trademark-C-plaque.pngThe most important legal aspect of creating identity and logo packages is the trademark search. It is critical to determine early in the process whether or not a name is currently protected by trademark registration. There are several companies that specialize in trademark searches; one is legalzoom.com . They perform a computer search and help you with the Federal Filing Fee.

A trademark identifies the SOURCE of goods. It does not identify the goods themselves. The term "brand name" is synonymous with "trademark".

All businesses that have trademarks should always be using either the ® or ™ symbol in connection with the mark. Similar to copyright, trademark rights are generated upon the beginning of use of the trademark in commerce.

  • There are three different forms of trademark protection:
  • U.S. Patent and Trademark for protection in all 50 states.
  • State registration- perception only within the state.
  • Common law practice- protection only so far as the trademark owner's trade area.

Only those trademarks that have been registered with the US Patent and Trademark office are entitled to use the ®. All other trademarks must use the ™. Misuse of the the ® constitutes fraud.

If you use the ® prior to going thorough the process, and the Patent office finds out, they can reject any further applications.

Federal registration takes a year or more to obtain. I have been told that to have an attorney help you register with the federal office can cost $1200-$1500.

The law divides goods and services into a number of defined classes, and marks are registered only in connection with the specific goods or services involved. There are about 40 classifications of products for trademarks. To be conflict, the product you are disputing must be in the same classification as yours.

Filing for registration application does not guarantee registration. It can be refused on the basis that it is too similar to another mark, or that the mark is merely descriptive, rather than the more distinctive "suggestive" or "fanciful" recognizable marks that are more desirable. Or they may claim that it is simply too confusing.

Use of the ® is not required for protection, but monetary damages are difficult to recover without it. The key elements in any trademark dispute are time and knowledge. Who used it first? Did the person who used it later have any way of knowing was already in use? Here is where registration becomes key. A list of registered trademarks are available to the public. Once you register a mark, no one can claim they had no way of knowing it was yours.

Newer laws in some countries are beginning to allow 3-D marks, as well as smells, sounds and colors to be registered as trademarks. Most trademark searches now include domain name searches.

Corporate names, by themselves, are not eligible for federal trademark registration. Since the gamut of names could be indefinite, the federal registry does not register names or generic phrases. Rather, only corporate names used as trademarks are eligible for registration. Ex: Coca-Cola.

The chances of obtaining a trademark registration increase if you use the name of the company followed by the generic name of the product or service being offered. For example Apple Computers, Kellogg's Corn Flakes.

If your search proves that another is using the same or similar name, then you will be unable to protect your name under trademark, laws, but may still be able to obtain protection under COUNTY name protection or state corporate laws. This should be handled through an attorney.

If the owner is not offering goods, but offering services, then the proper symbol is SM.

When a trademark appears in written prose, the use of the ® or ™ should appear in all titles or headlines, and should appear the first time the mark is used in the written material. All subsequent uses do not need the symbol.

To keep your mark effective, it must be properly identified and used. It must always be used in combination with the common name of the good or services and never as a substitute for that common name, or it risks becoming "generic" and can lose its status as your mark and enter public domain.

COPYRIGHT

Copyright protects any work of authorship that is fixed in a tangible medium of expression.

That means, for example, that a painting, a computer program, a sculpture, a song or a literary piece is protected by copyright.

Copyright protection is immediate upon creation as the creator lifts brush from canvas, or fingers from keyboard. Copyright protection is automatic.

Does this mean that the work does not need to ever be registered? No, it should be registered and, in the event of an infringement, will need to be registered prior to filing a complaint.

The main advantage to registering is that, in an infringement situation, statutory damages are available to the copyright owner if the work was registered cropper to infringement or within three months of first publication. This is an advantage to those whose work has been infringed but who may not suffer any actual (or provable) "marketplace" damages.

Another advantage to registration is that the copyright owner may also seek an award of attorney's fees if successful in litigation.

A registration with the US Copyright Office consists of paying the fee and completing a form. There are different forms for different types of works, all available on-line. Once the form and fee are submitted, along with a deposit of the work, the Copyright Office will send a certificate of registration four to six months after the application was received.

Copyright protection lasts for the duration of an author's life plus 50 years.

A common misunderstanding with copyrights is that if the copyright notice with the © is not used, then the work is in the public domain. This is not true. There is automatic protection under the law.

Nonetheless, it is recommended that the symbol always be used as it puts third parties on notice that the work is protected.

If an employee creates a work, then the employer, through the work made for hire doctrine, is considered the author.

The owner of a copyright possesses, among other rights, the exclusive right to do or authorize the following:

  • Reproduce the work
  • Prepare derivative works
  • Distribute copies to the public
  • Display the work in public
  • Perform the work in public

Remember too, that each country has their own individual copyright registration system, and they are usually run on a first come, first served basis, without the requirement that the owner of the trademark have any connection with the products or service listed in the registration. To prevent theft, once your mark starts appearing in international publications, it is advisable to register your mark in all countries of interest as early as possible. Use is usually not a requirement to obtain registration overseas.

FAIR USE

Someone who uses copyrighted work for the purposes of education, research, criticism, news reporting, parody or other "fair uses" is not guilty of copyright infringement.

PUBLIC DOMAIN

If you don't want to identify copyright owners and negotiate rights when creating something of your own, public domain properties may be the way to go.

Materials produced entirely by the federal government are in the public domain. Sometimes a work will contain materials that have been licensed from other sources and these are not be used without permission.

Any copyright published more than 75 years ago is in the public domain. Copyright expire on the first day of the year, so that means that during 2003, anything published before Jan. 1, 1928 can be used without permission.

Work published before Jan 1, 1964 is in the public domain if its copyright has not been renewed. Copyrights after 1964 are automatically protected for 75 years. Prior to that it was only 28 years.

If it's not possible to identify individuals as copyright holders, the work enters the public domain 75 years after the first year of publication, or 100 years after its creation, whichever comes first.



The information above was compiled from a number of sources, some of which are:

United States Copyright Office

United State Patent and Trademark Office

Texas Trademark FAQ

Nolo Press

A comprehensive list of copyright resources can be found at:

Digital media Licensing Organization