashtags to that (he did say, #whathaveyou): #customs, #personalityrights, #tradedress… Some of these things are, actually, IP. Ed’s point is that these are really separate topics and, typically, separate practices, and they are getting further and further from each other every day. Yet we keep referring to “intellectual property law,” lawyers, associations, rights… it’s just not right.

But some of the things in these hashtags aren’t IP at all. One of them is trademarks, a proposition regarding which Ed and I agree.

Here is why we say this.

“Intellectual property” is premised on the concept that there are property rights in fruit of the intellect — creations of the mind, or of multiple minds, or minds assisted by technology — that are abstract or intangible, This property is “intellectual” because it is born in the brain, but it is fair to say that what we really mean by the term is intangible property of a non-financial kind.

Trademark lawyer Ron Coleman

Basics: there are two main kinds of tangible property: real property (land) and chattel or “personal” property (stuff).

There are lots of kinds of intangible property, however, that are not brain-born. This includes (nice treatment here):

  • Bank accounts
    • Franchises and licenses
    • Insurance policies
    • Stocks, bonds, promissory notes, and similar documents that aren’t themselves valuable but merely represent intangible rights; currency is sometimes treated as an intangible

The list I just quoted from Alan Romero also had a bullet point reading, “Intellectual property such as patents, copyrights, and trademarks.” And why not? Everyone, including your blogger until fairly recently, considers trademarks intellectual property.

But we’re wrong to do so. Because nothing about trademarks is brain-born other than what we might fairly call the ministerial choice to associate a given trademark with a good or service. That process may involve, and often does, a lot of thinking, creativity and intellection. But none of that invests the trademark itself — which may, in fact, be completely lacking in creativity (“Best,” “Ford,” “American”) — with the quality of intellectual, mental, creative or original content such that it should be deemed “intellectual property.”

Nice guys – but not intellectuals? With Pam Chestek and Ed Timberlake

More importantly, nothing about the intellectual contribution to trademarks is reflected in how we define the rights in trademarks. Copyrights, for example, protect works that are the tangible expression of originality: that’s an intellectual property right there. The key is originality. And while we often talk about being the “first user” of a trademark in order to establish priority of rights, that kind of originality (i.e., being the “original user”) is not about the trademark itself — which, again, may not be original at all in and of itself — but when it is first used.

Patents, similarly, protect novelty: new inventions, designs (ok, let’s leave the troublesome topic of design patents here for now or, rather, leave it here, where it belongs) and, of course… new plants. (Of course!) And, again, while we talk about novel trademarks such as great logos or coinages or even new types of trademark such as smell trademarks, “creativity” in this sense is not necessary for a trademark to exist at all. In fact, an uncreative trademark may be more stronger, valuable and, all told, more trademarky than an awesomely creative one because more consumers recognize it and associate it with the seller it represents.

Having trademarks on the brain doesn’t make them IP

So, then, what is a trademark? A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of the goods of one party from those of others. No brainer!

And that’s the point. Your rights in a trademark, which legally speaking are the only things a trademark is (i.e., a bundle of rights), do not reflect, embody or protect an intellectual process or product. In fact, a trademark such as FedEx, for example, can even “happen” without anyone thinking about it at all, arising from usage and being adopted and made official by their owners in recognition of the reality on the ground.

The key is, as the USPTO definition above says, “identifying and distinguishing the source of the goods.” (Or approving, or sponsoring… let’s also leave that here for now.) You can do that with just a single letter of the alphabet, if you try hard enough. While the idea of doing so may be a good one, that doesn’t make the trademark intellectual property, because such ideas are a dime a dozen. What makes any trademark a trademark is secondary meaning, of which there can be just enough (a weak mark) or lots (a strong mark). It’s the doing — the development of secondary meaning through sales, promotion, advertising; all the things — not the cleverness (though that may make the doing easier), that makes a trademark.

In contrast, a “work of authorship” is protected by copyright because it meets a standard, however minimal, of creativity. It is an expression of the intellectual process applied to creativity. An invention or process or even a patentable design is, similarly, a work of the creative, original human mind. Patents and copyrights are intellectual, and we protect them by establishing legal regimes that define them as “property” — subject to challenges as to their creativity or novelty.

Trademark law is a great intellectual playground, but trademarks themselves are not intellectual. Do they not speak, though? Yes; but if indeed trademarks they be, when they speak they speak not for themselves, but of the qualities of the goods and services with which they are associated. They are reading off the teleprompters of commerce; they are like dullard sitcom stars standing on the shoulders of great writers; they are mere conduits.

Strong trademarks conduct the qualities or brands that flow through them well; weaker ones are less conducive. We admire a great conductor such as Toscanini or a Bernstein, whose talents make their services immensely valuable. Great trademarks are immensely valuable too.

But the music, ultimately, is the intellectual product (and, for the life of copyright, intellectual property) of the composer. Trademark law isn’t for dummies, but trademarks themselves aren’t intellectual properties. And that’s ok.

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