What is a trademark?
In the US, the United States Patent and Trademark Office (USPTO) is the federal agency tasked with overseeing and approving trademarks. As defined by the USPTO a trademark is “generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others” It is intended to protect both a business and its customers from confusion and fraud in the marketplace. You may also register a service mark if the business does not offer goods or products. Again per the USPTO “A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.” A trademark or a service mark identifies a unique business entity who engages in commerce.
A trademark must be distinctive, distinctive both in of itself and distinctive in its business category. For example, “Monkey Orchards” is far more “distinct” than “Red Apple Orchards” for the purposes of trademark. Generic words and images will be difficult if not impossible to trademark. The more distinct the mark, the less chance of infringing upon an existing mark and the easier it is to protect. Made up words combined with unique symbols are generally easier to register. Therefore keeping distinctiveness (not necessarily the same thing as originality) in mind during the design process can be useful if your goal is to register a trademark.
A graphic designer owns the copyright to a symbol when they create it. The trademark rights are generated when that work is used in commerce to represent a business. A designer may hold the copyright to hundreds of logos, but have no trademarks rights, because she does not actively use the marks in the marketplace.
Three methods to acquire trademark rights:
- Start using the trademark for business. This grants limited rights and may be sufficient for local businesses.
- Register the mark with your states Secretary of State which grants the trademark rights within that state.
- Finally you have the option of registering with the USPTO and acquiring the rights to the mark in all 50 states.
To claim trademark rights you must actively use the trademark for commerce. Registering the mark with the USPTO or your local Secretary of State is not enough. A trademark must renewed every 10 years and can be done so indefinitely as long as the mark is active. You can lose the rights to a mark after 3 consecutive years of non use. When this term has lapsed the mark is considered abandoned and the rights can be acquired by others.
The symbol ™ may and should be used if you want to claim trademark rights. In circumstances where the mark appears multiple instances it is not necessary ™ appears each time. The ® symbol is used for federally registered trademarks only.
Why trademarks matter to designers
Trademarks are important to graphic designers for two main reasons. The first being should you consider trademarking your own logo and company name and protecting your brand. Secondly and more importantly, it matters because it may be important to your clients. You don’t want the snafu of an approved and paid for design returning because its trademark application was rejected. The possibility of future trademark registration should be discussed early with clients and language indemnifying you from liability should be included in your contract. Do right by your clients, but also protect yourself and your business.
A clearance search of existing trademarks should be done before the work is finalized. How, when and by whom that search is executed should be included in the design contract and accounted for in your workflow. Most often this will the clients’ responsibility. A search can be done for free at the USPTO website or a company may be hired that will perform the search for a fee. A trademark attorney may also be retained at this point to aid with the search and file the registration application. Again the hows and whos should be spelled out in your contract.
Your design process should also account for trademark registration. Developing multiple concepts on parallel tracks may be advisable in the event that terminating one direction becomes necessary.
Being too damn good
A fascinating aspect of trademark law is that you can be too good at branding. Your product can become so ubiquitous that your trademark becomes a generic term which you no longer can claim rights to. The terrifying word describing this phenomenon is genericide. Amongst a slew of others, current generic terms like aspirin and escalator were once registered trademarks whose companies lost their rights. Adobe currently faces this issue. They are fighting to prevent “Photoshopped” from becoming a generic term for any kind of photo manipulation.
Trademark Infringement
You may be infringing on another’s trademark rights when you use an identical or confusingly similar trademark when selling similar goods or services. Trademark infringement can occur without intent and with out copying or plagiarizing. This reiterates the importance of executing a clearance search when there is any doubt, especially for national, international and web-based clients.
Trademark dilution and other things
There are many other trademark related concepts that are not directly related to design practice and are beyond the scope of this summary. If you are curious to learn more, this is great place to start:
Other links:
USPTO Basic Facts PDF
AIGA Trademarks Basics
Disclaimer: As stated previously, I am not a lawyer, I am just trying to help out a bit. Consult an attorney if you have any doubts or if your condition persists.