Protecting your Business Name, Logo, Design, and Intellectual Property

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Disclaimer: We are not attorneys, and what follows is our understanding of the law. It might not be correct. You should consult a lawyer if you have any questions.  What follows is basic info and should not be a substitute for legal advice.

This is a big issue when starting a business or running certain kinds of  businesses.  But unless you have a legal background, you probabaly never studied this sort of thing in school.  Based on the questions we have been seeing on the website, there seems to be a lot of confusion about these topics.

(A great explanation of these topics can be found at the Harvard University’s Beckman Center for Internet and Society Link  WikiPedia also has a good article. )

Definitions:

Trade Mark vs. Service Mark  In common usage these terms are used interchangeably.  People will use the term trade mark when it would be more precise to use the term service mark.   Trade Marks are associated with goods while service marks are associated with services.

The basic goal of a trademark is to distinguish your product from competing products.  It makes it easy for the consumer to find your product.   It must be distinctive and not be in general use.  For instance you could not trade mark the terms “auto insurance” or “kitchen remodel”.  And if it is a general name that describes you product/service, others it is hard to stop others from using a similar name.  That’s why companies make up words or combine words to come up with names like Foursquere or Xerox.  A trade mark can be word (name), phrase, symbol, and/or design.  To use an OC examples, the word–DisneyLand,  phrase– “happiest place on earth,” symbol–micky mouse ears, design–Mickey Mouse Hat.

Using Trademarks you don’t own

If a company has claimed exclusive rights to use these trademarks for their business.  You have to be careful to use them, or any thing similar, if their is any possibility that people might think your product or service is associated with their businesses.

Sometimes you will see whole sellers offering “replica” products.  They look like the name brand product to the casual buyer.  When you resell these products, you are infringing on trademarks.  You can get in trouble for this.  The owners of designer trademarks have been cracking down on knockoffs.  They hire PI’s that tip off the police.  And, when if caught they will seize the inventory you paid for and you may face jail time.  OC Register Story–Counterfeit Jeans, and according to this CBS story a woman got 41 months in jail for trafficking in  counterfeit exercise equipment.

But you could use them if you have a business that is not in the entertainment field and your name has enough distinction.   Selling Mikey Moose shirts on Harbor Blvd would not cut it; but if your last name is Disney, you could open Fred Disney’s Plumbing Supply Company.  It is a judgement call in therms of how close your service/product would be associated with the company’s trademarks in the consumers mind.  For instance, Mike Disney’s Movie Rental Company would be in the gray zone.

When setting up you want to avoid the gray zones, because the trade mark owner may force you to pay up or change your name.  Although you do not have to register your trademark, it is a good idea to see if anyone else is using your idea.  The place to get started is at the Patent and Trademark Office Search page on the internet.  And google your ideal names and slogans.  But you also have to think about other people who are using a name/phrase/symbol  but have not registered it.  They have what is referred to as a common law trade mark.  If you find that someone has a “common law” trademark because they have been using it, they have the right to keep on using it; and they may try to stop you from using it once your business is established.  The US Patent and Trademark Office suggests that you hire an attorney to do a thorough search.

… other searches …

 Trademark Symbols

® R is for Registered Trademark.  This means you have registered your trademark with the US Patent and Trademark Office USPTO  You do not have to register a trademark, but the USPTO states the advantages of registering your trademark with them are that it serves as a notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.  

and “sm” are used for unregistered trademarks.  You are using them and you have “dibs” on their use; and you do have some legal recourse if someone does infringes on your trademarks.   That said, it might be wise to spend a bit of money to register your trademark if you will have a large business.  And while you can technically get a trade mark yourself, the USPTO seems to strongly advise you to use an attorney.

It is important to keep your trademarks in use or keep maintain the registration on your trademarks.  According to a Wall Street Journal Article, if a brand has not been used for a period grater than three years, it is considered abandoned and is basically up for grabs.  To be honest, we are not sure what the word “used” means in this context, it may mean that you have not used an unregistered trademark or that the Registration has lapsed.

 Make Money with Trademarks.  Many of us think of a Trademark as just another thing that a business has to do.  But in many cases it is the most valuable asset a business has.  A trademark is the exclusive right to use a name, logo, or symbol.  It’s a property right protected by the government.  Just like you have the exclusive right to use your car.  If someone else wants to use it, they can pay.  The websites like ustrademarkexchange.com  www.brandlandusa.com and others are places where you can buy and sell brands and their associated trademarks.  Trademarks must be Registered with the USPTO.

