Trademarks, Service Marks and Copyright – How the Law Has Changed Since October 2010

When clients hire us to create a logo for their brand, we are often asked if they need to register the logo as a trademark or service mark. While not a requirement, doing so provides broad legal protection for the trademark’s use in commerce.

Whether trademark attorneys should handle registrations is another common concern. Our suggestion is that you try to register yourself, the maximum filing fee is about $375, but when considering it, it may prove to be a wise decision to involve a lawyer in conducting a formal search and submit proof of acceptable use during the registration process LIABILITY, INCONVENIENCE, COSTS AND ADVERSE CONSEQUENCES FOR CONFLICT OF RIGHTS OR DEFECTIVE APPLICATIONS.

What is a trademark?

According to the United States Patent and Trademark Office (USPTO), “A trademark is a word, phrase, symbol, or design, or combination of words, phrases, symbols, or designs, used to identify and distinguish the origin of goods of one party from those of another.” This Meaning, logos, slogans and taglines may be eligible for trademark registration if they meet all the qualifying parameters and are approved by the registrar.

What is a service mark?

The USPTO defines a service mark as “same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.” The terms “trademark” and “mark” are used interchangeably to refer to trademarks and service marks.

What is copyright?

The Copyright Office of the Library of Congress, the copyright registry, describes copyright as “a form of protection for authors of ‘original works,’ including literary, dramatic, musical, artistic, and certain other intellectual works, including published and Unpublished work.” Protecting the form of expression rather than the subject matter of writing, copyright only prevents others from copying the description. It doesn’t prevent others from writing their own descriptions.

When to Use Superscript Symbols: TM, SM, and ®

Another question we’re often asked involves when it’s appropriate to use the superscript, service mark, or registered trademark symbols: TM, SM, and ®. Use of the first two symbols is a way of formally declaring ultimate intent to register a trademark or service mark, but such registration is by no means required. Furthermore, inclusion of the superscript symbols TM or SM in connection with such use is not a requirement for proof of ownership, provided the use of the trademark or service mark is adequately displayed and the date of use is clearly visible. The symbol ® may only be used after formal trademark registration is complete and approved by the USPTO, and unauthorized use is a violation of federal law.

When to Use a Copyright Notice

To protect your “original work,” the Library of Congress Copyright Office recommends placing a copyright notice on copies of the work “to inform the world of copyright ownership, usually consisting of the symbol or the word ‘copyright’, ‘the copyright owner’s name and first publication Year, for example, © 2008 John Doe. While the use of a copyright notice used to be a condition of copyright protection, it is now optional.”

what copyright protects

It’s important to note that the U.S. Copyright Office document states that “Copyright does not protect an idea, concept, system, or method of doing something. You can express your ideas in writing or drawing and claim copyright in your description, but note that Copyright does not protect the idea itself revealed in your written or artistic work.”

According to the U.S. government office, “your work is copyrighted the moment it is created.” Such “work” now includes websites, but not domain names, through the Internet Corporation for Assigned Names and Numbers (ICANN) Registration and Protection, ICANN is a not-for-profit organization responsible for the management and administration of the domain name system through accredited registrars.

Why register copyright

Copyright registration is entirely voluntary, but is required if you wish to sue for infringement. It is helpful to have your certificate of registration as a public record, which may qualify your work for statutory damages and attorneys’ fees in a successful lawsuit. Proving copyright infringement requires proficiency in understanding, interpreting and defending frequently changing copyright laws that contain many applied gray areas and often hinder legal pursuits through excessive spending.

How to register copyright:

If you choose to submit online, the copyright registration fee is $35 per work. If you submit in the regular way, the fee is $50 per entry. You do not need to reveal your real name; a pseudonym is an acceptable form of identification. Also, keep in mind that your registration will become a public record, so you should be careful about disclosing your private information. The US Copyright Office receives more than 600,000 applications each year, and the registration process can take up to six months if filed online, or 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 paper copy of the work you wish to register, and meet a range of other requirements depending on the type of work, whether it has been published, and other variables. The length of this process should not affect your plans to publish the copyright notice or the work itself. The actual date of registration may affect only the documents you need to file for copyright infringement.For more information on this, please visit http://www.copyright.gov.

How to register a trademark:

Conduct a formal search of existing or pending trademarks before applying for trademark registration to avoid rights conflicts. This can be done free of charge by the registrant or his attorney through the online federal TESS (Trademark Electronic Search System) database as well as selected public search facilities nationwide. If a trademark is defined by a distinctive design, it will need to be searched for using the design codes provided in the Government Design Search Codes Handbook. If a possible conflict is detected, it can be further checked by searching the federal TARR (Trademark Application and Registration Search) database. In order to conduct this type of search, you will need the serial or registration numbers of the conflicting trademarks.

If no conflicts are found, 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 first as a mark that contains “words, letters, numbers, or any combination thereof, does not require any particular font style, size, or color, and does not contain any design elements.” Marks using standard character format Broad rights will be provided, namely the right to use in any manner presented. The second format would seek to protect a mark with a specific stylized look, such as the logos we design for clients. In the past, such drawings had to be filed in black and white, with a series of patterns to depict the differences in the tones used. Today, it is possible to Submit drawings in color with detailed instructions detailing where the color was used. Such drawings must be consistent with proof of actual use submitted during the application process. These evidences are called “specimens”.

In product trademark registration, unlike a service mark (or service mark), an acceptable example or sample must show the mark used on the actual product or product packaging. This includes tags or labels for the product; containers for the product; displays in connection with the product; or photographs of the product showing the use of the trademark on the product. Actual products are not acceptable examples during the registration process.

When seeking to register a service mark, the USPTO states that approved samples of use may include “logos; brochures about services; advertisements for services; business cards or stationery displaying marks associated with services; or displaying A photograph of the mark.” However, it specifically states that if the mark does not contain terms describing what kind of service is provided, it is not an acceptable sample of use.

The trademark registration form and its required application components must be properly filed to avoid ensuing problems and process delays. If filed electronically, an immediate response should include the serial number of the application. However, the entire process could take up to several years, depending on legal issues that arise during material review. Federal prosecutors’ findings cite conflicts of prior registrations or pending rights, or ineligibility for trademarks as common reasons for the delay. These may include using a surname or determining that the mark is purely decorative or even deceptive in its display. Such criticisms can be appealed, but are usually unsuccessful, and if you have hired an attorney to represent you, it will often further delay the process and add additional costs.

If all hurdles are overcome and the trademark is approved, the registration is valid for approximately five years, at which point a subsequent affidavit of use must be filed, and an application for renewal must be filed before the ten-year expiration. If any of these deadlines are missed, there is a six-month grace period stipend, at an additional cost.

Regardless, the main reason for seeking formal registration of a trademark, service mark or copyright appears to be to provide a tangible cause of action when illegal infringement is an issue. For some small businesses, the cost of winning such lawsuits can be so prohibitive that they ultimately forego the decision to file a lawsuit, rendering the effort and expense of filing all trademark or copyright registrations for naught. The value of such registrations therefore depends on the circumstances affecting each individual case.

For more information on the USPTO, visit http://www.uspto.gov/

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