Trademark vs. Copyright: What You Can Do in Court

By Paul S. Rafelson, Founder, Rafelson Law PLLC

How do the three positions compare?

What can I do with an unregistered or pending trademark?

Section 43(a) protects marks that have not been registered. The plaintiff must show a protectable mark and that the defendant’s use is likely to cause confusion, and rights depend on actual use and the market where the mark is known. An intent-to-use application with no sales under the mark gives you no § 43(a) claim. Use comes first. In Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), the Supreme Court held that inherently distinctive trade dress is protectable under § 43(a) without proof of secondary meaning, and that registration is not required. Product design is different. Trade dress in a product’s shape always needs secondary meaning (Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000)). You also must prove the design is not functional (15 U.S.C. § 1125(a)(3)). A descriptive mark generally needs secondary meaning. Remedies include an injunction and, in the court’s discretion, the defendant’s profits and damages. Proof is heavier than for a registered mark because no registration helps establish validity, ownership or the scope of the rights. See what a pending mark cannot do.

What does trademark registration add?

• An infringement claim under 15 U.S.C. § 1114.
• A presumption. A registration on the Principal Register is prima facie evidence of validity, ownership and the exclusive right to use the mark for the listed goods (15 U.S.C. §§ 1057(b), 1115(a)).
• Constructive notice of the claim of ownership (15 U.S.C. § 1072), which limits a later user’s good-faith argument.
• Incontestability where the statutory conditions are met (15 U.S.C. §§ 1065, 1115(b)), which makes registration conclusive evidence of some points, subject to listed defenses.
• Counterfeiting remedies, which the statute ties to a registered mark (15 U.S.C. §§ 1116(d), 1117(c), 1127).

What can I do with a copyright?

Copyright arises when original expression is fixed, and the owner has the exclusive rights in 17 U.S.C. § 106 from that moment. To sue for infringement of a U.S. work, the owner generally must first have the work registered, or have had registration refused after applying (17 U.S.C. § 411(a)). In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. 296 (2019), the Supreme Court held that registration occurs when the Copyright Office registers the copyright, not when the owner applies. Once registered, the owner can recover for infringement that occurred before and after registration, but statutory damages and an award of legal expenses are limited by 17 U.S.C. § 412: they are generally unavailable for infringement that began before registration unless a published work is registered within three months after first publication. The Copyright Office offers special handling in some circumstances, such as pending or prospective litigation. A suit must be brought within the limitations period in 17 U.S.C. § 507(b).

For a product listing, the photographs, the description text and the artwork are the copyright-protected parts. The product’s name and logo are for trademark law. A copycat that copies both can be the target of both claims.

Where do the two systems stop?

• Copyright does not protect names or short phrases (37 C.F.R. § 202.1(a)), and trademark law does not protect expression as such.
• Section 43(a) is not a substitute for copyright. In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), the Court held that “origin” in the Lanham Act means the producer of the tangible goods sold, not the author of any idea or content they carry. A claim of copied content belongs in copyright.
• Ownership comes first. A copyright owned by a photographer or designer who never assigned it to you is not yours to enforce; assignments must be in writing (17 U.S.C. § 204(a)).
• Platform processes differ from court. A platform takedown request for copyright does not depend on registration, but a lawsuit generally does. See reporting infringement through Brand Registry.

Why the order matters

A brand suing on a right it does not hold, or on the wrong right for what was copied, loses time and sometimes the case. The copying, the timing of registration and the forum each change which claim survives. We match the claim to the copying before anything is filed. See demand letters and litigation.

How do I get started?

Contact us. Tell us the brand, the work or mark involved and what has been copied, and we will tell you whether we can help.

Frequently asked questions

Related pages

Sources and notes

• 15 U.S.C. §§ 1057(b), 1065, 1072, 1114, 1115, 1116(d), 1117, 1125(a), 1125(a)(3), 1127; 17 U.S.C. §§ 106, 204(a), 411(a), 412, 501, 504, 505, 507(b); 37 C.F.R. § 202.1(a).
• Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. 296 (2019); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000); Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).