Do you understand the difference between a copyright and trademark? Do you know how to make sure your logo designs don’t infringe on another company’s trademark? Attorney Matt Johnston and I talk all about trademarking. Find out how to make sure what you design doesn’t infringe on someone else’s trademark, what your client should consider before trademarking, the trademark process and more. (Most designers don’t bring this up to their clients.) You’ll get great tips for how trademarking can add value to your work and instill confidence in your client.
Matt Johnston is an attorney in Frederick, Maryland, who works with creative professionals and small businesses on business formation, employment law, contracts, copyright and trademark law. Matt has been in private practice since 2007, and in solo practice since 2012. He serves on the AIGA Blue Ridge board and is a frequent speaker on a variety of topics related to small businesses. You can find him online at MattTheLawyer.com and Johnston-Legal.com.
Colleen Gratzer: Welcome back to the podcast, Matt.
Matt Johnston: It’s great to be back.
Colleen: You and I have talked a little bit about trademarks, so I thought it would be helpful to talk about that today because one of the things you said is that if designers knew the basic information about trademarks, that would inform the branding work that designers do for their clients.
Matt: Absolutely. The basics of trademark protection… If you’re working with a client who’s concerned about their brand—and they would be if they’re coming to you for branding help—creating a brand and creating a trademark or a series of trademarks is something that is valuable. It’s protectable and it actually has business value, but it also could even have cash value.
If designers are working with clients, understanding where to go to get basic information or where to go to research a particular design would be particularly helpful.
Colleen: Many designers are confused about copyrights and trademarks. A lot of designers might know that a design is protected by default when they create a design. So can you speak a little bit about the difference between copyrights and trademarks?
Matt: Sure. Okay. So copyrights and trademarks are part of the broad category of intellectual property. Also included in there are things like trade secrets and patents. But the simplest way to think about the difference between a copyright and a trademark is the nature of the idea.
A copyright is the intellectual property protection for the expression of an idea. So if you think about it this way, you go out and you think up in your mind something hugely creative: a brand new logo, something nobody’s ever done. The idea is nothing. It’s something that’s floating around in your head. It informs your work, but there’s no protection for that idea. Once you draw it—once you put it into paper or a sketchpad or sketchbook or some electronic version of that—that’s when it becomes an expression, and copyright protects that expression of the idea.
So a trademark is best thought of as a “mental shortcut.” A trademark serves as the identifier. In law, it’s called a “source identifier,” so it denotes to the client or to the public or to anybody the nature of the goods and who those goods are from.
So if you think about it, if I put a checkmark on a piece of paper, it’s just a checkmark, but if I start to round it out so that it looks like the Nike swoosh, now we’re talking about an image that creates a shortcut in the brain about a particular company or about a particular product. That shortcut is what a trademark is. It gives you an idea of the “who” is providing that goods or service, the relative quality and things like that.
That’s what a trademark does and it’s always tied to a product or a service, whereas the copyright can exist independently of everything. It’s just, once you put it into some sort of—the legal term is “fixed medium of expression”—once you do that, that’s when the copyrights take place.
Hopefully that’s a fairly easy way of distinguishing it.
Colleen: I love the term “mental shortcut.” Did you come up with that?
Matt: I wish I had, but it is not mine. I shamelessly stole it from another trademark attorney.
Colleen: So what kinds of things should a designer—or their client—consider when it comes to trademarking?
Matt: The most common things that get trademarked are things like a logo, or product packaging can often be trademarked. So if you put together a logo for a client, that is an item that can be registered as a trademark, as a source identifier for the company itself.
Product names—so going back to our Nike example—because I’ve been listening to a podcast that’s talking about the business war between Nike and Adidas… But going back to Nike, they created the Air Jordan. That’s a product for a sneaker that was based around Michael Jordan. That Air Jordan was a very specific product and when you said “Air Jordan,” you knew what you were talking about and if you’re a sneaker head, the sneaker heads knew what you were talking about, and the general public came to know about.
