NUTS AND BOLTS, APPLES AND ORANGES: TRADEMARK BASICS FOR VISUAL ARTISTS

08 November 2006
Craig J.J. Snyder, Esq.
Craig J.J. Snyder, Esq.

Today, it is more important then ever that visual artists of all specialties understand the laws that apply to what they do for a living. This article concentrates on one aspect of such laws on trademarks. A must-read for every creative professional, it describes the greatest misconceptions about legal rights in trademarks, the importance of official registration, and methods of protecting your marks. This is highly recommended reading for designers involved in corporate or brand identity work, as well as for anyone running a business or marketing products and services under a unique name.


The most valuable asset of any business is not its buildings, land, inventory, or even people. Rather, it is reputation, market presence, visibility, permanence: its good will. Trademarks, service marks, and trade names symbolize that good will. This article provides the nuts and bolts of trademark law for non-lawyers, specifically the information you need to protect your trademarks, trade names, and service marks and to help your clients protect theirs.

The language
First, let's make sure everyone understands the terminology. Every Little League baseball player knows that a "trademark" is that part of the bat with the engraved name that you must turn away from the pitcher because the bat will crack if the ball hits it. I am going to leave to others (who actually hit the ball in Little League) the veracity of this theory. But these "trademarks" are, in fact, trademarks in the legal sense, and effective trademarks at that. You only need to look at the bat to know who made it.

A trademark is a word, combination of words, design, logo, or symbol that identifies to consumers the source of goods. That is, tangible goods or things that you can touch.

A service mark is essentially the same thing as a trademark, but it identifies non-tangible services, for example, legal, accounting, and design.

A trade name is the actual name of the provider of the goods and/or services.

A mark is the word we lawyers use, mostly because we usually do not need to distinguish between trademarks and service marks.

(R) is the symbol for a registered trademark or service mark. Under US law, you may only use this symbol if you have a Federal registration for the mark.

TM is a symbol that is frequently used with marks to indicate that the owner believes the word, symbol, or phrase is a trademark. There is really no legal import to this symbol, but it is a useful deterrent.

SM is same as TM, but it is used with service marks. Few mark owners make this distinction because relatively few people know what these terms mean.

There is some crossover between these definitions. For instance, a trade name is often also a service mark. There is very little practical difference in terms of protection and rights between trademarks and service marks. The difference matters a great deal, however, to the lawyer or applicant who prepares and prosecutes a registration application, because it determines the type of application form and what specimen will be acceptable.

Who has the right to a trademark?
The greatest misconception about legal rights in trademarks, service marks and trade names is the belief that you must have a registered trademark to have trademark rights. The second biggest misconception is the belief that establishing a corporation, filing a "dba" (doing business as), or obtaining a domain name establish legal rights in a mark. There are only two ways to obtain legal rights in a mark under US Federal law: (1) Use the mark in commerce, or (2) Obtain a Federal registration, based upon the intent to use the mark.

Using a mark in commerce is probably not what you think. It does not mean using the mark in advertising or on a web site. Use of a mark is actual sales of goods or services identified by the mark in the regular course of business. "Use in commerce" is actual sales of goods or services identified by the mark in interstate or international commerce (sales to US consumers from outside the US). So, if you have been selling goods or services outside your home state, under a mark, you have established what is referred to as "common law rights" in the mark.

What if you are adopting a new mark and have sold nothing under it? That is one of the areas where registration becomes important. It is possible to apply to register a mark before you have made any sales, based upon your intent to use the mark (an intent to use or ITU application). If and when a registration issues, the effective priority date or first use date is the original date that you filed the application. By filing the application, you lock in your priority in the mark as of the filing date.

Apples and oranges trademark infringement
How do you now if someone is infringing on your mark or you are infringing on someone else's? You compare the marks and then determine who has priority. It sounds disarmingly simple, but a misstep can cost you far more time with a lawyer than anyone wishes to spend.

