Trademarks, Service Marks and Copyrights – How The Laws Have Changed As Of October 2010

When clients engage us to create a logo for their brand, we are often asked whether they need to register the logo as a trademark or service mark. While it is not a requirement, doing so provides broad-reaching legal protection for the use of the mark in commerce.Whether a trademark attorney should handle the registration is another common concern. Our advice is that you may attempt to do the registration yourself for a maximum filing fee of approximately $375 but the involvement of an attorney who would conduct formal searches and submit acceptable proofs of use in the registration process may prove to be a wise decision when considering the liability, inconvenience, expense and negative outcome of conflicts of rights or flawed filings.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 source of the goods of one party from those of others.” That means that logos, taglines and slogans may be eligible for trademark registration if they meet all qualifying 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 “mark” are used equivalently to refer to both trademarks and service marks.What is a copyright?The United States Library of Congress’ Copyright Office, which is the registrar for copyrights, describes a copyright as “a form of protection provided to the authors of ‘original works of authorship’ including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.” Protecting the form of expression rather than the subject matter 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 the superscript symbols: TM, SM and ®Another question we are often asked to address involves when it is appropriate to use the superscript trademark, service mark or registered trademark symbols: TM, SM and ®. The use of the first two symbols is a way to formally claim eventual intent to register either the trademark or the service mark but such registration is never a requirement. Furthermore, if use of the trademark or service mark can be adequately shown with dates of use clearly evident, the inclusion of the superscript symbols TM or SM in conjunction with such usage is not a requirement 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 doing so without approval would be noncompliant with federal law.When to use the Copyright NoticeTo protect your “original work of authorship,” it is recommended by the Library of Congress Copyright Office that a copyright notice be placed on copies of the work “to inform the world of copyright ownership that generally consists of the symbol or word ‘copyright,’ the name of the copyright owner, and the year of first publication, e.g., © 2008 John Doe. While use of a copyright notice was once required as a condition of copyright protection, it is now optional.”What the Copyright ProtectsIt is important to note that documentation from the United States Copyright Office states that “a copyright does not protect ideas, concepts, systems, or methods of doing something. You may express your ideas in writing or drawings and claim copyright in your description, but be aware that a copyright will not protect the idea itself as revealed in your written or artistic work.”According to this office of the U.S. government, “your work is under copyright protection 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 nonprofit organization responsible for domain name system management and administration through accredited registrars.Why Register a CopyrightCopyright registration is strictly voluntary but will be required in the event that you wish to bring a lawsuit for infringement. It is helpful to have your certificate of registration a matter of public record, possibly making your work eligible for statutory damages and attorney’s fees in successful litigation. Proving copyright infringement requires skillful understanding, interpretation and defense of the frequently changing copyright laws which contain many gray areas of application and usually deter legal pursuit due to inordinate expense.How to Register a Copyright:If you choose to file online, registration of your copyright is $35 per work. If you file conventionally, the fee is $50 per work. You are not required to disclose 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 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 filed online, and up to two years or more if filed on paper. Fees are nonrefundable. You must also submit at least one nonreturnable electronic or hard copy of the work(s) you wish to register subject to an array of other requirements depending on the type of work, whether published and other variables. The length of this process should not impact your plans to publish either the copyright notice or the work itself. Only your need to file copyright infringement may be affected by the date of actual registration. For more information about this, go to http://www.copyright.gov.How to Register a Trademark:Before applying for trademark registration, a formal search of existing or pending trademarks is conducted in order to avoid conflict of rights. This can be done for free by the registrant or his attorney via the online federal TESS (Trademark Electronic Search System) database as well as at selected public search facilities nationwide. In the event that the trademark is defined by a unique design, it will need to be searched with the use of a design code available within the government’s Design Search Code Manual. If a possible conflict is detected, it can be checked further by searching the federal TARR (Trademark Applications and Registrations Retrieval) database. In order to conduct 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 mark you intend to register. There are two formats possible for mark registration: (1) standard character format; or (2) stylized/design format. The USPTO describes the first as a mark that includes “word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation.” The second format would seek to protect a mark having a particular stylized appearance, such as logos we design for our clients. In the past, such a drawing had to be submitted in black and white with a range of patterns to depict differentiation of tones used. Today, the drawing can be submitted in color with precise accompanying descriptions detailing where the colors are used. Such drawings must be consistent with proofs of actual use also required for submission in the application process. These proofs are referred to as “specimens.”In the registration of a product trademark, as opposed to a service trademark (or service mark), an acceptable example or specimen must show the mark used on the actual goods or packaging for the goods. This includes a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. Actual products are not acceptable examples in the registration process.When seeking to register a service mark, the USPTO states that approved samples of use can include “a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services.” However, it is specifically stated that if the mark does not include terms that describe what kind of service is offered, it would not be an acceptable specimen of use.It is essential to file the trademark registration form and its required components of application properly to avoid ensuing problems and delays in the process. If filing electronically, an immediate reply with a serial number of the application should be expected. However, the entire process can take up to several years depending on what legal issues arise during the course of the examination of materials. Findings by a federal attorney citing conflict of previously registered or pending rights, or failure to qualify as a trademark are common reasons for delay. These may include use of a surname or determination that the mark is purely ornamental or even deceptive in its presentation. Such criticisms can be appealed but often are unsuccessful and tend to add further postponements and additional expense to the process if you have engaged an attorney to represent you.If all obstacles are overcome 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 due prior to expiration at ten years. Should any of these deadlines be missed, there is a six-month grace period allowance for either filing with the payment of additional fees.In any case, it seems that the major reason to pursue formal registration of a trademark, service mark or copyright is to provide tangible grounds for suit if unlawful infringement of rights becomes an issue. For some small businesses, the cost to prevail in such a lawsuit would probably be so prohibitive that the decision to bring a case forward would be ultimately discouraged, rendering the effort and expense to submit all trademark or copyright registrations an exercise in futility. Therefore, the value of such registrations is dependent on the circumstances affecting each individual case.For further information from The United States Patent and Trademark Office, go to http://www.uspto.gov/