NUTS AND BOLTS, APPLES AND ORANGES: TRADEMARK BASICS FOR VISUAL ARTISTS
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
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professional. Focusing on graphic design, advertising art direction,
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