when it came to registering design*sponge as a trademark and all the other legal details that come with it, i put it off for years, assuming i would be fine because i’d used the name for years. man, do i wish i had just gotten off my behind and registered it- now that i have an official government document i feel so much more secure and can sleep just a little bit easier at night knowing that if something bad were to happen, at least i finally did my homework and got everything squared away.
trademarks can see a little confusing or daunting, but thankfully amy everhart is joining us again today to explain the ins and outs of trademarks for designers. she explains how to determe if your work is protectable by trademark, breaks down the different types of trademarks, and then tells you how to make it all official. if you haven’t trademarked your business this post is MUST READ. believe me, when you have everything squared away on a signed legal document it really does take a weight off your shoulders. thank you again to amy everhart for sharing her expert advice here today.
CLICK HERE for amy’s full post after the jump!
Trademark 101 for Designers
by Amy J. Everhart
Designers naturally think of copyright issues because copyright protects the fruits of the designers’ labor. As the owner of a design business, however, you shouldn’t forget about copyright’s cousin: trademark. A trademark is a word, symbol, or phrase used to identify the source of products or services and to distinguish one manufacturer or seller’s products or services from those of another.
Trademark issues can arise in several contexts in the design world. You might use a trademark to identify the source of a product, such as a line of note cards or a piece of jewelry. Or you might use a trademark to identify your business, such as an online store or a design firm, where you sell your artwork or provide your design services. (A related concept is trade dress, the distinctive color, shape, packaging, design, or other visual characteristics of a product that identify the source of the product, such as the distinctive shape of the Cola-Cola bottle. Trade dress has unique considerations we’ll address in a future article.)
Below are some of the trademark basics every business owner should ponder.
Choosing a trademark
Many clients call me with a trademark assuming registration is simply a matter of paying the fee and sending off the forms. Choosing a trademark, unfortunately, is not so simple. Not every word, phrase, or symbol is protectable as a trademark, and even if it is, someone else may have beaten you to the punch. Before you get your heart (and your pocketbook) set on a trademark, you should make sure your mark is protectable and available. If you skip this step, you risk not only losing your nonrefundable trademark registration fee, but, worse, getting sued or being forced to stop using a mark in which you’ve invested your resources.
The first step is to determine whether your mark is protectable as a trademark. The more unique your mark, the more likely it is to be protectable. Marks fall into four categories: 1) generic; 2) descriptive; 3) suggestive; or 4) arbitrary or fanciful.
A generic mark literally names the class of products or services. An example is calling that fabulous new soda you invented “Soda.” Generic marks are never protectable as trademarks. A descriptive mark describes a quality or characteristic of the product or service. An example is calling your soda “Fizzy Liquid.” A descriptive mark typically is not protectable as a trademark except when the mark has achieved sufficient public recognition through long and continuous use in the marketplace.
A suggestive mark suggests qualities of the product or service. An example is calling your soda “Fizz.” Suggestive marks are protectable as trademarks. Finally, an arbitrary or fanciful mark has no logical connection to the product or service. The classic example of the arbitrary mark is Coca-Cola to describe soda. Arbitrary marks are protectable as trademarks and are the strongest marks.
Also, seems obvious, but a mark must be used as a trademark to be protectable as one. For example, slogans or phrases used on T-shirts, jewelry, and ceramic plates that buyers will perceive as conveying a message rather than indicating the source of the products are often rejected for registration as “purely ornamental.”
Even if a trademark is protectable, you still need to make sure it’s available. Your concern is whether someone 1) is using a mark similar to yours 2) in connection with a product or service similar to yours and 3) was doing so before you. Thus, if someone else is already using the name you’ve picked for your paper invitation line in connection with a line of note cards, the mark may not be available. But if someone else is using the name in connection with car tires, you probably don’t have an issue. Note, though, that you should avoid choosing a famous mark like Coca-Cola in any category, even if unrelated, because owners of famous marks have broader rights.
While you can conduct a trademark-availability search yourself, because of the nuances and the potential risks in using a trademark, the most prudent course is to seek an attorney’s advice. You can save some money, though, by at least doing a preliminary search yourself. Google your mark and see if others are using the same or a similar mark in connection with products or services similar to yours. You can also go to the Trademark Office website at www.uspto.gov and click on “Search Marks” in the trademark section. Conduct a basic search for your mark and see what else is out there like yours. You may be able to rule out a mark so your attorney doesn’t have to spend your money doing so.
Protecting your trademark
Once you’ve settled on a trademark, you need to take steps to protect it. Trademark protection arises from use — not registration — of a mark, so, once you know your mark is available, start using it, even before it’s registered. When you use it, apply the ™ symbol next to it to alert the world you’re using the mark as a trademark. (You can’t use the ® symbol until after the mark is registered in the U.S. Patent and Trademark Office, which I’ll discuss below.)
You should then consider applying for registration of the mark in the U.S. Patent and Trademark Office. You can apply for registration online at www.uspto.gov. Registration of a trademark is more complicated and costly than registering a copyright, so, again, you may want to seek an attorney’s assistance.
Although registration of a trademark is not required to acquire trademark protection, registration provides additional protection. First, federal registration gives you grounds to file a federal trademark-infringement lawsuit, which provides remedies you wouldn’t have otherwise. Second, federal registration gives you a presumption of exclusive ownership of the mark. And the right to use the ® symbol next to your mark puts the world on notice of your exclusive rights. You also might consider registering your mark under your state’s trademark laws. Doing so likely will give you additional rights in that particular state.
Once a mark is registered with the U.S. Patent and Trademark Office (but not before), you’ll want to stick that ® symbol next to your mark every time you use it as a trademark to show the world you’re the owner of a federally registered trademark.
You’ll need to maintain registration of the mark by filing proof of continued use of the mark with the Trademark Office at the appropriate intervals (beginning between the fifth and sixth years of registration). After five years of continuous use of the mark, you can file an affidavit of “incontestability” with the Trademark Office, giving you even stronger protection.
And your work doesn’t stop there. You should be diligent and stay alert to others’ uses of your mark or similar marks that could infringe your rights. Keep in mind that not every third-party use of your mark constitutes infringement. The use, for example, could be in a category of products or services different from yours or could pre-date your use. Notifying the user before you’re sure of your rights could lead to a lawsuit against you. Thus, if you become aware of others using your mark or one like yours, you should consult an attorney as to the best way to proceed.
In the end, trademark is serious — but good — business, and it should be part of yours. Keep in mind that your legal circumstances are unique and the information in this article is meant only as a reference tool and not as legal advice, so some of the legal concepts discussed may be subject to exceptions and qualifications.
Amy J. Everhart founded her Nashville, Tennessee, law firm to counsel clients in the creative industries, entrepreneurs, inventors, business owners, and others in the areas of copyright, trademark, entertainment, the arts and the Internet. She is the author of the copyright, trademark, and entertainment law blog “Lightbulb Moments,” located at www.aeverhart.com/lightbulbmoments.