Trademark fees go up…way up

Registered Stamp Showing Copyright Or Trademark

The US Patent and Trademark Office, as of January 14, has changed a number of fees in connection with trademark registration.

Notable is the jump in the fee for filing a paper application for trademark registration. The per-class fee for filing an initial application is now a whopping $600, an increase of $225 over the previous $375. The fee for filing an online application has increased from $325 to $400, a bump of $75.

It has always been more costly to file a paper application as opposed to an electronic one, but now the difference is $200 rather than a mere $50. Why the big difference? According to the USPTO’s website, it is part of “incentivising.” Electronic filing is more efficient and it costs less. Filing online is therefore preferred and encouraged.

Other fees increased

A number of other fees have increased as well. Filing a Statement of Use has doubled in cost, from $100 to $200, and a Request for an Extension of Time for Filing a Statement of Use has gone up $75. There is even an apparently new charge called an Additional Fee for Expedited Service, a “rush” charge. It’s $160.

In addition to providing incentive to file electronically, the increases are also part of an effort to “better align fees with full costs,” according to the government website.

[See Trademark Fee Changes at uspto.gov].

It should be noted that these price increases are in connection with federal trademark registrations only and do not affect trademark registrations at the state level. Most states in the US offer trademark registrations at a much lower cost than what the USPTO charges, though the protection is more limited. In addition, trademark rights also derive from simply using a trademark in connection with goods or services. These are called common law trademark rights, and are limited to the geographical area where the mark is used. To prove common law rights in a trademark, it must be shown that the one claiming ownership of the mark was the first to use the mark in a geographical area.

 

Advertisements

Trademark law protects a company’s name and reputation

Registered symbol in gold (3d)

A logo can represent a company’s good name

A logo is often one of a company’s most valuable assets. A logo mark may represent the company, its image and reputation, or the reputation of its products or services. Many logos are protected by trademark registration. Many more benefit from trademark protection without registration. Because a mark may be such a valuable asset, many companies have branding guidelines in place to carefully control the use of company logos.

It’s a given that a company’s logo should appear prominently in its signage. But what should a sign maker do if a sign buyer orders sign work featuring logos that it does not own? Should sign companies act as trademark police and require proof of permission before they put a logo on a sign? Most do not. They simply produce the work in good faith, assuming that the sign customer is not infringing by displaying the logo, though many sign shops, when asked to place a national logo on sign work, make an effort to obtain branding guidelines from the sign buyer or the national chain.

Occasionally, a retailer will say, “We didn’t ask permission to use their logo, but we sell their product so it will be okay to use it.” The retailer reasons that he or she is giving their supplier free advertising—and who would object to that? In reality, the use of a protected logo without permission constitutes infringement. And rather than view the display of it as free advertising, the company owning the mark may be more concerned about how it might affect its name and reputation. Why so?

Here is a purely hypothetical example. A siding company believes it would be a selling point to put the Alcoa logo on their signs since they use Alcoa aluminum products. So they order signs with the Alcoa logo on them. Alcoa later contacts the siding company and tells them they are not allowed to display the logo on their signs and to remove it. They explain to the contractor that, while they appreciate his loyal business, his use of the logo without permission is trademark infringement.
Why does Alcoa not view this as free advertising in this fictitious scenario?

Trademark law protects a reputation by preventing confusion

Trademark protection is designed to prevent confusion among consumers. Alcoa may have no desire to be in the siding installation business, but the sign with Alcoa’s logo could give consumers the wrong impression.
And what if the siding company does shoddy work? The improper use of the logo on the sign could conceivably tarnish Alcoa’s reputation or the reputation of its products. It may have taken many years of aggressive marketing for Alcoa to develop a respected name in the aluminum products industry, and protecting this good image may be a high priority for the company. So trademark protection can serve to protect the good name of a brand. Further, if a siding customer is unhappy enough, they may decide to start a lawsuit, even naming Alcoa in the suit, since the Alcoa logo is on the sign.
Consequently, Alcoa avoids this whole bundle of problems by simply not allowing their logo to be used on siding company signs. They may feel that the small amount of advertising the sign gives them is not worth the potential problems.

fairly-good-siding-co05

It’s true that many people, including a well-intentioned siding contractor, may view this as a case of a large corporation using a ‘big stick’ unnecessarily. But that’s because most people don’t realize the potential danger to a trademark of allowing even small infringements to go unchecked. Trademark protection, for it to stay in force, requires watchful management. Trademark protection for a mark may live or die depending on how vigilant the trademark holder is in defending it. The government has put the responsibility for policing infractions squarely on the shoulders of the trademark owner. There are no ‘trademark police’ provided by the US Patent & Trademark Office (USPTO), or any other government agency.

