Monday, August 10, 2009

So You Want to Trademark Your Logo? How do you find out if it’s taken?

The other day, I was asked how to search to see whether a logo could be trademarked in the US Patent & Trademark Office. I think that in some ways, it is one of the easier areas to receive a trademark, as most designs have a uniqueness to them. On the other hand, the logistics of the trademark filing can be complicated in this area, due to the nature of having to categorize and describe the image or logo in a very particular way for registration that includes verbal descriptions and codes designated by the USPTO.

First, some general thoughts about trademarks. Trademarks are often among the most important and valuable assets of a business. A distinctive trademark allows a business to build public goodwill and brand reputation in the goods or services it sells. A trademark or service mark is any word, name, design, symbol or device (or any combination thereof) that identifies and distinguishes the source of the goods or services (respectively) of one business from that of others. There are a number of legal hurdles to receiving a trademark, all of which must be met with respect to a logo or design – they include that the trademark must actually be used in commerce with respect to goods or services, and the trademark is distinctive, not descriptive, amongst other requirements. But with respect to designs, the focus is on uniqueness of the design vis a vis those of other businesses providing similar goods or services.

Design marks and logos can be powerful intuitive identifiers of businesses. Design and logo trademarks actually have their roots in medieval times where business identified themselves by a sign – such as a picture of a shoe for a cobbler or a picture of a fish for a fishmonger. They were also important indicators of whether a business was part of a protected guild. In the 14th and 15th centuries, local guilds often developed reputations for the quality of their products, and when they did, the names of the towns or regions in which those guilds operated became repositories of goodwill. To maintain that goodwill, guilds needed to be able to restrict membership and identify and punish members who produced defective products. Guilds therefore required their members to affix distinguishing marks to their products so the guilds could police their ranks effectively. While these symbols emerged to benefit the guilds, the modern design or logo trademark is for the benefit of the logo trademark owner, and is a direct descendent.

Today, trademark designs often represent the success, status and source of goods in an impactful, quick way: THE SHELL design for gasoline, Nike Swoosh design, Target's dartboard logo.

To how can you tell if your logo or design is unique enough to register? Things get tricky. Humans have the ability to adeptly and quickly identify visual patterns, recognize them and categorize them. Unfortunately, computers are not so good at this. So, searching for an image or pattern over the internet or in databases is virtually impossible, given today's technology, unless the images are coded with numbers or words. You can search the USPTO website for registered design trademarks and service marks based upon the design categories, or design codes, that are assigned to the image – but you have to figure out the USPTO coding system, and carefully search for elements in your proposed design. There may be a number of design codes associated with a particular design, as the components often need to be identified separately. Here are a couple of examples:

First, a design mark can be one that is composed merely of standard type characters, type print block or stylized letters, but these do not need to be coded, because they are not considered to be designs. The stylized lettering may be trademarked in conjunction with the trademarking of the word or words actually expressed. To find these types of logos, you only need to search on the word itself:

Next, a design mark can be composed of one design component or several. Depending upon whether the component is considered 'distinctive' the mark may be coded as a unitary design or have multiple codes.

The building is coded as 07.03.06 (commercial establishments). The roof and the windows are not coded separately because they are not distinctive components; they merely form part of the entire building design.

Here, the design mark is coded for both the design as a whole, and the design component: 03.07.08 (heads of deer) and 03.07.07 (deer)

But these searches of the USPTO only get you so far. You still may not be entitled to receive a registration of your logo or design, if another business has used a similar trademark in commerce, and received common law rights to exclusive use of the mark for their goods or services. To search for these common law types of trademarks established purely through consistent use of the mark over time, other searches may need to be performed, including company name databases, trade publications and the Internet. Of course searching for images on the Internet still remains challenging.

Images courtesy of the US Patent & Trademark Office

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