So product names, brand logos… You can trademark a tagline. McDonald’s “I’m loving it” is a tagline that can be used and because it’s a mental shortcut for a particular product or service, that can serve as a trademark. So taglines can be done that way.
You can even trademark things like a color. For example, I don’t know if you’ve ever bought anything from Tiffany the jewelers, but that robin’s egg blue is a registered trademark for Tiffany and Company as it relates to jewelry.
Sounds, particular sounds like… Do you ever watch Law and Order, the TV show?
Matt: That kuh-chunk sound at the beginning has been trademarked, so you can do that. I think ESPN did it for something that they had on Sports Center.
So you can register as trademarks, images, words, sounds, colors, even smells.
Colleen: Wow, OK. Now, what’s the difference between just like a trademark “TM” symbol versus the “R” in a circle, the registered trademark?
Matt: OK. That’s a good question. So the “R” in a circle means that you are registered with the [U.S.] Patent and Trademark Office. You have an active registration. So with the registration comes a series of legal rights, including the ability to lock people out of using something similar. The team is what people can assert as a common law trademark.
Without getting too far into the weeds here, trademark actually exists as a common law matter that courts can enforce, that’s based on traditional law. We used to refer to them as “maker’s marks.” So way back in the day, somebody—a particular craftsman, like a carpenter or a blacksmith or something like that—could put a little mark on their work that would identify them as the creator.
If you think about Paul Revere as a silversmith, he probably had a little mark that he would usually in an out-of-the-way place on his products that would identify Paul Revere as the creator of that piece. We refer to them as “maker’s marks.” Over time, they became known as “trademarks.” Those trademarks, again, serve as the identifier.
So that was all in the common law. If somebody was copying that, you could go to a court and say, “Hey, they can’t copy that. That’s mine. They’re trying to trade off of my good name.” So the common law sort of developed. I tried not to get too legalese. So if I get too legalese, let me know.
Colleen: Well, I was asking you in particular about trademark versus registered trademark because I do have a client who has a registered trademark symbol next to their tagline, so they were aware of that and they registered it.
Matt: Before you register it, you can assert a trademark saying, “This is mine. This is how we are identifying ourselves.” So even before you begin the registration process with the patent and trademark office, you can begin to assert it by using the little “TM” and it can be a superscript… usually the R in the circle is a superscript. Same sort of thing, just that trademark lacks the federal law protection and the rights that come with that federal law protection.
Colleen: What does a designer or their client need to consider before trademarking? Like what kind of costs are we talking about? How long does it take? What things do they need to think about?
Matt: Sure. The length of the process is pretty fixed—with some caveats. But assuming nothing goes wrong with the registration process, about 6 to 6.5 months from start to finish. Once you submit the application, there’s a series of internal checks at the trademark office that they go through. They verify things. If there’s art that is part of it—a logo design or something like that—they go through a check and they assign some codes to it that becomes searchable later.
At about three months or so, somebody at the trademark office, called an “examining attorney,” will look at it and they will check it against the current trademark registrations to see if there’s anything that is “confusingly similar”—that’s an important concept—and make sure certain things are clear, like your description of goods… Making sure that there’s an accurate description to that, that it’s not too broad, not too narrow, not too vague or anything like that.
If it passes all of those checks, it goes to a system called a “publication for opposition.” The best way to think about this is if the government puts out regulations, they have to notify the public that these regulations are going to go into effect. Publication for opposition in the trademark is the same kind of idea. It’s putting out there for public consumption that says this person has applied to register this trademark and if you are going to be injured by that or you think you’re going to be injured by that, you have to speak now or forever hold your peace—which isn’t entirely true. It’s not “forever hold your peace,” but if nobody speaks up within 30 days, then they do a couple more final checks, a little bit of processing, and then you get your registration.
You get a nice little fancy little certificate that you can frame. A lot of people do frame it. You put it on your wall showing “I own the trademark.”
I think you asked about cost, right?
Matt: It depends on the attorney. So leaving the attorney fees aside, within the trademark office, the way trademarks are classified, they are classified as either goods or services. There are 35 classes of goods and nine classes of services. It’s how many classes your product fits into that will determine what your registration fee is. These are called “international classes” and are agreed to by treaty amongst pretty much all the countries in the world.