Trademark attorney Erik Pelton, in a recent blog, gives this advice:

Deal with any potential infringements quickly. The more investments of time and money someone puts into using a name [illegally], the more attached to it they become and the more complicated getting them to stop is likely to be.

Erik M. Pelton, Dec 22 blog entry     Pelton is not only a patent and trademark lawyer, but also a former examiner for the USPTO.

Can you trademark a color?

 

colorsplash3

 

Yes, US trademark protection can be obtained for a color or color combination, though it is not commonplace.

United Parcel Service, for example, owns brown as a color mark in the transportation and delivery industry (reg. no. 2901090). This doesn’t mean that no other company can use the same brown. But it does mean that no other company in the field of transportation and delivery can use brown—for delivery trucks or other trade dress.

The purpose of trademark protection is to prevent confusion among consumers. When a brown delivery truck pulls up and a driver in a brown uniform gets out, most people assume it’s UPS, not Fedex or another delivery service. The brown color has become so associated in the minds of customers with UPS that it has become a distinguishing mark for the company, though it has not always been so. That’s why early efforts by UPS to register brown as a trademark were not successful. It took time, and aggressive marketing, for brown to acquire meaning for UPS. In trademark law, when a mark acquires meaning that it did not have in the first place, it is said to acquire “secondary meaning.” This acquired secondary meaning has allowed UPS to apply for and receive trademark registration for brown.

Similarly, Owens Corning has been granted several trademark registrations for the color pink for insulation, adhesive tape and other construction-related products (reg. nos. 1439132, 2090588, 2380445, 2380742, 3165001). 3M has a trademark for canary yellow for PostIt notes, and in the telecommunications industry, T Mobile has a trademark for magenta.

To qualify for trademark protection, a color cannot be “functional.” That is, the color cannot be essential to the use or purpose of the product or service. This is why Deere and Company was denied a trademark registration for green in the early 1980s. There are many makers of farm and garden equipment. Should only one of them be allowed to paint their tractors green? It seems reasonable that green, the color most commonly associated with plants, gardens and farms should not be owned exclusively by one farm equipment company. It would seem to be an unfair advantage in the marketplace. On the other hand, specific combinations of green and yellow for specific applications have been registered by Deere. A green tractor body with yellow wheels, for example. Or a green harvester with a yellow stripe. multiple2

 

Links:

Blog article by Susan Perera   The struggle of Deere and Co. to trademark color.

Chinese court awards trademark victory to John Deere  This decision marks the first instance in China of a trademark litigation based on colors. The infringer was a heavy equipment company based in Beijing. Deere was given injunctive relief and awarded 450,000 yuan in damages.

 

A paper by Belinda J. Scrimenti for the American Bar Association Section of Intellectual Property Law’s 27th Annual Intellectual Property Law Conference in Arlington, Virginia. The pdf found on this page contains a short, but fascinating, history of trademark litigation regarding colors.

 

 

 

 

 

 

 

 

 

clipart by Freepik.com

 

 

A trademark registration is not always about protecting a logo design.

trademark-symbol

Often, in the  US, a trademark registration is for the wording only rather than the design of a logo. The terminology used for this type of mark on a US Trademark application is “standard character mark.”

A registration for the design of a logo would be a separate application. What is the difference between the  two types of registration? Which is better?

Standard Character Mark

A registration for a standard character mark covers all variations of the wording that you want to protect. It covers the wording in any letter style and any color or size. That means it covers the wording if it’s part of a logo design, too. In other words, a standard character registration is more comprehensive than a registration that is for only the design of a logo, because it covers all forms of the wording (including its use as a domain name).

A design mark

On the other hand, a trademark registration for the design of a logo applies only to the exact design as it appears in the drawing that you send with the application. So, what happens if you want to change the design later, or add or remove a word? You will have a problem, because you will be required to apply for a new trademark registration. In effect, then, a registration for a standard character mark may be stronger, more versatile, than a registration for a design mark.

Why not register the wording of a logo as a trademark and its design as a copyright? Because, so often, a logo does not qualify for copyright protection in the US.  [see related post:  Can logos receive copyright protection?]

