In this chapter, we address the phenomenon of overlapping trademark and copyright protection under United States (U.S.) law, which represents, in our view, an important example of intellectual property (IP) rights in transition. The Lalique bottles created for Nina Ricci perfumes, for example, may enjoy both copyright and trademark protection.3 Similarly, cartoon characters are components of copyrightable works (and in some jurisdictions, may be copyrightable works in their own right),4 but many have also long been registered as trademarks for entertainment services or merchandise.5 Copyright and trademark protections will overlap when the same object is both an original work of authorship but also serves to identify and distinguish one producer’s goods or services. In theory, the regimes promote different objectives: creativity in the case of copyright, and source identification (or more abstractly, honest market information) in the case of trademarks. The contours of protection differ as well. U.S. copyright law covers original works of authorship; these include a large array of creations, including pictures, architectural works, computer software, and even some works of applied art, so long as they are minimally creative. By contrast, under U.S. law, a trademark need not be creative (though many in fact might be), but it must be “distinctive,” because a sign that does not identify and distinguish goods or services does not fulfil its function of identifying products in the market place as originating with a single source.6 Accordingly, even though creativity is different from distinctiveness, some trademarks can be original works of authorship and some creative works can be distinctive signs.

This chapter addresses the harmonization of trademark laws, both substantive law and administrative procedures, within different regional organizations. The topic of regional harmonization and procedural integration of laws is relevant in today’s geopolitical and economic framework considering the importance of trademarks for regional trade as well as the relevance of regional organizations as alternative fora for advancing trade and intellectual property (IP)-related negotiations instead of (or in addition to) multilateral negotiations at the World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO). In particular, this chapter compares four distinct regional organizations in order to highlight different levels of regional harmonization and cooperation in these areas – from full harmonization, including the establishment of supranational rights and supranational institutions ruling on the interpretation of national and regional laws, to less integrated approaches based on the cooperation of national or regional offices regarding trademark registrations, and related administrative procedures.

This chapter addresses the phenomenon of overlapping rights under US law and complements Chapter 25 authored by Professors Derclay and Ng-Loy on the overlap of trademark, copyright, and design protection under several other Common Law and Civil Law jurisdictions. Because the United States does not provide sui generis protection for industrial design, but instead protects design through trademark law (notably by protecting trade dress) and design patents, this chapter focuses on the overlap between trademark and copyright protection.1 The Lalique bottles created for Nina Ricci perfumes, for example, may enjoy both trademark and copyright protection in the United States.2 Similarly, cartoon characters are components of copyrightable works (and in some jurisdictions, may be copyrightable works in their own right),3 but many have also long been registered as trademarks for entertainment services or merchandise.4