The operative phrase in comparing marks is "likelihood of confusion." This definition is far broader than the word "identical." In comparing the marks, you must consider their appearance, sound, and meaning. You must then consider the respective goods and services. All marks, when compared, fall along a spectrum of similarity. If the appearance, sound, and meaning of the marks are highly similar, there need not be much similarity of goods and services. If the respective owners sell the same goods or services, the appearance, meaning, and sound of the marks need not be as close in order to infringe.

Appearance is what you think it is. What do the marks look like? Do the marks share letters, numbers of syllables, and designs? Sound is also obvious, but no less important. Sound of a mark often renders moot minor differences in marks such as spelling changes, punctuation, or spacing.

Evaluation of the similarity of goods and services can become extremely complex. Issues considered include channels of distribution, sophistication of consumers, complementary uses of the goods or services, and the likelihood of expansion from one product offering to another (e.g. printed magazines to electronic magazines). It is for this reason that trademark infringement cases have such diverse outcomes. They are highly fact- and circumstance-intensive.

Why register a mark?
Federal registration of a mark by the United States Patent and Trademark Office (USPTO) provides a number of benefits to the trademark owner. Here are a few that apply to visual artists:

Registration is a constructive nationwide notice of the trademark owner's claim.

Registration can establish trademark rights as of a date preceding actual sales of goods and services, based upon a bona fide intent to use a mark (the aforementioned ITU application).

Registration provides access to Federal courts for trademark infringement claims and remedies of recovery of profits, damages, costs, and, possibly, up to triple damages and attorneys' fees.

Registration proves the mark's validity, ownership by the registrant, and the owner's exclusive right to use the mark in commerce.

Registration allows use of the Federal registration (R) symbol. The symbol not only conveys that the mark is registered, but that the owner is a sophisticated business that has taken appropriate steps to protect its intellectual property.

Registration can establish incontestability of a mark upon expiration of 5 years of registered use and satisfaction of other requirements.

Federal registration applications provide filing priority in many foreign countries.

Registration can be seen as quantifying the value of good will. A registered mark may be seen as a specific asset, either for valuation or in connection with an acquisition.

The registration process
Until one has had the pleasure of experiencing the registration application process, it seems disarmingly simple. Forms can be completed and even electronically filed on the USPTO website, www.uspto.gov, and the forms themselves seem rather simple. The simplicity can be deceptive, however, and filing the application is only the beginning of the process.

Every application includes an identification of goods or services. In some cases the identification is quite simple, e.g. "wine", "accounting services", etc. In many other cases, however, there is quite a bit of latitude, especially in connection with Internet services, computer, and software products. Remember, the agendas of the applicant and the USPTO Examining Attorney often clash. The Examining Attorney generally wants the identification of goods and/or services to be narrow, specific, and consistent with the USPTO's cook book of acceptable identifications. The applicant, on the other hand, desires the broadest possible protection. For example, suppose an applicant wishes to apply to register widget for its software product. The applicant would wish to identify its services simply as computer software. The USPTO Examining Attorney, however, is likely to accept only an identification such as computer software, namely, downloadable database management software for health care facilities. So, the first goal is to draft the identification as broadly as possible while staying within the limits of reason.

In addition, the application process is very lengthy. It presently averages about 18 months for a standard application, without complications, to achieve registration. There are basically four steps in the process, divided by long waiting periods.

The first step is filing. The applicant submits the application and eventually (often three to four months later) receives a filing receipt indicating the official filing date and the application serial number.

After the application is filed it receives no substantial attention for four to five months, at which time it is assigned to an Examining Attorney. The Examining Attorney determines whether there is a likelihood of confusion between the mark and any registered mark or any mark that is the subject of a previously filed application. He or she also determines whether the mark is unregistrable for other reasons, such as being merely descriptive or generic of the goods or services listed in the application. Finally, the Examining Attorney determines whether the application is in the proper International Class, and whether the identification of goods and services is acceptable.

If the Examining Attorney objects to registration of the mark or the form of the application, the USPTO issues an Office Action to the applicant or the applicant's attorney, stating the issues and referencing relevant laws and cases. The applicant may then respond with argument and evidence supporting registration of the mark.