Consequently, many trademarks are protected by two trademark registrations, one for the wording and one for the design. You may even see two registrations just for the design (one in color and one in black and white). If you want to apply for only one trademark registration to save money, an attorney may advise registering a standard character mark rather than a design mark. There are more infringements related to words than to designs. Sometimes, though, a particular word mark may be considered “weak,” so that protecting the design may take on greater importance. Again, the advice of a trademark attorney can be valuable.

The ideal, of course, is to protect both wording and design by separate registrations, though it’s more costly.

 

Links:

USPAT page explaining character mark versus designed mark   This link is to a government page and has some illustrations.

Law 4 Small Business   This post is by attorney David Ferrance from 2015. Clear and succinct explanation of character mark versus design mark.

Words or Logo or Both?   A more involved explanation from the blog of attorney Eric Waltmire.

 

Trade name vs Trademark. What’s the difference?

 question mark

What is a trade name? Is it protected like a trademark? Can another business use the same trade name as yours?

What is a trade name?

In the US, a trade name is the name of a business or company, whether the business is a sole proprietorship, a partnership or a corporation. A trade name is, generally, not protectable as a trademark unless it is actually used to distinguish and identify the goods or services of a company.

Can a name be both a trade name and a trademark? Yes. Many are. For example, the name Sony, when used on a company letterhead, functions as a trade name. When it is used on TV sets sold in stores it is a trademark.

Can a trade name be protected? Yes, it may be protected under state statutes or principles of unfair competition. But it is not protected as a trademark unless it identifies goods or services.

Is it possible for a company to have a trade name that they cannot use as a trademark? Yes, because it is possible for a chosen trade name to be an infringement of an existing trademark already owned by another company. But what if the trade name I choose for my company has been registered through a government agency, and the registration was approved? How could it be an infringement of someone else’s trademark? Moreover, if the name is already owned as a trademark by another company, how could the state possibly approve it for my trade name? The possibility of this happening highlights a common myth regarding “trade name clearance.” The myth is that trade name clearance equals trademark clearance. It doesn’t. They are not the same.

Trade name registration

If I start a business I may use my personal name for the business or I may choose a fictitious name—fictitious because it’s not my real name. This is my business name or commercial name, my trade name, also known as a DBA (Doing Business As) name. I may register this name through the county clerk’s office in the county where I do business or I may register it through the state. Or, I may hire an accountant to incorporate my business and he or she will file my corporate trade name with the state. This filing process often involves a “name clearance” through which the state or local government agency approves my chosen name for the business.

What is the purpose of this name filing with the government? It’s mainly to inform the government, especially those agencies that levy taxes, of the existence of my business. It also can, at least theoretically, prevent me from taking the same name as an existing company, which could be viewed as unfair competition. But this name clearance is by no means exhaustive. Note this comment on the website of Sterne Kessler Goldstein Fox, a law firm in Washington, DC: “The chosen [trade] name is generally accepted by the state agency unless the register already contains a registration for the same name for another company. In general, the agency does not analyze whether a proposed name is similar to a previously registered name prior to registering it as a business name. The agency typically looks only for exact matches within the states registry (and differences in names can be as minor as the use of Corp. versus Inc.). In some cases a state may even allow companies with the same name to register in the state.” [italics added]

By contrast, a trademark search can be far more extensive. A trademark search is not a matter of simply looking for names that are the same, but will look for names that could be confused with each other. That’s why a search will not just look at the names, but will analyze the products or services represented by the names, and how they are sold. The standard for trademark infringement is whether there is a likelihood for confusion. A likelihood of confusion could exist even if the names are not exactly the same. Further, trademarks may actually use the same terms if there is no chance of consumer confusion (for example, Ace hardware and Ace bandages).

Trademark clearance includes checking not only the trademark registry of the US Patent & Trademark Office, but since each state has a trademark registration process, it will also include a search of the trademark registries in all 50 states. If the product or service is to be offered outside the US, a trademark search will include the registries of other countries as well. A thorough search will also include a search of trademarks in the US that may not be registered (trademark rights are acquired through use, not registration).

In understanding the difference between trade names and trademarks, it can be helpful to note that the two terms normally function as different parts of speech: a trade name is a noun, while a trademark is an adjective. For example, Sony Corporation is a trade name when it refers to the company. Coca-Cola Bottling Company is also a trade name. But when used with goods (Sony televisions, Coca-Cola products) these terms are trademarks and function as adjectives.

