Trademarks, Service Marks, and Copyrights – How the Laws Have Changed Since October 2010
When clients hire us to create a logo for their brand, we are often asked whether they need to register the logo as a trademark or a service mark. While not a requirement, doing so provides wide-ranging legal protection for trademark use.
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 an attorney who performs formal searches and presents acceptable evidence of use in the registration process can be a wise decision when considering the responsibility, inconvenience, expense and negative result of conflicts of rights or faulty presentations.
What is a trademark?
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 products of one of the parts. of those of the others “. That means logos, slogans and taglines may be eligible for trademark registration if they meet all 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 equivalently to refer to both trademarks and service marks.
What is a copyright?
The Copyright Office of the United States Library of Congress, 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works of authorship’, including literary, dramatic, musical, artistic and other intellectual works, both published and unpublished “.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 a description of their own.
When to use superscript symbols: TM, SM, and ®
Another question that we are often asked to answer has to do with when it is appropriate to use the superscript trademark, service mark, or trademark symbols: TM, SM, and ®. The use of the first two symbols is a way of formally claiming the eventual intention to register the trademark or service mark, but such registration is never a requirement. In addition, if the use of the trademark or service mark can be adequately displayed with clearly evident dates of use, the inclusion of the superscript TM or SM symbols in conjunction with such use is not required as proof of ownership. The ® symbol can only be used after formal trademark registration has been completed and approved by the United States Patent and Trademark Office and to do so without approval would be a violation of 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. which generally consists of the symbol or word ‘copyright’, ‘the name of the copyright owner and the year of first publication, for example © 2008 John Doe. was once required as a condition for copyright protection, now it is optional. “
What copyrights protect
It is important to note that the United States Copyright Office documentation states that “copyright does not protect ideas, concepts, systems, or methods of doing something. You can express your ideas in writing or drawings and claim the copyright in your description, but keep in mind that copyright will not protect the idea itself as revealed in your written or artistic work. “
According to this office of the United States government, “your work is protected by copyright at the time 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 in case you want to file a claim for infringement. It is helpful that your certificate of registration is a matter of public record, possibly making your work eligible for legal damages and attorney’s fees in successful litigation. Proving copyright infringement requires a skillful understanding, interpretation, and defense of copyright laws that change frequently, contain many gray areas of application, and generally deter prosecution due to overspending. .
How to register a copyright:
If you choose to apply online, registering your copyright costs $ 35 per job. If you are applying conventionally, the fee is $ 50 per job. You do not need to reveal your real name; pseudonyms are acceptable forms of identification. Also, it is advisable to note that your registration will become a matter of public record, so you should be careful about the disclosure of your private information. With more than 600,000 submissions received by the United States Copyright Office per year, the registration process can take up to six months if submitted online, and up to two years or more if submitted on paper. Rates are non-refundable. You must also submit at least one non-returnable paper or electronic copy of the work (s) you wish to register subject to a variety of other requirements depending on the type of work, whether it is published, and other variables. The length of this process should not affect your plans to publish the copyright notice or the work itself. Only your need to file copyright infringement can be affected by the actual registration 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 carried out to avoid conflicts of rights. The registrant or their attorney can do this free of charge through the federal online TESS (Trademark Electronic Search System) database, as well as at select public search facilities across the country. In the event that the trademark is defined by a single design, it will be necessary to search for it using a design code available in the Government Design Search Codes Manual. If a potential conflict is detected, it can be further verified by searching the federal TARR (Trademark Applications and Record Retrieval) database. To perform this type of search, you will need the serial number or registration number of the conflicting mark.
If no conflict is revealed, the next step is to prepare a “drawing” of the trademark you wish 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 trademark 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. Of a trademark in the standard character format will provide broad rights, namely use in any form of presentation. ” The second format would seek to protect a brand 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 variety of patterns to represent the differentiation of the tones used. Today the drawing can be submitted in color with accurate descriptions detailing where the colors are used. Such drawings must be consistent with actual usage evidence that is also required for submission in the application process. These tests are called “samples.”
In registering a product mark, unlike a service mark (or service mark), an acceptable example or specimen must show the mark used on the actual products or on the product packaging. This includes a label or tag for the merchandise; a container for the goods; a screen associated with the products; or a photograph of the products showing the use of the brand 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 use samples may include “a sign; a brochure about the services; an advertisement for the services; a business card or stationery displaying the mark in relation to with the services, or a photograph that shows the brand used in the provision or advertising of the services “. However, it is specifically stated that if the brand does not include terms that describe what type of service is offered, it would not be a sample of acceptable use.
Proper submission of the trademark registration form and the required components of the application is essential to avoid the consequent problems and delays in the process. If submitted electronically, expect an immediate response with an application serial number. However, the whole process can take several years, depending on the legal problems that arise during the course of the examination of the materials. Findings by a federal attorney citing a previously filed or pending conflict of rights, or failure to qualify as a trademark, are common reasons for delay. These may include the use of a surname or the 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 more postponements and additional expenses to the process if you have hired an attorney to represent you.
If all obstacles are overcome and the trademark is approved, the registration remains valid for a period of approximately five years, at which point an Affidavit of Subsequent Use must be submitted, with a Renewal submission prior to expiration at ten years. If any of these deadlines are missed, there is a six-month grace period for filing with payment of additional fees.
In any event, it appears that the main reason for pursuing formal trademark, service mark, or copyright registration is to provide tangible grounds for a lawsuit if illegal rights infringement becomes a problem. 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, resulting in the effort and expense of filing all trademark registrations or copyright was a futile exercise. Therefore, the value of such records depends on the circumstances that affect each individual case.
For more information from the United States Patent and Trademark Office, visit http://www.uspto.gov/