Corporate Legal Advisors SM


Trademarks and copyrights are two different things. Trademarks identify the goods or services of a company and distinguish them from those of a competitor. Copyrights protect the actual content of literary, artistic and other creative works. Copyrights protect the works themselves, not the names the works are sold or displayed under. Most labeling of goods or services can contain both trademarks and copyrights. Each "right" is acquired and protected in a different manner. Each "right" can be lost in a different manner. The following attempts to explain some of this.

  1. What Is A Trademark? Trademarks identify the goods or services of a company and distinguish them from those of a competitor. A trademark is not a description of the product or service it is used on or in connection with. The product or service should be identified by a generic noun. As a general rule, think of trademarks as proper adjectives. For example, a "Volkswagen" is improper use of the trademark "Volkswagen." A "Volkswagen Passat" is an improper use of two trademarks. A "Volkswagen Passat automobile" is a proper use of the two trademarks.

  2. What Is A Copyright? Copyrights are commonly defined as the exclusive legal right given to an author, designer, artist, etc. to use of an original "work" for a set number of years. A copyright is created the moment a person transforms an original idea into a tangible form. It covers everything from advertising copy to software. It is not necessary to first label the work or register with the Copyright Office to have a valid copyright. More on this later. You also are presumed to have a copyright for "work made for hire." More on this later.

  3. Selecting Trademarks. In selecting a trademark, always assume that your product or service will be a marvelous success. Meaning your competitors will try to rip it off. The stronger the mark, the less successful they will be. Trademarks can be divided into three categories - arbitrary, suggestive, and descriptive. The strongest marks tend to be arbitrary ("Xerox" has no normal meaning.) The weakest marks are descriptive ("Excellent" would be a very bad choice.) Also not a good idea to select a mark that can be confused with a competitor's mark.

  4. Trademark Searches. The one absolute, at least by my thinking, is the need to do a trademark search before finalizing your choice. You need to know whether anyone is already using the same or confusingly similar trademark for the same or closely related product or service. Better to know up front than to lose your investment in time and money when challenged. And "googling" does not work. As with most other things in life, you get what you pay for. There are services which charge a reasonable sum and do a good job. Involves checking federal and state sources, industry directories, etc.

  5. Trademark Registration. You can, but are not required to, register your trademark with the United States Patent and Trademark Office. In short, registration gives you advantages of notifying the world of your mark, presumptions of ownership, conclusive evidence of sole rights (under certain circumstances), and is necessary if you wanted to obtain a foreign registration. Even if available for use, the USPTO will not allow registration if the mark violates certain standards. For example, confusing, descriptive, immoral, and disparaging words will not cut it. This is where I can make some money, so call me if you think your mark should be registered.

  6. Trademark Use. The rules are simple. Use the proper form of a trademark notice in all of your printed pieces, labeling, etc. Always give more prominent typographical treatment to the trademark than the generic name. Always use the trademark in the correct grammatical form. The trademark is a proper adjective, not a noun or verb. Never make alterations to your trademark. Do not abbreviate, hyphenate or otherwise variate. For example, if your trademark is "Phishmatic", do not use "Phish", "Phish-Matic" or "Phishmatized."

  7. Trademark Protection. Protecting your trademark involves efforts "in house" and "out house." One of your staff needs to know the rules and be the clearinghouse for all literature, labels, etc. that use the trademark. Paying attention to what goes on in the marketplace and acting quickly is necessary to force infringers to "cease and desist."

  8. Copyright Notice. Although the copyright comes into existence as soon as the "work" comes into existence, it can be lost if the "work" is published without the correct copyright notice. When in doubt, just place the copyright notice on the work. Look at my website for an example of a way to do it.

  9. Copyright-Works Made For Hire. The "law" has created a special category of copyrights called works made for hire. There is a legal presumption that a work created within an employee's scope of employment will belong to the employer. That is, the employer is considered the "author' of the work created by the employee. Best, nevertheless, to make this clear to your employees. The trickier situation involves independent contractors. If you use them, spell out your right to authorship of created works.

  10. Copyright Registration. Yes and no reasoning. Yes, it is straightforward. No, it requires a fee. Yes, it satisfies the separate mandatory deposit requirement. No, it takes time. You can probably do it yourself using the Copyright Office's website for the forms and guidance. Registration can be valuable with respect to labeling for products or services that contains unique artwork. If your "trade dress" involves a unique composition of colors, shapes, pictures, etc., you should definitely register the copyright.

  11. Copyright Protection. Same, same as with trademark protection. Make sure you are doing it right in house and watch what is going on in the marketplace. But, as with most things in life, there are exceptions. Notice that I did not place a copyright on this "newsletter." I have a copyright. I am authoring an original Class TX, Non-Dramatic Literary Work. But, frankly, I would be thrilled if this work is pirated, copied and disseminated to the masses.
In summary, trademark and copyright issues deserve the attention of at least one member of your staff. Assign this person to get smart and become the Trademark and Copyright Czar. All literature, etc. goes through this member of your staff. Use legal support when necessary. And, hope for the best.