What is a logo? What is it not?

The term logo is commonly misunderstood outside the graphic arts world.

At times we have had clients ask us to put a “logo” on a sign and then they provide us with an image they obtained from a clipart service. Once, someone asked me to “find a house logo” on the internet to put on some sign work. Both these requests illustrate how the word logo is commonly misunderstood by the general public. The misconception is that a logo is any graphic image or any piece of artwork.

 

What really is a logo?

Here is a clear and accurate definition of logo: a specially designed mark or emblem used by organizations to aid in promoting instant recognition. It may be composed of letters only or a graphic symbol, or a combination of both. It may embody a trade name or a trademark or both.

The word logo is actually an abbreviation of logotype. A logotype, in the days of printing with metal type, was a single word cast as one piece of type. A logotype was similar to a ligature, except that a ligature was only two or three letters joined in one casting rather than an entire word. In a ligature, the letters themselves are joined, too. Ligatures were created as a way of solving an awkward or unsightly spacing problem between a letter pair. In a logotype, letters may or may not have been joined, but they were cast all together as one large piece of metal type.

Row of ligatures in vintage wood type
Row of ligatures in vintage wood type. Ligatures were a way of modifying unsightly spaces between letters by joining the letters and rendering them on one block or slug of type.

 

By extension, logotype eventually came to mean more than just a casting of an entire word, but referred to any uniquely arranged set of letters. In common usage today, a logo is a specially designed word or symbol, or combination of word and symbol, that officially represents a company or organization, or that represents goods or services of  an organization. Legally, the name of a company is known as its trade name, and a logo may embody a trade name. If a logo or a name identifies a product or service of a company it may function as a trademark or service mark. If a trade name identifies goods or services of a company in addition to being the company name, it may serve as both trade name and trademark. For example, Sony is the name of an electronics company. On letterheads and business cards the Sony name functions as a trade name. But when it is used on consumer goods, such as televisions, it is a trademark.

A logo may be very simple, such as the 3M logo,

3M_ok

or elaborate like the Anheuser-Busch logo.

Anheuser-Busch

It is of note that the 3M logo is type only, devoid of any design treatment other than the fact that the letters kiss. And it is composed of one of the most ubiquitous of letterstyles: Helvetica. By many logo design standards, it would be considered a fail. Yet the 3M brand has been highly regarded for many years, proof that a logo is not what constitutes a brand. Further, while a logo is important, its design may not be as important as some (designers) would have you believe. Logo design, along with other trade dress is not unimportant or trivial. But successful branding involves far more than the design of a logo. Indeed, a brand may develop a reputation of high esteem quite apart from any graphics design associated with it. In contrast, another brand may acquire a bad reputation in spite of excellent design work in its advertising and trade dress.

Some logos are not composed of type at all, but are abstract. The Nike swoosh and the McDonald’s arches carry little meaning intrinsically, but have acquired meaning with time and can easily stand alone and convey meaning without words. The McDonald’s arches are so distinctive that, sitting atop a highway sign, they can be recognized from distances long before lettering is legible. The triangle shape that is part of the Bass ale logo is one of the simplest as well as one of the oldest logomarks in existence.

Bass_Ale

Can a photograph be the basis for a logo? Well, the Michael Jordan “jump man” silhouette, a logo created for Nike, is based on a posed photograph. Other logos incorporate photos also, though it’s not a common treatment.

Nike’s Michael Jordan logo is based on a posed photo of the athlete executing a ballet move.
Nike’s Michael Jordan logo is based on a posed photo of the athlete executing a ballet move.

 

What a logo is not.

Can a clipart image be a logo?  Generally, no.

paint man clipart
A clipart provider typically prohibits the use of its images, such as this one from Adobe Stock, in logos, trademarks and branding.

 

Remember that a logo represents a company or its products or services. It serves to aid in identifying a company, making it recognizable apart from others. By definition it should be unique. A graphic image that is sold by a clipart supplier is legally available to anyone and cannot function as a unique identifier. For example, if a number of house painting companies all use the same stock image of a man with a paint brush on their signs and printed literature, the image fails to identify any one company. Rather, using the same image can give the appearance that the companies are related in some way, perhaps even all part of the same company. Does this not defeat the purpose of a having a logo? Further, none of these companies could legally own their logo if it contains clipart that they don’t own. What good is a logo if you cannot own it and protect it? Clipart companies do not normally sell complete ownership of their images. They are merely licensing them to users, usually for limited use. A company’s logo should be a design that belongs to the company, not a design that is just rented. If a company tries to exercise ownership of a design that incorporates clipart, it is a violation of many clipart agreements. Many clipart providers, in fact, specifically forbid the use of their images as part of a logo design or branding scheme.

