Reader posts the following to Part I to which this post will respond:
Great insights on the distinctions between copyright and trademark! [1] It’s fascinating how a creation can transition from being solely owned by the creator to also being used as a brand. Understanding this bane of existence for logo developers is crucial when creating unique and trademarkable designs. How do you advise clients in navigating the challenge of creating a logo that can also be used as a trademark? I’m intrigued by your expertise in intellectual property law and would love to connect with you to learn more about this topic.
Thank you for the question and kind words. Kudos. You are top of your game in logo development, in the sense that you are engaged and curious. Superb.
Like many things, what is simple at the front-end implicates what is difficult at the back-end. Or, easy now, hard later. Or, pay a little now or pay a lot later. You get the point. That sort of thing. [2] And it’s no different for branding.
I have often quipped that deals are practical at the front-end (“just get it done“) and academic at the back-end (“that verb is not modified by that adverb“). For the contractors in the room, it might be more of a “Don’t Mickey Mouse it” type of thing.
Let’s start with two points in time. In the beginning, a client “just wants a logo,” preferably something original. But this implicates the ending; that is, that the client wants something legally capable of being a brand to be owned as a commercial property to be used in its business as a distinctive reputational symbol. And the client certainly does not want something that will infringe or be tantamount to conversion (theft) of someone else’s commercial property.
If you read the last paragraph a few times carefully, you’ll see that “just wanting a logo” is really not that simple. Welcome aboard to intellectual property law.
Stated another way, for our purpose, the client is not buying per se “artwork.” That is, the client is not hiring a logo creator for a nice original picture to hang on the office wall. If the client were hiring an artist for a nice original wall hanging picture, we would only be in the space of copyrights, generally speaking.
But your question is not about original wall art hangings, but rather about logos, which implicates more than originality. Assuming there is no “copying” of someone else’s work, copyright law in the U.S. has a very low required threshold of originality; that is, it is generally easy to create an original work for copyright purposes. Therefore, getting to an original work of art for copyright purposes is not relatively difficult.
But, since you asked about logos, we are in the space of marketplace consumer impressions, confusion, untrue associations, and distinctiveness of symbols. This is way more than just original artwork.
For simplicity in this post, I will carve out “word” trademarks, like the trademark “Nike” as a word, and address here only the “pure” logo trademarks, being the Nike Swoosh, by itself without the word “Nike”; to wit:
The Nike Swoosh is a “pure” logo, being without any words. A “word trademark” is, e.g., the “IBM” trademark as three letters without being represented in a pictorial formative. If the logo includes the word as such, such as the IBM logo in pictorial formative, the question may reduce itself to a word trademark issue, not a logo issue.
That is, the Nike Swoosh above does not have the name “Nike” with the trademark. However, the above IBM trademark above is represented as a logo formative. And below, the word mark “Nike” is included with the “Swoosh” (and you will note two federal registration symbols because the Swoosh and the word are separate properties that are conjoined in this representation.
As a logo developer, if the client wants a logo formative that is or includes the word, then the legal trademark implications are probably beyond the logo creator pay scale, because trademark implications of the word is beyond the implications of a pure logo. The logo creator may want a disclaimer in the deal document that the client has required the use of the word in the “specification” and the logo creator is not responsible for any legal implications associated with use of the word. That is, if the client wants you to develop that logo of the Big Blue slatted IBM formative logo, it’s not your fault if the word “IBM” is not capable of protection or if it is an infringing term. So, we’ll just stick here with what laypersons tend to call “pure logos” being just a symbol without any words.
So, we’re back to the client “just wants a [pure] logo.” Many logo artists are incredibly creative and many clients are incredibly particular. So both work together iteratively spending sometimes a great volume of time and money (depending upon the deal) to arrive at something cool, representative, and distinctive. So far so good. The problem is that we’ve begged the question. Usually unbeknownst to the logo developer and the client, what was developed was just a nice piece of wall art that only has the potential of being a trademark. Whether the copyright for that wonderful wall art is owned by the artist, owned by the client, or owned jointly by both the developer and the client, depends upon the deal, as well as where the artwork was created, e.g., in what country. [If the artwork was created in a non-USA country, copyright “ownership” is a function of international treaty, if any…We’ll put aside for now the issue of off-shore creation of artwork in a country that does not have a treaty with the USA…] [5, 6, 7, 8]
So, at this point, the client takes the incredibly nice piece of wall art (a potential logo) to a trademark attorney to register as a brand. But remember something important: At this point the client loves that artwork, and has spent a lot of time and a lot of money to create it as a brand, and the client is a professional, and the logo creator is a professional.