If your product fits into or your service fits into two categories, you pay two fees. Those fees range anywhere from $225 up to about $275 in most cases per international class. Once you pay that money, you never see it again. So there’s no refunds. It’s the government after all. It’s not like they like to refund money.
Colleen: What are some benefits that you get from trademarking? Why would a designer in particular want to trademark their logo, for instance? Or why should a client? What benefits will they actually get?
Like in my case with my business, my last name is… There’s not a lot of Gratzers running around, and it’s in my business name. I never thought to trademark it because I thought, well, nobody’s just going to come up with that same thing and it’s my name and it’s rare. But what kind of situations would benefit a designer or a client to go the trademarking route?
Matt: Sure. All businesses invest a certain amount of time, effort, money, networking, what have you, to develop a brand to create something that is recognizable.
Matt: There’s quite a few… It turns out there’s at least two other Matthew Johnstons running around Frederick County, I have learned. So my name is not nearly as unique as yours. If I decide to change the name of my law firm to something else, I would need to think about the brand that I’m putting behind it and I may think about protecting that brand by denying other people the right to use that information.
I can’t deny some other guy named Matt Johnston running around who decides to set up a law firm, assuming he’s a lawyer. I can’t really do anything for that. But if I have a different name, I can say to everybody else, both here in Maryland and across the country, you cannot use that name as it relates to legal services.
Colleen: Like another Matt Johnston can’t use “Matt the Lawyer” if they wanted to use that as a business name, and that was your business name?
Matt: Yeah, assuming I go about the effort of registering the trademark for Matt the Lawyer. So because of that investment, the benefit of having a trademark registration is you deny people the right to use anything that’s confusingly similar.
So it wouldn’t even have to be “Matt the Lawyer.” It could be “Matt the Attorney.” It would also be able to be denied because it’s too close. People associate “attorney” and “lawyer.”
But if somebody wanted to do, say, “Matt the Mechanic,” I wouldn’t have any ability to say anything because our businesses and the services that we provide would be radically different. Nobody looking for, say, a truck mechanic is going to go, “Oh, Matt the Lawyer… Yeah. He sounds like a really good truck mechanic.” Which I’m not, by the way.
But the trademarks are tied to the goods and services. So if you’re trying to establish a brand, whether it’s for yourself as a designer or for a client, having something that stands out from your competitors is important and once you arrive at that and you’ve invested the money and you’ve invested the time in creating that brand, you should protect it. Having a registered trademark is a way of protecting it because it denies people the ability to do anything that’s remotely like yours.
Colleen: Now, what if you have a situation where, let’s say you’re designing a logo and the name of the business that you’re designing for is totally different from this other business, and let’s say they’re even in different industries. That other logo is trademarked and there is some icon, some kind of artwork that’s used in that logo design.
Does that mean as a logo designer you cannot use that or something that’s similar to it? Like how does that work when it’s just like a design element within the logo?
Matt: An element within the logo you mean?
Colleen: Yeah, let’s say it has a different name but it has a similar icon. How careful does a logo designer need to be? I mean, you don’t want to ever intentionally create anything in the likeness of someone else’s logo. But if somebody’s got a trademarked logo and then later you find out, “Oh, well, this logo is a totally different company, totally different industry, but the icons used in it are similar.” Is is that a problem?
Matt: The traditional lawyer answer is, “It all depends.” But functionally, probably not. Again, a trademark is tied to the goods and services. So if you have something in totally different industries…
Let’s say somebody is selling goods. Maybe they’re selling electronics, like electronic GPS systems for your car, and they decide to use a logo that involves a kind of a combination of a compass and a satellite, for example, and that’s what they use. And you have another business that is, say, in the apparel business, and you won’t use a satellite, so that it’s sort of the notion of space, age, materials.
The fact that somebody’s looking for a GPS system or electronic compass, and somebody’s looking for apparel like coats… They are different target audiences and the customers are going to be different. The channels of trade, where are you going to find those products are likely going to be different. As a result, those trademarks are probably not going to cross paths very often.
