You might not have realized it, but you have been dealing with trademarks on a daily basis. According to the U.S. Patent and Trademark office, a “trademark” refers to “any word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of another.” A company brand is another simple way to think of trademarks. Trademarks are efficient tools of communication utilized by businesses to speak to customers. Trademarks represent the reputation of a brand; consumers’ purchasing decisions are influenced by them. That is why the government deems it fit to protect trademarks, and by extension, the intellectual property value of businesses using the Trademark Act of 1946.
The US Trademark Act of 1946, also known as the Lanham Act, was designed to protect all businesses that engage in interstate commerce. Unlike patents and copyrights, trademarks can be protected under state law, federal law, or both.
In protecting a trademark, registration is not necessary. See Pesos v. Taco Cabana, (1992) 505, U.S. 763 at 768. A trademark derives protection by virtue of distinctive use. The benefit of a trademark registered under the federal law is that the registration serves as evidence of both the ownership and validity of the mark, including the right to use it for commercial purposes.
Now, between an employee and an employer, who should own a trademark? The owner of a trademark can include but is not limited to the following; individuals, sole propriertorships, limited liability companies (LLCs), partnerships, corporations, trusts, etc. See Section 1 (a) of 15 U.S.C 1051 for more information.
The person or entity that controls the nature and quality of the goods/services provided under the trademark is the owner of the trademark. (United States Patent and Trademark Office, 2020) Therefore, it is important that an employer maintains control of the use of the mark and most especially, controls the nature and quality of the goods or services during an employer-employee relationship. Failure to do so can invalidate the registration of the mark. However, an employee can enter into a contract of co-ownership with his employer to jointly own a trademark.
