How To Trademark a Business Name

Can programming language names be trademarks? by opensourceway from Flickr

Can programming language names be trademarks? by opensourceway from Flickr

Last week a friend asked me if a business could trademark their name. Anyone who’s spent much time with me knows that the answer to every legal question is “It depends.” In this case it depends on whether your business name is trademarkable and if anyone else had claimed the same or a similar name for your category of goods or services.

When you start a business, check the U.S. Patent and Trademark Office (USPTO) database to see if anyone has registered the name you want to use (or a similar one) for selling the same goods and services as you. If someone’s already using the name you want, you will likely be infringing on their trademark rights if you use the name on your products. They could force you to change your name and rebrand if you use the name that someone’s already registered. If you were using the business name on your products and someone registers the name before you, you’ll be in the Burger King situation where you can keep using your name, but only in your established market.

Once you establish that your desired name hasn’t been registered by someone else, you have to look at whether the name you want is trademarkable. Not every business or product name can be a registered trademark. Here are the five types of trademarks.

1. Fanciful Marks: Fanciful marks are words that didn’t exist before you stuck it on your products. Examples include Exxon and Kodak. These marks can be registered with the USPTO main registry.

2. Arbitrary Marks: Arbitrary marks are words in real life, but they are stuck on a product that has no connection to the word. For example, the mark “Apple” for computers, cell phones, and digital music players is an arbitrary mark. The fruit has nothing to do with digital machines and gadgets. These marks can be registered with the USPTO main registry.

3. Suggestive Marks: Suggestive marks are marks where if you think about it, you can make a connection between the mark and the product. “Playboy” as a mark for a men’s magazine is a suggestive mark. These marks can be registered with the USPTO main registry. It’s sometimes hard to discern the difference between suggestive and descriptive marks.

4. Descriptive Marks: Descriptive marks merely describe the product. This includes businesses where the owner names the business after themselves. These marks can be registered on the USPTO main registry after they’ve established “acquired distinctiveness,” which usually means you’ve been using the mark for five years.

5. Generic Marks: Generic marks are the name of the products themselves. It would be if you had an apple orchard and wanted to sell your apples using the mark “Apples.” If the USPTO let you register that mark, no other apple farmers could call their apples “apples” without infringing on your trademark rights. Generic marks can never be registered with the USPTO.

This video may help. You can watch it below or see it here.

If you want to know if your business name can be your trademark and the risks and rewards surrounding registering your mark, contact a trademark attorney in your community.

You can connect with me on TwitterGoogle+FacebookYouTubeLinkedIn, or you can email me.
You can also subscribe to the Carter Law Firm monthly newsletter.
Please visit my homepage for more information about Carter Law Firm.

Choose Your Strategy to Protect Your Work Before Posting it on the Internet

My artwork for Dans office by Romers from Flickr

My artwork for Dans office by Romers from Flickr

A friend recently asked me about a common situation her clients face. They are artists who, before the internet, could only show their work to a large audience at art festivals. She said these artists hesitate to market their work online because they’re afraid that it could be stolen.

Could their work be illegally copied if they show it on the internet? Yes. I worked with an artist last year who had their entire catalog illegally copied.

Should they us the internet to market their work despite this risk? Probably. If you’re an artist you have to weigh the risk of having your work illegally copied against the benefit of reaching a larger audience.

My unsolicited advice to artists is to decide how you want to respond if your work is stolen before you put your work out there and plan accordingly.

  • If you want to sue the people who illegally copy your work, you have to register your copyrights with the U.S. Copyright Office.
  • If you want to license your work, meaning people can pay you for the right to reproduce your work on their sites, you need to have licensing terms and fees. This way people can legally purchase the rights to use your work and you can send a bill to the people who illegally copy your work. This recently happened to a friend of mine.
  •  If all you want to do is force them to remove the image when you detect someone’s stolen your work, you need to understand the Digital Millennium Copyright Act or know an attorney who does who can send the proper takedown notice on your behalf.

When you put your work out there, you should be diligent about watching the internet for potential infringement. Often times people think they can use your work if they provide an attribution and a link to the original. What they’ve really done is made it easy for you to determine who is using your work without your permission.

My two cents on this issue is you shouldn’t let your fears about copyright infringement prevent you from using the internet to market your work if you’re an artist, but you should have a strategy in place in advance for dealing with it when it occurs.

For more information on this and related topics, please check out my book The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed, available on Amazon.

You can connect with me via TwitterGoogle+Facebook, YouTube, and LinkedIn, or you can email me.
Please visit my homepage for more information about Carter Law Firm.