So the more distinctive you are from your competitors in your field, the better off you are. The fact that it may cross over into another field is not necessarily going to result in a denial of the trademark application.
You have to think about what the market is, and there’s a whole series of factors that the trademark office looks at. But the largest one is: do they look the same and do they travel in the same channels and do they have the same kind of customers?
Probably the best way of thinking about it is the more distinct you are in your field, the fact that you may cross over is not going to be a problem.
Think about it this way. Apple’s one of the most famous computer brands around. You’re never going to confuse an Apple iPod with an actual Macintosh apple.
Matt: Macintosh Apples, or Washington Apples, is a registered trademark, but there’s no confusion with Apple Computer because they’re entirely different markets.
Somebody looking for apples to eat or apples to put in their holiday pie is not going to go, “Oh, type in ‘apple’ and they come up with, you know, ‘iPod’ or ‘iPad’ or anything like that. They’re not going to go, “Hmm, those are similar. I want to put that in my pie.” It doesn’t work that way.
So the trademark is tied to the goods and services that are being offered. There’s only so many words in the English dictionary anyway.
Colleen: Right. And wasn’t it Paris Hilton who tried to trademark “That’s hot”?
Matt: A lot of that happens. These taglines and stuff like that or little sayings may try to get registered as a trademark. Sometimes it happens if it’s distinct enough and if it’s unique enough and if it’s policed enough so that other people aren’t using it. But everybody and their grandmother was saying “That’s hot,” and I kinda wanted to throat punch some of my friends when they kept saying to me.
Colleen: You said when you trademark something, one of the rights that you have is that it shuts out other companies from using it. Are there any other rights that you get? What happens if, you trademark a logo and then find something similar in the same industry? What happens then? What rights does the trademark owner have?
Matt: One primary legal right is that you have the right to sue in federal court and there are statutory damages that can result. So the statute defines certain things that can happen, infringement costs, you can obtain an order from the court that says that your competitor who’s using a confusingly similar mark has to cease and desist using it.
You may even be able to get destruction of inventory, cash damages, certainly, if you can prove loss of business. So those damages do apply. You can obtain those.
Some other legal rights are, interestingly enough, if you have products that you are selling, you could register your trademark and your products with the U.S. Customs and Border Patrol. They will help police products coming into the country. If they identify some that are in violation of a trademark—of your trademark—they can deny entry of those products into the country. So if you are a product-based business and there are cheap knock-off imports coming into town, you can apply to have the Customs and Border Patrol monitor that.
Of course, you have the ability to maintain that trademark for as long as you were using the goods and services in commerce. So unlike other forms of intellectual property, as long as a trademark is being used in commerce, it never dies.
Colleen: And you have to continue paying for that?
Matt: You do. You have to renew it every five years, and the renewal fee is—I want to say—$350, somewhere in that zone. You pay the renewal fee, you show them that you’re still using it in commerce and that’s all you need. It’s good for every five to 10 years depending upon some technical factors. You renew it. As long as you keep using it in commerce, it never goes away.
But things like a copyright expires, a patent expires after a fixed period of time. But a trademark can last forever as long as everybody’s using it.
Colleen: When a designer goes to design a logo should they add “TM” to the logo just because?
Matt: I would suggest they consult with their client about what the client wants. You know, even a small “TM”… If there’s a certain look and feel that people are seeking, they may not want that. But I think it’s certainly a conversation that they should have with their client because it provides that client probably two things:
- Number one, the designer’s saying, “This is part of your brand and you want to protect your brand. You know, we’ve developed this for you. You’re going to be using this. Please, you should protect it.”
- The other thing that it says is, is it’s this kind of silent vote of confidence that the designer has about their work: “We’ve put this together, we’ve done our research. We believe this distinguishes you from the rest of your competitors in your marketplace, and we’re so confident in that, we recommend you trademark it.” So it’s this demonstration of both faith confidence, but also, hearing it, “I’m your designer, I’m working with you. I’m trying to help you protect this brand that we have worked together to create.”
