Requirements to Qualify for Protection

Protectable subject matter:


Trademarks are governed by the Lanham Act, 15 U.S.C. § 1051 et seq. There are three basic requirements for a protectable mark: (1) the mark must be distinctive, (2) the mark must be non-functional, and (3) the mark must be used in commerce. If these three requirements are met, then a wide range of marks are eligible for protection. These can include words, phrases, and images, as well as more niche applications like colors, scents, and textures. It is important to note that registration is not a requirement for protection, although registration provides significant benefits, which will be discussed later.

Distinctiveness speaks to the mark’s ability to identify a specific source of the goods or services it is identifying. If the mark lacks distinctiveness, it fails to differentiate between sources. The level of distinctiveness is measured along the Abercrombie Spectrum. Marks that are deemed generic or merely descriptive are not distinctive and are therefore not protectable. Protectable marks can either be inherently distinctive (the strongest level) or can have acquired distinctiveness. Marks with acquired distinctiveness are descriptive marks that have acquired a secondary meaning within the relevant market. Distinctive marks are further divided into suggestive, arbitrary, and fanciful marks.  See below for a visual representation of the Abercrombie spectrum.

A mark is not eligible if it is functional, as trademark law does not seek to create monopolies over useful items. If a design is found to be superior in a utilitarian basis, it is functional and not protectable. A foundational case in this area involved a special design for the shape of a spray bottle. Ultimately the court found that the bottle did not function in a superior way compared to other similar bottle designs, so it would not be barred from trademark protection on functionality grounds.

The use in commerce requirement is a result of trademark law’s origins in the Commerce Clause. It also offers the benefit of preventing “trademark trolls” or those who would create a wide variety of marks in the hopes of being able to reap the benefits of those who eventually wish to use those marks. It is possible to register marks prior to actually using the marks in commerce, if the registrant has a “bona fide intent” to use the mark in commerce.

It is important to provide notice that you are claiming ownership of a trademark when using it. Before registering the mark, notice can be provided by including TM with the mark whenever it is used (or SM in the case of service marks).  After the mark is registered, notice can be given through the registered trademark symbol, ®. Notice is vital for a successful trademark infringement suit, as damages are not recoverable for infringement that occurs before notice is given.

One element that separates trademarks from other forms of intellectual property is the length for which they are protected. Unlike copyrights and patents, which have defined lengths of protection, a trademark holder will retain rights in their trademark as long as it remains in use. This indefinite term provides trademark holders with great value and incentive to continue building their brand over time.


Copyrightable material is based on the Copyright Act, 17 U.S.C. § 101 et seq. The Copyright Act provides a list of different categories of “works of authorship”: (1) literary works, (2) musical works, including any accompanying words, (3) dramatic works, including any accompanying music, (4) pantomimes and choreographic works, (5) pictorial, graphic, and sculptural works, (6) motion pictures and other audiovisual works, (7) sound recordings, (8) and architectural works. Software is also protectable, but only the nonfunctional aspects of software, such as its arrangement. Protection is derived at the time of a work’s creation, although registration provides significant benefits, which will be discussed later.

The work of authorship must meet two other requirements: (1) fixation in a tangible medium of expression and (2) minimal creativity.

A tangible medium of expression can take many forms. These tend to be fairly straightforward. Literary works are fixed as books or magazines, musical works are recorded as sheet music, etc. It is still an important requirement for protectability. For example, the words of a speech are not protectable, except to the extent they are fixed, either through a sound recording or writing.

As the name would suggest, minimal creativity is a low bar. Given how subjective the concept of creativity is, it would be difficult to adjudicate such disputes. Still, an author must leave some creative impact on the work, rather than claiming authorship over a natural creation.

Notice that an author is claiming a copyright in a work can be provided by displaying the copyright symbol, ©, Copr., or Copyright along with the work. The notice must also include the name of the author and the date of the work’s first publication. To be effective, the notice must be displayed in a manner and location to reasonably provide notice. Unlike with trademarks, notice is not required to bring a copyright infringement suit. Notice does, however, eliminate the “innocent infringer” defense if a suit is brought.

The length of copyright protection is complicated and has varied throughout history. Perhaps the most famous increase was 1998’s copyright term extension act, commonly referred to as the “Mickey Mouse Protection Act.” Generally, copyright protection persists for the length of the author’s life, plus 70 years. For works with multiple authors, the protections last for 70 years after the death of the last surviving author. Anonymous works, pseudonymous works, and works for hire are protected for the lesser of 95 years from first publication of the work or 120 years from the work’s creation. Once copyright protections expire for a work, it enters the public domain.


Patents are governed by the Patent Act, 35 U.S.C. § 101 et seq. The Patent Act allows for the protection of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” In order to obtain a patent, the items must be novel, non-obvious, and useful. Only the person engaged in the act of inventing the item may apply for the patent (whether at an individual or corporate level). Patentable items can be further broken down into four categories: processes, machines, manufactures, and compositions of matter.

The process for registering a patent is called patent prosecution. This process is significantly longer than the registration process for trademarks and copyrights, lasting 2-3 years on average.

Patent protections last for 20 years from the time the application for the patent is filed. This time is meant to strike a balance between competing interests. It gives inventors 20 years to profit exclusively from their inventions, while not extending the protection for so long that the public cannot benefit for the innovation.


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To the extent possible under law, Samantha Prince has waived all copyright and related or neighboring rights to Entrepreneurship Law: Company Creation, except where otherwise noted.