Design firms are often called upon to create identities for companies, products, and services. These projects require at least a basic understanding of trademark law. Here's a brief overview of the legal issues involved.
A trademark is a word, name, symbol, design, picture, device or slogan, or any combination of these elements, that is used by a business to distinguish its products or services from those of its competitors. Trademark protection can also include distinctive sounds, shapes, or colors that are used in commerce. The purpose of a trademark is to identify the source of a product or service and prevent confusion in the marketplace. Some well-known trademarks are the roar of the MGM lion, the pink of the insulation made by Owens-Corning, the shape of the Coca-Cola bottle, and the "Just Do It" slogan that is used by Nike.
Trademark is a general term, but it's also possible to be more specific. A "service mark" is a mark used by a business in selling or advertising services. A "certification mark" is used as a seal of compliance or approval (such as union labels or the Underwriters Laboratory mark that appears on many electrical products). A "trade name" is the name by which the public knows a particular business. A domain name on the Internet can be registered as a trademark or a service mark if it identifies the source of goods or services and is not simply a digital address.
When creating an identity, a design firm will propose various options for the client to consider. However, before a final design can actually be used in commerce, the client or the design firm must conduct a comprehensive trademark search to check for "prior art"—that is to say, anything already on file that matches or closely resembles the new work. Most design firms state in their contracts that the client accepts responsibility for this final legal search. The U.S. government database can be searched for free. The government maintains self-service Patent and Trademark Depository Libraries in many large cities across the country. Usually they are located inside the main public library.
Even though the government database can be searched for free, most companies prefer to have the search conducted by a legal professional. The most commonly used private search service is Thomson & Thomson. Search services are available from other companies as well, including CORSEARCH, LawMart and 4Trademark.com. Start by specifying whether a word search or a design search is needed, and whether it should be for the U.S. or international.
If the search does not turn up any prior art, the client or the client's attorney can move forward to register the new trademark. This is done through the U.S. Patent and Trademark Office, which has detailed information about the process.
Your client must use a trademark in interstate commerce to order to qualify for U.S. registration. However, while a new business is in its ramp-up stage, it's possible to reserve a trademark in advance by filing an "intent-to-use" application 6 months prior to the planned start of actual use. A series of extensions can bring the advance total to 36 months.
Currently, the federal registration fee is $325. After your client has submitted the registration paperwork and fee, it usually takes 6 months to receive a filing receipt from the Patent and Trademark Office, then at least another 6 months for them to complete the processing. In the meantime, many companies use a small "TM" or "SM" on their business materials to indicate that trademark or service mark status is being claimed. Those letters are later replaced with an "R" in a circle when the entire registration process is complete.
In the next article, we define "trade dress," review the duration of trademark protection, and discuss infringement. In the meantime, if you have specific questions about how the law might apply to your own particular situation, you should consult with an intellectual property attorney.
Did you find this column helpful? Click here to rate it!