So it’s certainly worth a conversation.
Colleen: I like what you were saying about this as a vote of confidence in the work.
Matt: Well, yeah, I mean designers take pride in being creative and you should. If you’ve done your homework and you’ve done your research and you’ve worked with the client, then…
We all want to be able to stand behind our work. You’re saying to a client, “I’m standing behind my work and I think that you can do this and it’s something for you, the client, to consider.”
Colleen: Now if the client goes to trademark your logo design and they don’t get it approved because there was something similar, then I guess you just have to modify it.
Matt: Quite possibly. But if I were the client and I found that out, I would be like, “Well, did you really do your research?”
I’ve had creative clients come to me and have that problem and sometimes it’s a function of a crowded marketplace. Sometimes it’s a function of sort of the trends in that particular industry when it comes to what the industry is doing.
There is a bit of an art to trademark examination by the trademark office. Some trademark attorneys are a little bit harsher with their comparisons across product lines or across product categories and international classes.
Others are not so much, and it’s a function of interpretation to a certain extent. They try to take that out because through processes and things like that, but there’s still a little bit of subjective judging involved. That’s why there’s an appeal process and all this other stuff. But it’s still a little subjective.
Colleen: Does location ever have anything to do with it?
Matt: In theory, no. It’s location independent. Teeny tiny company, you know, Gratzer Graphics in Maryland can deny Gratzer Graphics in Hawaii. However, let’s assume you discover somebody who’s got a similar business name and there’s really not going to be a whole lot of overlap or interaction. You can file what is referred to as a “concurrent proceeding,” which means that the two parties are going to agree to coexist. They’re not going to deny each other this, but their trademark will only be exclusive in a particular geographic area.
If they’re on relatively even playing fields, they have generally the same size and relevance and their market is narrow enough, then it can possibly work. The trademark office is perfectly fine with that. The two parties just have to go to the trademark office together to make that happen.
I’m not sure how many concurrent proceedings go on nowadays because the world has gotten so small. For example, I could just as easily have a design client based in Seattle as I could having one based in Frederick or Washington, DC. Because technology allows us to be so much closer, at least in terms of the interwebs and things like that, I think there’s less and less of that thought of coexisting.
I had a client with a very similar business name to another client on the West Coast. And my client was second in priority. They were second in line. They were using it after the first guy was in. The first guy insisted on he’s going to own the whole trademark and he was ready to go to the mat to do it. I’m not sure how much overlap there customers had, but they were in similar businesses.
Colleen: I can just see a lot of clients saying like, “Oh, well, we’re small and we don’t need to be concerned about doing any of this.” And so that’s why I was wondering.
Matt: It is something to be thinking about if you’re looking to grow and, as you know, like I said, as a small, as the world is. Are your customers really just in a 50-mile radius? That would depend heavily upon your business. But if they’re not—and particularly for service providers—the world literally is your oyster and you can obtain clients from anywhere.
Sometimes businesses can coexist and they can have a similar trademark if they are comfortable with that idea and comfortable with the idea that there may be a risk that they lose out to that other person. That can be a big pill to swallow.
Colleen: Yeah. So when do you think that somebody needs to retain the services of a lawyer for the trademarking as opposed to trying to do it themselves?
Matt: You can file a trademark application on your own through the trademark office. They actually have pretty good… It’s not the best and most intuitive system, but they have a lot of tutorials that will help people get through the registration process.
Now they can’t advise you on whether or not it’s going to be successful. They can’t advise you on the legalities of things, but they can say, this is what you need in order to file the application.
I knew a lot of people have gone out there and uses services like Legal Zoom and other similar services. You can do that, and I’m not saying that you can’t. But during the examination process, there is often communication with the trademark examining attorney. One of the most common things that comes up is the trademark examining attorney finds something that might be confusingly similar—in that examining attorney’s opinion. Then you get an opportunity to argue to that attorney saying, “No, no, no, no, no, you’re wrong.” Or, “Did you consider this?” That is particularly where an attorney is useful and where an organization like Legal Zoom, because they’re not a law firm, they can’t offer that advice,
So it’s not the submission of the application. There’s probably two times when having an attorney is useful. One is in the pre-application process. An attorney can examine your trademark. There are all kinds of trademark clearance search services out there that will search the databases and tell you if there’s anything that’s close. An attorney can take that information and make an assessment. Oftentimes I’ve told clients, “Well, you could do it, but your probability of getting registered is lower because of x, y and z,” because it looks too similar to this thing in this business area.
