Trademarks, Service Marks, and Copyrights: How the Laws Have Changed as of October 2010
When clients hire us to create a logo for their brand, they often ask us if they need to register the logo as a trademark or service mark. While not required, doing so provides wide-ranging legal protection for use of the mark in commerce.
Whether a trademark attorney should handle the registration is another common concern. Our advice is that you can attempt to register yourself for a maximum filing fee of approximately $375, but involving a lawyer who conducts formal searches and presents acceptable proof of use in the registration process may be a wise decision when considering the liability, inconvenience, expense and negative result of conflicts of rights or defective presentations.
What is a brand?
According to the United States Patent and Trademark Office (USPTO), “a trademark is a word, phrase, symbol, or design, or a combination of words, phrases, symbols, or designs, that identifies and distinguishes the origin of goods of a part of those of others”. That means logos, taglines and taglines may be eligible for trademark registration if they meet all the qualification parameters and are approved by the registrar.
What is a service mark?
The USPTO defines a service mark as “the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.” The terms “trademark” and “brand” are used interchangeably to refer to both trademarks and service marks.
What is a copyright?
The United States Library of Congress Copyright Office, which is the registrar of copyright, describes copyright as “a form of protection provided to authors of ‘original works of authorship,’ including literary, dramatic, musical, artistic and other intellectual works”. works, both published and unpublished.” By protecting the form of expression rather than the subject of the writing, a copyright would only prevent others from copying the description. It would not prevent others from writing their own description.
When to use the superscript symbols: TM, SM, and ®
Another question we are often asked to address is when it is appropriate to use the superscript trademark, service mark, or registered trademark symbols: TM, SM, and ®. Using the first two symbols is a way to formally claim the ultimate intent to register the trademark or service mark, but such registration is never required. In addition, if the use of the trademark or service mark can be adequately demonstrated with dates of use clearly evident, the inclusion of the superscript symbols TM or SM in conjunction with such use is not required as proof of ownership. The ® symbol can only be used after the formal registration of the mark has been completed and approved by the United States Patent and Trademark Office and doing so without approval would not comply with federal law.
When to use the Copyright Notice
To protect your “original work of authorship,” the Library of Congress Copyright Office recommends that a copyright notice be placed on copies of the work “to inform the world of copyright ownership that usually consists of the symbol or word ‘copyright,’ the name of the copyright owner, and the year of first publication, eg, © 2008 John Doe, although the use of a notice was previously required copyright as a condition for copyright protection, it is now optional.”
What copyright protects
It is important to note that the United States Copyright Office documentation states that “a copyright does not protect ideas, concepts, systems, or methods of doing something. You can express your ideas in writing or drawings and claim rights copyright in your description, but keep in mind that copyright will not protect the idea itself as it is revealed in your written or artistic work.”
According to this US government office, “your work is protected by copyright from the moment it is created.” Such “work” now includes websites, but not domain names, which are registered and protected as such through The Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit organization responsible for the management and administration of the domain name system through accredited registrars.
Why register a copyright
Copyright registration is strictly voluntary, but will be required should you wish to file an infringement claim. It helps if your registration certificate is a matter of public record, potentially making your work eligible for legal damages and attorneys’ fees in successful litigation. Proving copyright infringement requires a skillful understanding, interpretation, and defense of frequently changing copyright laws that contain many gray areas of enforcement and often prevent legal prosecution due to excessive spending.
How to register a copyright:
If you choose to apply online, your copyright registration costs $35 per work. If you file conventionally, the fee is $50 per job. You are not required to reveal your real name; pseudonyms are acceptable forms of identification. Also, it is advisable to keep in mind that your registration will become a matter of public record, so you should be careful about disclosing your private information. With more than 600,000 filings received by the US Copyright Office each year, the registration process can take up to six months if filed online and up to two years or more if filed on paper. Fees are non-refundable. You must also submit at least one non-returnable electronic or hard copy of the work(s) you wish to register subject to a number of other requirements depending on the type of work, whether it is published, and other variables. The duration of this process should not affect your plans to publish the copyright notice or the work itself. Only your need to file copyright infringement may be affected by the actual record date. For more information on this, visit http://www.copyright.gov.
How to register a trademark:
Before applying for trademark registration, a formal search for existing or pending trademarks is conducted to avoid conflicts of rights. The registrant or her attorney can do this free of charge through the federal online database TESS (Trademark Electronic Search System), as well as at selected public search facilities throughout the country. In the event that the trademark is defined by a single design, it should be searched using a design code available in the Government’s Design Search Code Manual. If a potential conflict is detected, it can be further verified by searching the federal TARR (Trademark Application and Registration Retrieval) database. To perform this type of search, you will need the serial number or registration number of the conflicting trademark.
If no conflict is disclosed, the next step is to prepare a “drawing” of the mark you intend to register. There are two possible formats for trademark registration: (1) standard character format; or (2) stylized/design format. The USPTO describes the former as a mark that includes “word(s), letter(s), number(s), or any combination thereof, without claiming any particular font style, size, or color, and without any element of design. Registration of a mark in the standard character format will grant broad rights, namely, use in any form of presentation.” The second format would seek to protect a trademark that has a particular stylized appearance, such as the logos we design for our clients. In the past, such a drawing had to be presented in black and white with a range of patterns to represent the differentiation of tones used. Today, the drawing can be submitted in color with accompanying precise descriptions detailing where the colors are used. Such drawings must be consistent with the evidence of actual use that is also required for submission in the application process. These tests are called “specimens.”
In the registration of a product trademark, unlike a service trademark (or service mark), an acceptable example or sample must show the mark used on the actual goods or on the packaging of the goods. This includes a tag or label for the products; a container for the goods; a display associated with the goods; or a photograph of the products showing the use of the mark on the products. Actual products are not acceptable examples in the registration process.
When seeking to register a service mark, the USPTO states that approved usage samples may include “a sign; a brochure about the services; an advertisement for the services; a business card or paper displaying the mark in connection with the services; or a photograph showing the mark as used in the provision or advertising of the services”. However, it is specifically stated that if the mark does not include terms that describe what type of service is offered, it would not be a display of acceptable use.
It is essential to correctly submit the trademark registration form and its required application components to avoid problems and delays in the process. If filing electronically, expect an immediate response with an application serial number. However, the entire process can take several years depending on legal issues that arise during the course of reviewing the materials. Findings by federal attorney citing previously filed or pending conflicts of rights, or lack of trademark qualification are common reasons for delay. These may include the use of a surname or a determination that the mark is purely ornamental or even misleading in its presentation. These criticisms can be appealed, but they are often unsuccessful and tend to add further delays and additional expenses to the process if you have retained an attorney to represent you.
If all hurdles are cleared and the mark is approved, the registration remains valid for a period of approximately five years, at which time a subsequent Affidavit of Use must be filed, with a Renewal filing prior to expiration in ten years. years. Should any of these deadlines be missed, there is a six-month grace period for filing with payment of additional fees.
In any case, it seems that the main reason to apply for formal registration of a trademark, service mark, or copyright is to provide tangible grounds to sue if illegal rights infringement becomes an issue. For some small businesses, the cost of prevailing in such a lawsuit would likely be so prohibitive that the decision to file a case would ultimately be discouraged, making the effort and expense to file all trademark or copyright registrations author were an exercise in futility. Therefore, the value of such records depends on the circumstances affecting each individual case.
For more information from the United States Patent and Trademark Office, visit http://www.uspto.gov/