If the Examining Attorney approves the application, it is published in the Official Gazette. This monthly publication lists all trademarks that have been approved during the applicable time period. During the thirty-day period following publication, third parties may commence an Opposition proceeding to prevent registration of the mark. Such a proceeding is a significant undertaking similar to a lawsuit. As such, they are relatively unusual.

Upon survival of the opposition period, the application goes to final processing. If it is an intent to use application, a Notice of Allowance is issued. If it is a standard use application, the Certificate of Registration is issued. If a Notice of Allowance is issued, the applicant must file a Statement of Use, indicating that the applicant has started using the mark. Once the Statement of Use is filed and accepted, the Certificate of Registration is issued.

So, after at least 18 months of waiting, bickering with the Examining Attorney, and sweating out the opposition period, you finally receive the Certificate of Registration. You now have a certificate, suitable for framing, and the rights inuring from registration, including the right to spend money adding (R) on every place the mark appears. What now?

Hints on proper use of a trademark
Trademarks should be used as adjectives, not nouns. As trademarks become very well known, they can come to symbolize the product itself, rather than the source of the product. For years, the word "Kleenex" has meant "tissues". Now, the advertisements always say "Kleenex brand tissues." The reason for the change is that "Kleenex" nearly became a generic term meaning "tissues" due to use as a noun. A "Jeep" is no longer a type of a vehicle; it is "a trademark of Chrysler-Daimler." Once a trademark, "Escalator" is now a generic term. "Xerox" has nearly suffered a similar fate.

Use the trademark or service mark symbols. The TM or SM advise that the word, phrase, or symbol are yours. The (R) tells the world that it is a registered mark. Alternatively, use an asterisk and/or a notice stating that the word, phrase, or symbol is your mark.

Police your mark. If you learn of an infringement, do not ignore it. Failure to act over an extended period of time can result in an abandonment of your mark. Nonuse of the mark over an extended period of time can also result in abandonment. Nonuse for a period of two years is presumed to be abandonment.

Maintain your registration. If your mark is registered, you must file documents with the USPTO indicating that you are still using your mark. The registration term is 10 years. Registrations can be renewed indefinitely, so long as the mark continues to be used.

Protect your marks
And again: Protect your marks. They symbolize your business and its reputation, good will, its very persona. Help your clients protect their marks. They will appreciate your knowledge and your concern.

Afterword
Although the advice expressed in the above article is given from a US attorney's perspective, the principles remain the same for most countries. Please check your local trademark laws, or, better yet, consult an attorney with the appropriate credentials. 



About this article
The above article is reprinted from Visual Arts Trends, with permission. 2000, Visual Arts Trends.

About the Author
Craig Snyder is a NY, USA-based attorney specializing in trademark, copyright, and Internet law. He is experienced in trademark and copyright registration and litigation, domain name disputes, and licensing. He is also the founder of Trademarks Online, an Internet business offering trademark search and registration services to start up and small businesses. Mr. Snyder s clients include international and domestic companies in various industries, with a significant concentration in software development, website design, and e-commerce. He has published a number of articles in the field of trademark law and has contributed to a leading treatise on the subject of New York Limited Liability Companies. Contact:

About Visual Art Trends
With offices in New York and London, Visual Arts Trends is an international quarterly "state of the industry" report for the creative professional. Focusing on graphic design, advertising art direction, photography and illustration, each report offers a brief, business-oriented, definitive and timely overview of industry developments that affect aesthetics, pricing, salaries, working conditions and client relations. Visual Arts Trends combines unique proprietary research with material gathered by monitoring hundreds of publications, companies, membership organizations, online sources, and other relevant sources of information. The reports review and analyzes professional trends by business category and by specialization. In addition, each report profiles client industries interviews with senior executives of leading companies and organizations. An annual subscription retails for US$29.99 and includes four reports available for download as PDF files. Visual Arts Trends is a trademark of and is published by Colonial Communications Corp.

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