Anyone can use the TM symbol for anything. When you use it together with a word, phrase or logo, you’re just saying that you consider that word, phrase or logo to be a trademark. You don’t need to have any registration or permission from anybody. But you’re only allowed to use the circle-R “®” symbol if you have a federal trademark registration with the U.S. Patent and Trademark Office.
Please visit the latest issue of Valley Business Front May [PDF link] for the full discussion of how and when to register your business.
And if you’re interested in learning more about trademark and brand development, join us at our next round of Shark Bites this month.
The yellow arches, the green and white mermaid, the white script on the red can. You probably can match these descriptions to the brand — and this immediate recognition points to brand and logo strength. Oftentimes, in fact, your logo is your brand. But is it really your logo? In fully developing this core part of their consumer identity, many businesses miss some basic steps they should take to avoid a situation where logo ownership is in jeopardy.
Part of determining who owns the interest in the logo design itself depends on the capacity in which the designer completes the logo development. Most people and businesses look to hire a graphic designer for a one-time project-based job for which they intend to pay that designer a lump sum. Upon making payment, that person or business then owns the work, right? Nope. That’s a copywrong. You see, simply making payment for the logo doesn’t confirm or clear up ownership or associated rights (and limitations).
One step in determining ownership of the logo developed by the designer is to ask whether it is a work made for hire. A work made for hire, under The Copyright Act, is defined as either “(a) a work prepared by an employee within the scope of his or her employment”, or (b) a specially commissioned work (as in the case of a graphic designer hired for a discrete project) in a number of enumerated categories if reflected in a written agreement signed by both parties. If the design work was not completed by an employee, then the work is potentially a work made for hire, but only if the specially commissioned work falls into one of the enumerated categories and the parties have signed a written agreement stating that the work will be considered a work made for hire. If the work is not a work made for hire at all, as with an independent contractor whose specially commissioned work doesn’t fall into one of the categories required under the Act, an explicit written copyright transfer agreement is required to transfer ownership in the logo design from the designer to the person or business for whom it was created.
Over the holiday break the United States Court of Appeals for the Federal Circuit, a specialized appellate court with jurisdiction over certain intellectual property matters, issued a significant ruling concerning the criteria that the United States Patent and Trademark Office (USPTO) may use to decide whether to issue a federal trademark registration. The Lanham Act–the federal law authorizing the issuance of nationwide federal trademarks–excludes from registration eligibility any mark which is “disparaging” to a person or group of people. Many legal experts have wondered how a law that, by its express terms, calls on the government to discriminate based on the viewpoint expressed by a private person can withstand constitutional scrutiny under the First Amendment’s free speech clause. The Federal Circuit has now ruled that it cannot, holding that the “disparagement” clause requiring denial of a trademark registration is unconstitutional.
A few weeks ago, the trademark dispute involving the Washington Redskins was back in the news again, with a federal district court judge ruling in favor of the cancellation of the “Redskins” word mark registered with the United States Patent and Trademark Office (USPTO). While this ruling does not invalidate all of the Redskins trademark rights per se, as we addressed when we discussed the internal USPTO ruling, it does deprive the Redskins of significant rights associated with its word marks (it’s logos and other marks not including the word “Redskins” are not subject to the decision.) So what does the ruling from the United States District Court for the Eastern District of Virginia in the case of Pro-Football, Inc. v. Amanda Blackhorse, et al. mean, and what can the Redskins do about it?