 

Website Names or Domain Names and trademarks are two different things–buying a domain name is not necessarily a cheep way to effectively  register your trademark.  Website names are given out on a first come basis.  Just because you have a website name, doesn’t mean that you have the right to use that name on a product or to promote a service.  On the other hand, just because you have a trademark on a name, it doesn’t mean that you have the right to the associated domain name.  For instance, if you want a Nissan truck, you might think you need to go to Nissan.com to check out the latest models.  You will find some one got to this name before the people at Nissan did.  Nissan has tried to sue him for the name, but when you type it in you still go to his page that has a variety of internet advertisements.  That’s why the car company has to use NissanUSA.com.  From what we understand, the owner of the website is not technically violating their trademark as he is not using it for anything to do with cars; and as long as he does not imply he is part of the international auto company.

A trademark holder, such as Nissan, can try to take away a domain name from someone if it is clear that she using it for the sole purpose of extracting a ransom–known as a cyber squatting.  This is a complicated legal issue, and most of the time the parties will come to a financial arrangement whereby the domain name owner will make a some money; and the trademark owner will avoid high legal costs.  Check out the Nolo Book on Trademarks for more info.

 Resources

This seems to be the most through book on the subject that’s aimed at non-lawyers:

It has a definition of all the terms you will come across and interesting case histories.

As the name implies, it’s all about protecting your business’s trademarks.
These books are available for free in most public libraries.

What’s the difference between a Trad mark, Service Mark, and a Copy Right?

Well, Trade Marks are associated with the name or slogan of your business, the product your sell.  If you sell a service, than you use the term Service Mark, although many people just say trade mark for both goods and services.  For instance if you were in the surf board business, your trademarks might be Wipe Out Boards, the identifiable shape of your boards,  or your slogan Totally Bite it on a Wipe Out Board.  

A copy right would be applicable to original works you have produced such as  your instruction manual, learning videos, and the sales manual  every one of your sales dudes have memorized.

If you have invented something unique a copyright would not apply.  A patent would be applicable.  For instance, if Wipe Out Surf Boards had invented a special type of fin that keeps it’s board stable, it would want to get a patent on that.

But there are some cases where you would want a copy right and a trademark on the same work of art.  For instance if the art was to be used as your logo, and was copied as your product.  And in an advertisement, your logo, slogans, and name would be trademarks, but the rest of the ad including text and graphics would have the benefit of a copyright to prevent competitors form using it for their purposes.

Copyrights

There is an excellent 12 page booklet from the US Copyright Office here which explains what copyrights are all about in simple English.  A copyright is for intellectual property that you produce which is not part of a physical good.  That could include art, music, lectures, photographs, designs on a t-shirt, written material in books, pamphlets, websites. …

Even though you can not touch it, a copy right on your intellectual property is your personal property under the law.  If someone rips you off by just coping your work, you have legal remedies just as if someone ripped off other personal property such as steeling your cat.   If you hold a copy right on your work, you do not give that up when you sell a copy of your work.  For instance, when I buy a CD from a local band, I have the right to enjoy listening to that music.  And I can transfer it to my ipod for personal use.  I cannot legally make copies of the music to distribute over the internet.  The same is true of web pages, books, magazine articles…  It applies to the your work but it does not necessarily apply to the contents of your work.  As the US Copyright Office explainsCopyright protects the particular way authors have expressed themselves.   It does not extend to any ideas, systems, or factual information conveyed in a work.”

How do you Copyright Your Work?

The creator of an original work is automatically given a copyright to the work.  You do not have to have a publisher or publish your work.  And you are not required to register the work with the Copyright Office.  Basically, if you create a work you have an automatic copyright.  People can not legally profit by selling copies of that work.

That said, when you make copies of your works it is important to give notice that you own the copy right to what you have made.  This is done by using the stating on the work either the work copyright or the copyright symbol © along with the year it was originally “published,” and the name of the copyright owner–the creator, the person who has purchased the copyright, or the employer of the creator if work was done during her scope of work.

Free 29 page kindle book from library of congress:

You may want to register your copyright if you believe others will profit from it.  This way you can claim damages.  The other advantage is that after you have a registered copy right, you can make money by selling the copy right to your work.  Click here for an Internet  pamphlet with same material as the book above   As stated in Copyright Basics, copyright law provides several … advantages to encourage copyright owners to make registration … public record the copyright claim… prima facie evidence in court of the validity of the copyright,…[if registered in a timely manor and someone uses your material] statutory damages and attorney’s fees will be available to the copyright owner in court actions.

It’s not too late to register your copyright–copyrights registration can be made at any time.  Even after a work has been published for a while.

How do you Register Copyrighted Material?

