Protecting Your Brand/Trademark

It is vital for creative professionals to ensure that the intellectual property they create is protected. Perhaps the most important intellectual property that a creative professional uses is his/her brand name. For example, a band name would function as a brand name for a musical group. Contrary to popular belief, brand names are protected as trademarks or service marks under U.S. trademark law, NOT as copyrights. (Caveat: Some design logos may qualify for both copyright and trademark protection.) Like copyrights, trademark registration is not required; however, registration confers certain benefits such as improved remedies in the event of trademark infringement.

Trademark registration in the United States* is available at the state and federal level, with federal registration being more desirable because it gives the trademark owner a nationwide zone of trademark protection rather than just statewide. At both levels, trademark applications require the applicant to specify the international class(es) of goods and/or services for which he/she is seeking to register the brand name, and to pay a separate filing fee for each class.   As a result, multiple trademark owners may claim the right to the same brand name/term, so long as each owner operates in a different industry.  There are currently 45 different international classes such as a class for “clothing, footwear, and headgear” (Class 25) and a class for “musical instruments” (Class 15). For a full list, you can click here.  As a practical matter, many people do not apply for registration in every class in which they are using the mark, but be aware that others might be able to obtain registrations in the same or confusingly similar marks in the additional classes and prevent the trademark owner from full enjoyment of his/her brand name.

*Note:  Trademark ownership is location-based, and therefore must be obtained on a country-by-country basis.  Unlike the U.S., some countries have a “first-to-file” system meaning there is essentially a race to the trademark office to file for superior rights to use a certain name.  Since registering a trademark at the U.S. Patent & Trademark Office only confers protection for use of the mark in the U.S., you should also consider registering the mark wherever your goods or services are sold; where counterfeiting is likely to be a problem; where your research and development facilities are located and/or parts for your products are manufactured; and where you might expand your business in the future.

Bear in mind that trademark registration is not guaranteed, and the application fee is a processing fee that is not refunded, even if ultimately no registration certificate issues. Two common reasons that a trademark application is rejected are (1) the mark (or a confusingly similar mark) is already in use and (2) the mark is “descriptive.” Accordingly, Amy strongly recommends that clients do the following, at a minimum:

(1) Conduct a comprehensive trademark search for prior uses, especially if you wish to secure trademark registrations in multiple classes. Best practice is to hire a trademark search firm such as Thomson to give you a detailed report of potential prior uses. Failure to do so could result in your trademark registration being rejected, or you could spend a lot of money developing a brand only to receive a cease-and-desist letter from someone who was already using the mark; and

(2) Take care to settle on a name that leaves something to the imagination. For example, it would be risky to name your Austin-based production company the “Austin Production Company” without strong evidence that the public identifies the name “Austin Production Company” with your company.

Also, if you successfully obtain a trademark registration, you must take care to maintain that registration. For example, you must continue to use your trademark in commerce. You must also file certain documents to demonstrate that you are continuing to use your trademark. Failure to maintain your registration in this manner can result in your registration expiring or being canceled!

For a more detailed explanation of the trademark process, please visit the United States Patent & Trademark Office (USPTO) website.

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