Elizabeth M. Sbardellati

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Trademarks & Copyrights: Frequently Asked Questions

July 22, 2020Article

Attorney Elizabeth M. Sbardellati recently presented "Trademarks & Copyrights: How to Protect Your IP Without Breaking the Bank" to a group of women startup owners as part of the Women Founders Network organization. A summary of the presentation presented in a FAQ format is provided below.

Trademarks

Can Standard Character Marks (e.g., word marks) that use symbols like # and @ be registered with the USPTO?

Both the # and @ symbol are included in the USPTO list of standard characters that can make up part of a standard character trademark. However, trademarks must serve as source identifiers. The use of # symbol before a word or phrase can act as a form of metadata or aggregation tool that groups together related content (e.g., #foodie would aggregate content tagged with that phrase that relates to food, restaurants, and/or going out to eat; #vacation would aggregate content related to vacations and/or traveling). The aggregation function of the # symbol is descriptive and thus directly contrary to the function of a trademark as an identifier of a single source. So, marks using the # symbol will only be allowed to register where there is a source identification function (e.g., where the # is used to connote a number sign, as opposed to a hashtag). The @ symbol does not serve a similar aggregation function. However, marks utilizing the @ symbol will only be allowed to register if the mark at issue functions as a source identifier.

Are there special considerations non-profits should consider when seeking trademark registration?

A trademark registration can be a powerful branding tool for a non-profit organization to distinguish its services from those of other businesses and non-profits. When seeking registration, a non-profit—like any other company, should carefully consider how it uses its trademark to determine the proper class for its registration and to craft an accurate description of its goods or services. Non-profits should also be mindful that trademarks must be enforced (whether registered or not). Failure to enforce exclusive rights in a trademark can result in the loss of those rights.

What are the consequences of shipping your product to a purchaser in a country where you don’t own a trademark registration?

Laws and regulations regarding trademark rights and trademark registration vary from country to country. Use of the ® symbol on products sold in a country where the seller does not actually own a registration can result in civil or criminal liability, including fines, injunctive relief or even imprisonment, in some countries. Even using a trademark in another country without the ® symbol could constitute trademark infringement if the trademark is confusingly similar to one owned by another party in that country. Trademark rights are limited geographically, so owning rights in one or more countries does not grant the owner rights to use the same trademark worldwide.

Can trademarks and/or trademark registrations be jointly owned?

Yes, more than one person or entity can share ownership of a trademark. However, because trademarks are source identifiers and are intended to identify a single source of goods or services, joint ownership of a trademark is often problematic. For example, if the business relationship breaks down or the owners decide to go their separate ways, what is each person’s right in the trademark? Accordingly, it is generally advisable to create an entity, subject to an operating or other ownership agreement, that will own, and control the disposition of, the intellectual property.

If one party starts using a trademark on multiple goods/services, but only registers its trademark in connection with some of those goods or services, can another party register the same trademark for goods and services not covered by the first party’s registration but on which the first party is using its trademark?

No. This would constitute trademark infringement. In the United States, trademark rights are established by using a trademark on goods or services and not by registration. So, a party that uses a trademark on goods or services before another party, has senior rights in the trademark regardless of whether it owns a registration.

Can a brand use geographic indications (e.g., “made in Malibu, CA”), when another company owns a trademark that incorporates the name of the location where the brand’s goods are made?

Yes, provided the geographic indication is being used to convey a fact about the product or service, and not as a brand name/source identifier.

Can a company sue another company that copies its idea and uses a similar trademark?

One company cannot sue another company merely for offering a similar service or providing a similar product. This is because competition in the marketplace generally benefits consumers.  However, it is considered unfair competition and/or infringement if one company offers similar services or goods using a trademark (or other protected IP right) of another company.

Can processes be trademarked?

No. A trademark is a word, phrase, symbol or design that identifies and distinguishes the goods or services of one party from those of others. Certain industrial processes may be protectible by patent. Likewise, certain written (or otherwise fixed) processes are protectible through copyright, although generally instructions and recipes are not.

Copyrights

If revisions are made to a work that has been registered with the copyright office, does the copyright owner need to re-apply for registration?

A copyright is created automatically upon the creation of the work. So, a copyright in the revised work exists as soon as the revisions are made. However, if the revisions are substantial, then the copyright registration for the original work may not be sufficient to cover the revised work, which could be considered a derivative work, and a new registration should be obtained.

Should artists register copyrights in their works?

This depends on several factors. A primary advantage of having a copyright registration is the right to sue infringers. If the art at issue is a likely target for infringers, then registering the copyright may be worthwhile. Art is more likely to be infringed if it has wide commercial appeal—i.e., an infringer can inexpensively reproduce it and sell a lot of copies to make a lot of money. Considerations in determining whether to register the copyright include: Does the art at issue have broad commercial appeal? Is the art recognizable? Is the art easy to copy/reproduce?

What are the fines for copyright infringement?

It is important to remember that a party can only sue for copyright infringement if it owns a copyright registration. In a copyright infringement lawsuit, the owner of a copyright registration may be entitled to either its actual damages caused by the infringement plus any additional profits obtained by the infringer that are attributable to his/her infringement or statutory damages. Statutory damages range from $750-$30,000 per infringement, depending on the gravity of the infringement and value to the infringer. Statutory damages can be reduced to as low as $200 per infringement where the infringement was entirely innocent or up to $150,000 for intentional infringement.

What types of designs are protectible by copyright?

The answer to this question depends on a number of factors. To be eligible for copyright protection, a work must possess a minimal degree of creativity. Accordingly, entirely functional design elements are unlikely to be considered eligible for copyright protection. For example, sketches of fashion designs are eligible for protection as are the designs that appear on textiles, but clothing patterns are not.

Can copyrights and/or copyright registrations be jointly owned?

Yes. Unlike trademark registrations, joint ownership of a copyright registration is not particularly problematic and is common. In fact, joint ownership can occur automatically if two or more authors jointly create a single work. Copyright protects the right of the owner to reproduce, display and/or distribute the protected work. When a copyright is owned by more than one owner, each co-owner has the right to commercially exploit the copyright. This means that each co-owner can make copies, display or otherwise distribute the work independently of other co-owners, unless the owners have entered into an agreement limiting those rights.

Can a company use images taken from the internet on its website?

Usually, no. Just because an image is on the internet, does not give a person or company the right to copy that image and post it on their own website. Using images without a license can constitute copyright infringement. If you are using an image without a license and you get a takedown notice from the copyright owner and/or its agent, you should promptly remove the image.