Now, if the trademark attorney “clears” the artwork ex post facto, we’ve gotten lucky. [3, 4] When I say “clears the brand,” I have colloquialized, summarized, and homogenized a lot of really sophisticated fuzzy-logic critical review by the trademark attorney beyond the scope of this precise post. But, remember this: As a general rule, the trademark attorney won’t guarantee that the artwork is trademarkable, because that’s like saying even a Rolls Royce won’t break down. It’s about prudence, not perfection. The trademark attorney will only give a reasoned belief or opinion based upon a certain review. The marketplace context and comparative subject matter is simply too complex for any attorney to guarantee. I can say that from the experience of more than 600 trademark filings myself at the USPTO and 35 years of legal practice, having litigated with Apple, Facebook and Google, among many others.
But, let’s say that the trademark attorney cannot clear the artwork, so, at this point, we’ve gotten unlucky with bad news. That is, the attorney says that there are issues or complications with the trademarkability of the artwork. There are a lot of reasons for this determination. It can go from a “Sure, we can try to register it and wait and see how the USPTO responds” to a “This would be intentional infringement.“
It is not funny, but it is sort of funny, but not really. Telling a client that the artwork that the client just spent $50,000 or more to create (with a volume of lost-time team meetings) will be a problem to own as a trademark, and perhaps even that using the artwork would be infringing, is like the stages of grief for death.
It moves through a cycle: to wit: a) the client is in disbelief; b) the client returns to the logo developer with the problem; c) the logo developer says that more than one thousand artworks (“logos”) have been created and this problem never occurred before; d) the client returns this information to the trademark attorney; e) the trademark attorney says “so what”; f) the client challenges the attorney with the fact that everyone on the approval team is experienced in branding; g) the trademark attorney says that does not matter and that the client is welcome to get second opinions, and the trademark attorney reminds the client that, from a legal perspective, the trademark attorney is actually the top of the branding food chain; h) the client goes back to the developer, and the developer condemns the trademark attorney; h) the client brings this condemnation back to the trademark attorney; i) the trademark attorney says again, “so what”; j) the client goes back to the team who says that they have individually done this before and the trademark attorney does not know what the trademark attorney is talking about; k) the client then brings this fact back to the trademark attorney who says that ad hominem attacks do not matter; l) the client goes back to the team and then the entire team researches the trademark attorney credentials to learn that perhaps the trademark attorney actually is reputed to know exactly what the trademark attorney is talking about; m) the client then goes back to the logo developer claiming that the developer might have to do a do-over, eliciting the developer saying that slavery is illegal and there was never any guarantee of trademarkability; m) the client then challenges the logo developer saying the entire deal was about “simply getting a logo”; o) the logo developer then says that the developer is not an attorney and cannot opine to what would be trademarkable; p) then the client starts to consider how it spent $50,000 or more for what will become nice original wall art and contacts the trademark attorney to review the logo development contract; q) the trademark attorney indicates the client’s legal rights after review of the logo development contract, chiding softly that the client should have contacted the trademark attorney before signing the logo development contract…
As to the logo development contract, the logo developer might want something like the following paraphrased line: “The logo developer only represents and warrants original authorship, but no representation or warranty is made that any developer workproduct is legally protectable as a trademark in any manner of usage, including, but not limited to, in marketplace that the client intends or implements.” [This is not actual language to be used, but only conceptual.]
On the other hand, the client might want something like the following paraphrased line: “Logo developer represents and warrants that the developer workproduct, whether created alone or jointly with client, will be able to be used as a commercial brand and a legally protectable trademark of the client.” [Again, not actual language.]
If you’re reading closely as to what the client wants, it’s a difficult proposition, because it is tantamount to a legal opinion by the logo developer as to a commercial implementation context that is almost always out of scope. The logo developer tends not to do any due diligence or to know how the logo is going to be used in what marketplace, who is already there, using what competitive brands, etc. In all truth of tendencies, the logo developer is not an attorney and does not have a legal staff to vet the iterations of the design. The entire process is creative and not legal. But the law always comes along, sooner or later.