Options When Someone Violates Your Creative Commons License

Portion of C.C. Chapman’s Twitter feed – September 10, 2012

I saw the following tweet the other day by author C.C. Chapman: “Since my photos are licensed under “non-commercial” is this a legal use of my Chevy Volt photo by Yahoo?” The question was followed by a link to an article on Yahoo Auto about GM’s report regarding whether Chevy Volts are being sold at a loss. The photo accompanying the article is C.C. Chapman’s photo of a Chevy Volt that he published on Flickr with a Creative Commons license.

This license requires anyone who uses the image to give C.C. Chapman the attribution, only use it for non-commercial use, and not alter the photo in any way. If the image appeared on Chevrolet’s blog, there would be a strong argument that Chevy uses its blog as a marketing tactic to get people to buy its vehicles; therefore every image on the blog is being used for a commercial use. In that case, the use of the image would have violated the license and C.C. Chapman’s copyright.

However, Yahoo published the article. Yahoo isn’t trying to sell cars. It makes money by selling ads and it may charge advertisers based on the number of hits a page gets. C.C. Chapman could make an argument that Yahoo’s use of his photo had a commercial goal; but Yahoo could fire back that it was reporting the news so its use of C.C. Chapman’s photo was protected by fair use. Yahoo could show that it has a history of news reporting and that its articles are accepted as news, not a marketing ploy.

But let’s say this photo appeared on a commercial website in violation of the Creative Commons license. That’s copyright infringement. What could C.C. Chapman do about it?

  1. Do nothing and be happy about the exposure.
  2. Get the photo removed by sending a DMCA takedown notice.
  3. Send the company a cease and desist letter.
  4. Send a bill with a licensing agreement and a letter that says the publisher has committed himself to paying a licensing fee since he already used the photo.
  5. Sue for copyright infringement.

A lot of people would be happy about the exposure and may opt to do nothing. The downside of doing this is someone else could use your work and make a valid argument that your inaction set a precedent that others could use their work for commercial purposes. You may want to send a letter that offers to license the photo in exchange for the exposure and states if the company doesn’t license it then they have to remove it. That way, you will still get your exposure but you still exert your copyright rights in your work.

If you have questions about how to protect your intellectual property rights, contact an intellectual property attorney (like me) in your community.

Feel free to connect with me via TwitterGoogle+Facebook, and LinkedIn, or you can email me.
Please visit my homepage for more information about Carter Law Firm.

Register Your Copyrights

Poor Frog & Macrograpy by Hamed Saber Ruth Carter

Poor Frog & Macrograpy by Hamed Saber

I frequently get questions from people claiming that someone copied a photograph that they own and republished it without their permission. They want to know what their options are for financial recourse. I start by asking them two questions.

  1. When did you take the photograph?
  2. Did you register your copyright?

Most of the time the photograph in question was taken years ago and the photographer didn’t register their copyright.  The majority of artists know that they get exclusive copyright rights the second they create their work in some tangible form, but most of them don’t know that they have to register their work with the U.S. Copyright Office to maximize their protection and options for recourse when someone steals or illegally uses their work.

By creating an original literary, visual, or audiovisual work, you get the exclusive rights to copy, distribute, display, perform, and make derivative works of the original work. When and whether you register your copyright determines how much you might collect if someone violates your rights.

The Copyright Act says you must register your work within 3 months of publication or 1 month of learning of the infringement (whichever happens first!) to be eligible for statutory damages and attorneys’ fees. Statutory damages is money the court can require the infringer to pay you regardless of how much money you lost because of the infringement. If the court decides that the infringer knowingly and willfully stole your work, they can order the infringer to pay you up to $150,000 per violation plus the cost of your attorney!

If you don’t register your copyright within 3 months of publication or 1 month of learning of the infringement, you can only collect your actual damages. This is the amount of money you lost because of the infringement and/or what the infringer earned by copying your work. There are times when your actual damages is $0 because you didn’t lose any money and the infringer didn’t make any money due to the infringement. If you had registered your work within the timeframe stated in the Copyright Act, you would have been eligible for statutory damages and attorneys’ fees regardless of our actual damages.

It’s frustrating when I have to tell clients and friends that their options for financial compensation are few or non-existent, because it’s a preventable problem. You can register a copyright electronically online for as little as $35. You can register multiple photographs with one registration application and fee. If you are a professional photographer, you can register each photo shoot with one copyright. Whenever you finish the final product from a shoot, which I suspect is within 3 months of the shoot, take a few minutes to register your work with the U.S. Copyright Office. You can even pass the cost of registration onto your clients by raising your fees $35.

Registering a copyright is fast and easy, and you can do it yourself if you don’t want to a pay a lawyer to do it for you. If doing it by yourself the first time scares you, hire a lawyer to walk you through the process. It doesn’t take much time or money to maximize your protection , so do it.

Feel free to connect with me via TwitterGoogle+Facebook, and LinkedIn.
Please visit my homepage for more information about Carter Law Firm.