Understanding Trademarks Online

A design firm creates a catchy Christmas champagne campaign for a major client. The client loves it. The tag line will be printed on everything from coasters to billboards. As the creative team prepares to send all the work to the printer, they discover the cute tag line happens to be the federally registered trademark of an organic juice company located in another state. Panic ensues.

Luckily, the firm’s work was salvaged when the owner of the trademark agreed to license the mark to the client for the period of the campaign. But the firm’s staff was so disturbed by their brush with trademark infringement that they updated their contracts and instituted a new policy of checking trademarks before making any proposals to clients. In the Internet era, where “branding” has taken on a whole new dimension, trademarks have become serious business. Designers create logos, marketing materials and comprehensive corporate identities for their clients and themselves. And both endeavors have the potential to affect the firm’s bottom line. Here are some basic legal guidelines to keep your firm—and your clients—out of trademark trouble.

What are Trademarks?
People often confuse trademarks with copyrights and patents. But each fulfills a completely different legal function and is protected under different federal statutes. A trademark identifies goods or services. A copyright protects creative work. A patent protects an original invention. The legal definition of a trademark is a mark representing a product or a service which assists consumers by meeting the following criteria: It’s known to them, it comes from a consistent source, it’s of a consistent quality, and it won’t cause confusion or be mistaken with another product or service. The right to exclusively use a trademark begins with the use of the mark. This gives you possession of the trademark and the ability to prevent others from using it. Names and logos are the most common, but distinctive features can also serve as trademarks. Some examples include Coca-Cola’s bottle, McDonald’s arches and Nike’s swoosh. The same goes for distinctive colors (yellow cabs, pink insulation), numbers, letters, 3D objects, slogans and fragrances.

Client Trademarks
There are several key trademark issues that arise when designing for a client. Will the work function as a trademark? Can it be registered and protected as a trademark? Will the work infringe upon someone else’s trademark? In corporate-identity work, where you know the design will have to function as a trademark, the issue is clear. You must make sure that what you propose to a client is non-infringing and will be protected legally. From a legal standpoint, a trademark’s strength depends on the nature of the mark.

General descriptive words like “furniture” or “candy” can’t be protected. Suggestive marks like “Dustbuster” or “Port-o-let,” which provide some idea about the nature of the product, can be protected, but they’re often weak. Arbitrary or fanciful marks like “Apple Computer” or “Oh Henry!” candy bars that use ordinary words in unique ways are strong. Coined words that have no meaning apart from their products, like Exxon or Kodak are, for legal purposes, the strongest marks. Always keep these categories in mind when creating trademarks for your client.

Once the client approves a name or logo, it’s best to have a trademark search done. You can arrange to have a search conducted, or you can leave the client responsible for “clearing” the mark. If the client takes on the task, make it clear in your written agreement that your firm isn’t liable for any potential infringement.

Trademark Searches
Before you pay for a trademark search, there are “knockout” searches you can do for free. Search engines like Google are a good place to start. If it becomes clear that someone is already using the mark, name, slogan or tag line you have in mind for a similar product or service, you can go in another direction. You can also visit the U.S. Patent and Trademark Office’s site www.uspto.gov to determine whether a mark has already been registered. (More search information available here.) But Internet and PTO searches aren’t sufficient for trademark purposes. Before a final decision is made on the use of a mark, a full-fledged trademark search should be performed by a professional search firm such as Thomson & Thomson or by a trademark lawyer. They’ll mine an array of databases to determine whether a company is currently using your selected mark—or something that’s too similar.

Design-Firm Trademarks
Branding one’s design firm with a trademark or registering the name of a firm as a trademark has become increasingly popular. If you plan to use your firm name or slogan as part of your marketing strategy—or brand a particular type of service—here are some points to remember. Before you do anything, conduct a trademark search. You may be the only XYZ firm in town, but if there are XYZ firms in other cities or states, you may not be able to register your name as a federal trademark. You’ll want to know about potential problems before spending money on a marketing campaign with your name as the centerpiece. If the search comes up clear, consider registering your trademark with your state. It’s a faster and less expensive option that protects you only in your state and not on the Internet.

Think about registering it federally if you’re going to expand your operations. Although you don’t have to register your trademark to have rights, the benefits are significant. Registration establishes your ownership of the mark and your right to its exclusive use. It also entitles you to use the (R) symbol—eligible only to federally registered marks. It also gives you rights that protect your online domain name and your mark on the Internet.

Trademark registration can be a long and expensive process. (It can take nine to 18 months, and the average cost ranges from $1,500–$2,500.) It’s only worth doing if you’re sure your firm will be around long enough to derive significant benefits. Consult a trademark attorney about filing the registration. The process is complex, and most people have problems doing it without legal assistance. That said, trademark protection can often turn out to be valuable both to clients and design firms. The owner of the organic juice company was sure glad he protected his mark.

Jean S. Perwin is a Miami-based attorney specializing in intellectual-property law. jperwin2@aol.com