As stated above one issue is whether the logo to be created includes a word, and, if so, whether that word is already used a trademark. Consider IBM engaging a logo developer to put the IBM already-registered “word” trademark into a logo formative. This has less per se risk, but let’s say the iteration produces IBM in those Big Blue slatted letters, perhaps being original. However, at the point it goes to the trademark attorney, the due diligence research discovers that ITM is already federally registered in big blue slatted letters by ITM Corp., a really small under-the-radar competitor of IBM. There’s a challenge (problem). There are perhaps a lot of ways to manage it strategically and tactically, depending upon the exact context, but yet there is a challenge (problem).
Another issue is the state of the contract terms. If the contract terms do not expressly transfer the risk or handle the scope clearly, it’s simply like every other vaguely defined deal that gets lucky or unlucky. Saying that a logo developer and a client in a deal never got snagged before, in order to induce that the context is okay, is like inducing legality by how many times people get caught for speeding relative to how many times people actually violate the law by speeding.
The only way really to manage the logo development deal correctly is to do it in a controlled manner, iteratively with the trademark attorney as an integrated part of the team, so that challenges (problems) are caught early and often. First, at the point of the logo development contract, and then at the point of version iteration, and then following internal approval for rollout, and then for a registration.
I invite all my clients to lower costs by searching themselves at www.uspto.gov as frequently as possible prior to iterating to me. If the client finds a problem, it’s there; if the client does not find a problem, then they can have me kick the tires as their pre-buy mechanic.
There are a lot of incredibly talented people developing artwork intended as logos. But developing cool artwork is not really developing a logo, per se, because the creation of artwork is a front-end issue, and the usage as a logo is a back-end issue. These concepts get conflated. The more precise statement is not:
I’m a logo developer
but rather:
I’m a developer of artwork that I will provide to you for you to determine, independently and on your own, that it is able to be used as a logo for your business in the marketplace and manner that you intend to implement.
Everyone loves the simplicity of the former statement. And, like many things, what is simple at the front-end implicates what is difficult at the back-end. Or, easy now, hard later. Or, pay a little now or pay a lot later. You get the point. That sort of thing. And it’s no different for branding.
Generally stated, all logos are artwork, but not all artwork can be logos. Original cool artwork has a very low threshold of originality for copyright purposes, but trademarks require due diligence and a very careful review of the brand, competition, the marketplace, confusion and association issues, and a variety of other contexts, and strategic and tactical commercial determinations.
Forewarned is forearmed. Kudos again for the question. Critically thinking, and being engaged in the thought-process, and being curious with attention to deal detail, makes all the difference in the world. As usual.
[1] Mickey and Minnie; Or Distinguishing Trademarks ®™ and Copyrights © [Part 1] [#GRZ_166]
[4] On Wisdom and Luck; Or, Getting Lucky is not the Same as Being Wise [#GRZ_154]
[5] The Federal Trademark ® Process-How It Works! [#GRZ_10]
[6] Branding: 8 Common Questions About Trademarks! [#GRZ_9]
[7] Protecting Your Brand / Trademark with Automated Monitoring [#GRZ_8]
[8] The USPTO Proof of Use Trademark Audit – There’s a New Sheriff in Town. [#GRZ_96]
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* Gregg Zegarelli, Esq., earned both his Bachelor of Arts Degree and his Juris Doctorate from Duquesne University, Pittsburgh, Pennsylvania. His dual major areas of study were History from the College of Liberal Arts and Accounting from the Business School (qualified to sit for the CPA examination), with dual minors in Philosophy and Political Science. He has enjoyed Adjunct Professorships in the Duquesne University Graduate Leadership Master Degree Program (The Leader as Entrepreneur; Developing Leadership Character Through Adversity) and the University of Pittsburgh Law School (The Anatomy of a Deal). He is admitted to various courts throughout the United States of America.
Gregg Zegarelli, Esq., is Managing Shareholder of Technology & Entrepreneurial Ventures Law Group, PC. Gregg is nationally rated as “superb” and has more than 35 years of experience working with entrepreneurs and companies of all sizes, including startups, INC. 500, and publicly traded companies. He is author of One: The Unified Gospel of Jesus, and The Business of Aesop™ article series, and co-author with his father, Arnold Zegarelli, of The Essential Aesop: For Business, Managers, Writers and Professional Speakers. Gregg is a frequent lecturer, speaker and faculty for a variety of educational and other institutions.
© 2023 Gregg Zegarelli, Esq. Gregg can be contacted through LinkedIn.
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The statements or opinions made in this article are solely the author’s own and not representative of any institution regarding which the author is affiliated. Nothing in this article is legal advice or purports to set forth the law applicable to any particular context, each person is exclusively responsible to determine the law and how it may apply to each person’s own context.
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