Or it’s too generic a phrase. You can’t use, for example, “bread” to describe bread. The trademark office is never going to allow that. So if somebody come to me and says, “I want to use the phrase ‘graphic design company’ as my trademark,” I would tell them it’s never going to fly. Your trademark is what you are and that’s not how trademarks work.
Colleen: So you could potentially go there with this idea: I want to trademark this name called “Graphic Design Company,” you’re going to pay all these fees and then they’re gonna turn around and say, “Nope, sorry.”
Matt: Right, you’re not going to get your money back. Because graphic design often spills over into a couple of international classes, depending upon the nature of the work that the design company is doing, you might be putting $225 to $625, $675, into this process that you’re not going to get back no matter what happens. Having consulted an attorney on the front end before you spent that money is probably not a bad idea.
The other time when getting an attorney is going to be helpful is if the trademark office comes back with any sorts of questions or they preliminarily deny your registration because now you have to make an argument and sometimes it’s a simple argument. You say, “No. I don’t think you considered this, madame trademark attorney. Please examine this. Please take a look at this. Something similar has been trademarked, has been registered before, and we’re very different than that.” Or “I don’t think you considered this aspect of our application.”
Sometimes trademark attorneys go, “Okay, yeah, I see that,” and then the application moves forward. Sometimes they say, “Okay, I understand what you’re saying, but still no,” Now the client, the applicant, has to make a decision: do I want to appeal that decision, which is your right, or do I just want to drop it? Having an attorney at that point to make that assessment is often helpful.
One of the things that a designer can do for their clients… The trademark office has a database of all of the trademarks that have been registered. It would be worthwhile for a designer to at least understand the basics of how that works. It’s pretty simple, but if you’re looking at art, there’re design codes that you have to get comfortable with so that you can go in and take a look at that.
So if you go to USPTO.gov and select the Trademark section—there’s a patent and trademark section—and select the Trademark section, and you’re looking for TESS, and that is the database. You can query the database for… Most people query words, but you can do an advanced search and query the design codes.
The design codes are also available publicly in one of the manuals. It’s the Trademark Examiner’s manual. The design codes are usually a multiple of two- or three-digit codes that cover everything from shapes to coats of arms to animals… Pretty much anything that you can think of that you do in a design or drawing, they’ve got codes for, and you can search that.
It may even be helpful in terms of inspiration. You be able to look at it and go, okay, here are these 10 logos that have been used in this field with these kinds of goods. I want to be there. It gives you the ability to look beyond.
Colleen: That’s a great idea!
Matt: So it just takes some time getting used to how TESS works. There are also a whole series of companies out there that will do what are called “trademark clearance searches.” So, let’s say you’ve got a client who’s spending a small fortune on rebranding and you’ve got a couple of ideas. In addition to the Google search that you can do, the reverse search that you can do, you can also have a trademark clearance search company run a search.
Colleen: I was aware of that, but isn’t that pretty expensive?
Matt: It depends on the company. It depends on what you’re looking for. Images tend to be more expensive and it also depends on what you’re looking for. So if you’re looking just in the United States and maybe Canada, it’s not hugely expensive if you’re looking worldwide, yeah, it can get very expensive.
But if you’re spending that kind of money on a design, is a $500 trademark clearance search worth it? Maybe. It’s one of the things that goes into the calculus.
Colleen: Great point. Wow. This has been really helpful.
Matt: Yeah. Sometimes when you talk to a lawyer, it’s like drinking from a fire hose. I get that.
Colleen: Well, thanks for being on the podcast again, Matt. I really appreciate it.
Matt: Any time.