Again, according to the free book Copyright Basics, you need to send a copy of your work, a check, and an application to the Copyright Office at the Library of Congress.  The copyright office receives more than 600,000 applications for copyright registrations every year.  There is a separate for for each catigory of work that can be copyrighted.  They are available on line at www.copyright.gov/forms .  The copyright office now allows you to file with a digital version of your work.  The fee for that submission is $35; and the fee for a hard copy submission is $65.  You can use the electronic submission to copyright word documents, audio files, power point presentations, and even excel spreadsheets. 

Who enforces the copyright?

Local law enforcement will does not enforce your copy rights.  And there are not copy right police walking the beat.  Unless it’s on a massive scale, the government will not get involved.  So you have to enforce your copyright by litigation.

When can you use other people’s material?

  • People do have the right to copy your material under “fair use” without compensating the owner.  According to the US Copyright Office, examples of fair use include such as criticism, comment, news reporting, teaching, scholarship, and research.  It is not a cut and dry issue; and their are limitations on the amount of the material you can use.
  • Public Domain  A work may enter the public domain for a two reasons:

Use Other People’s Work For Free

This is an private sector solution to the complexity of the copyright law created by congress.   Creative Commons could be thought of as a set of uniform legal agreements that allow creators to put their work in the public domain, and allows users to copy and/or modify works with the clear understanding that they have permission.  This became necessary in the 1990’s as the internet grew and on-line publications needed to access works; and the internet also allowed creators to share their works.

The Creator of the work allows other people to use it.  You can use their work with out paying them.  They may be doing this to build a reputation in the internet, or they may just be creating as a hobby and want to share what they have accomplished.    You may be allowed to use their images sounds or other works with their permission.  You can check with the creator, or you can see if they have licensed the work.  The licensing is explained on the website Creative Commons.   It also has a search feature to find photos which you can use on your websites and commercially.  There are three basic levels  of licenses which are indicated by the (cc) symbol.

  1. Free to use and share This license is for for non-commercial use.  The creator allows you to use it with out changing it and generally would like to get credit for the work
  2. Free to use and share and modify  Again this if for non-commercial use.  You can copy a work and you can modify it.  Again, you have to give credit.
  3. Attribution (CC BY)  This is the least restrictive license.  It allows work to be used commercially and allows you to modify the work.

Click here if you want a more detailed explanation of the licensing

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Another Alternative is Stock Exchng www.sxc.hu  Also known as SXC.  It’ hosted outside of the abroad, in Hungary, perhaps to get around file sharing restrictions in the United States.  As it states in it’s legal page, SXC cannot be held responsible for any copyright violations, and cannot guarantee the legality of the Images stored in its system.   But it has a lot of free photos you can use on your website, publication and website templates you might be selling.  If you intend to use the images for commercial use, you are supposed to contact the person who uploaded the photo for permission.  The angle is that you go there for the free stuff that’s pretty good, but you might buy the stuff that’s a bit better quality.

Hot do you find work with a Creative Commons license?

You can find a link to 8 sources that you can use to search for CC works.  http://search.creativecommons.org/  These sources also allow you to search on their websites for CC works typically in “advanced” search mode.  The most well known are google, flickr, and youtube.  They will allow you to check off a box if you are using work for commercial purposes such as using a photo on your advertisements.

Work that Falls Into the Public Domain

In the United States, Copyrights do not last for ever.  The period of time until something lapses into the “public domain” varies.  A nice table can be found at  Cornell University’s Website   Basically, if the copyright has not been renewed by it’s owners for a long time after the creator has passed on, it enters the public domain.  The best known example of something falling into the public domain is the movie It’s a Wonderful Life.   Ever wonder why it was played so often on TV in the 1980’s?.  Well the owner of the movie forgot to renew the copyright in 1974, so it was in the public domain–that meant it was free to the TV stations to broadcast.  And it people were selling it on Video Tapes with out paying for it.  Forgetting about the copyright was actually benefit to the movies owners.  It was on so much that it became part of the holiday season.  Otherwise, it would have become another forgotten movie.  But they regained the copyright in 1993.  Slate Article

Buying/Selling Copyrighted Material

There are websites for artists to sell their material to users.  The best known is Getty Images which sells photos, videos, and music tracks you can re-use.    Another alternative for photos, digital art, videos, and audio clips is.   is IStockPhoto.com.  This is the profit side of SXC discussed above.  It allows you to buy the rights to a photo royalty free which means you don’t have to pay each time you use it commercially.  Both sites allow you to upload your work.

Copyright Resources

US Copyright Office

Free 29 page kindle book from library of congress:

 

 

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