Here is a link to iStock Photo’s license agreement forbidding use of its images in logo designs:

http://www.istockphoto.com/legal/license-agreement

A logo design that incorporates clipart would probably not be granted trademark registration in the US. It is not protectable as intellectual property.

Can a logo design use an image that is in the public domain? Well, how could such a design function as a unique identifier if it’s available to everyone? And again, how could it be protected? How could it receive trademark protection if it cannot be owned?

 

Does it really matter how we use the word logo?

Is using terminology correctly really so important? After all, the word logo is not really a legal term in the world of intellectual property. And its meaning has changed over the years. So what’s the big deal?

Think about this: as designers and makers of signs, we are actually in the business of communication. Good sign work involves effective communication, and should impart information clearly, and ideally, in a minimum amount of time. Signs that do not clearly communicate serve only to create problems, and in the end, waste a client’s money.

Clear communication is not just important for the messages on signs. It is necessary for business in general, at all levels and in every aspect. Using incorrect terminology in the sign and design world may not be life-threatening or create health risks like it does in some fields (healthcare, for example), but it can have detrimental effects in many areas leading to: lost productivity, duplication of effort, poor quality, increased costs, wasted time, client dissatisfaction, liability issues.

Communication between sign designer, sign builder and sign buyer should be free of confusion and clearly understood. The sign/design game has a unique vocabulary of terms that are often misunderstood by those outside the business. The continued success of the industry depends, at least in part, on clear communication among all the players.

Is trademark infringement really wrong?

When a company takes legal action over a perceived trademark infringement, it is sometimes accused of being a bully.

A pub in the St. Louis area began selling a drink with a name similar to a Starbucks drink name. So Starbucks sent a cease-and desist letter to the owner. In the world of intellectual property, a cease-and-desist letter is a routine first step in defending a trademark against infringement. These types of letters are sent all the time and are rarely newsworthy.

The sending of the Starbucks letter, however, was picked up by news media and the result was a little storm of bad publicity, with Starbucks being accused of heavy-handedly overreacting. Public sentiment favored the pub owner and the account read like a David and Goliath story.

My first reaction was, “but, trademark infringement is wrong, isn’t it?” My next thought was, “wait a minute, who is overreacting here?” A cease-and-desist letter is not heavy-handed. It’s a warning shot, the smallest warning shot possible, really. It is intended to stop an infringement at its earliest stage, to nip it in the bud, before costly litigation becomes necessary.

As I learned in intellectual property class at the community college, if a company does not vigorously defend its trademarks against even small infringements, it can have a harder time defending them later from more significant threats. Failure to defend a trademark in the early stages of infringement can weaken a trademark suit later in court.

But Americans love an underdog. A little guy is often perceived as the good guy and a big corporation is seen as the bad guy for no other reason than size. It’s a well-worn Hollywood stereotype: small is good, big is bad. The bigger, the badder.

On the other hand, might this little hoo-ha over a Starbucks trademark be more than just an example of the underdog effect at work? Could it also be an indication that many do not view intellectual property as legitimate property? And that infringement is not really wrong? I suspect so.

The truth is, intellectual property, be it a trademark or a copyright, is property in every sense of the word. It can be bought, sold or leased. It can be bequeathed, inherited, left in a will. In some cases it can have great value. It is worthy of protection, just like any piece of property that has value.

If someone broke into the offices of a large real estate company and stole a dozen “For Sale” signs, who would blame the company for prosecuting the thief? Would the company be accused of being a bully, of overreacting? Yet, to a company like ReMax Real Estate its trademarks are far more valuable than a few yard signs. That’s why it is known for aggressively pursuing infringers. A trademark may be one of a company’s most valuable assets. It has been estimated that the Coca-Cola logo is worth 70 billion dollars. Is it any wonder that a company would take measures to protect such a valuable asset?

I believe that many people do not fully appreciate that intellectual property really is property. A house or land, even a car is easier for them to think of as property, because you can see and touch these things. The loss of these is often difficult to recover from financially.

For a business, the loss of valued trademarks could inflict irreparable damage. It is no wonder that for certain types of willful trademark infringement in the US, the penalties can be in the millions of dollars.