Types of Intellectual Property: Trademark


Intellectual Property 101


Lesson Info

Types of Intellectual Property: Trademark

So, your content and media, like I said, are the most important assets that you guys have. Most small business owners, don't truly understand this. Excluding photographers, they're just creating logos and marketing pieces, and they don't really think about, all of that intellectual property as assets. For you guys, it is our assets. We're selling images. We are creating images that are then turned into products, that our clients are purchasing. You can not ignore the fact that intellectual property is the centerpiece of our businesses. Contracts are fun. They're good for regulating our business, getting your, you know, getting your taxes in order, getting your business formations in order. All that other legal stuff, is really not the center of what you guys need to be focused on. Protecting intellectual property and understanding the types, is what is most important. The biggest thing is that we need to understand when we own specific intellectual property, and how we can receive owne...

rship of other property. We did touch a little bit on this and a crossover of contracts and how those sorts of things play. I'm gonna break it down for you here, so you guys can see exactly what your ownership rights are, and how you can enforce against others. The biggest thing and probably the easiest one to sell to you guys is that your intellectual property is your branding and the assets that we're selling. We wanna make sure that we understand what is ours, make sure it is ours and then enforce it. These are the intangible items that run your business. The products, marketing, your voice and representation. I think often times photographers focus solely on copyright, because the images are what we are creating day in and day out. The other things you need to keep in mind are the slogans you're using in your business. The blog posts that you're creating. The statements that you're even originally creating on your social media, all the way down to the logos and other designs in your marketing as well. I've kind of already given it away, the two major types of intellectual property that we're gonna talk about today, are copyrights and trademarks. Ignoring this intellectual property and our rights, is basically turning a blind eye to what is most important. I'm gonna start with trademark. Not, these aren't in a priority order, but I'm gonna start with trademark so that you guys can have a better understanding of what that is, we can check it off and then move into copyright, because copyright is where the hot topics really are these days. Trademark, for a lot of small business owners, sounds like this very obscure, down the line idea. It's not something you necessarily have to work at right now, but I'm gonna give it to you to keep in mind of how you can preserve yourself, set yourself up, so that if you ever wanna pursue trademarks to protect your brand down the line. So trademarks fall into a couple of categories. The ones that are most applicable to us are for our business names or slogans and then our logos. A little confusing but logos also have a crossover into copyright, which I'll talk about in a little bit. There are two major ways that you can get trademark. You can have common law rights to the use of a business name, but the most commonly understood one is the federal registration that you guys submit a formal registration with the US PTO office. It's uspto.gov. All that information's on there that you can check out. It's a government website so may the odds be ever in your favor on finding all the information. It's a little overwhelming, but I'm gonna kinda pick through it for you. The good thing is if you are trucking along with this business name and you haven't really even understood how to get a trademark or maybe you've just put it on your to-do list and you've never gone down the path of a formal registration, all is not lost if you find someone else that came after you that is now using the same or substantially similar, and just for this example, I'm gonna use business name, okay? You have common law rights for a specific area where you've been using it in commerce. So don't feel like all is lost because you haven't taken the step of formal registration. Optimally, the best thing is for you to take the step of formal registration with the office. It is a little bit of a cost investment, so you really need to make sure that you are in it to win it, because we're also gonna talk about the next step. You have a duty to police it as well. You have a duty to defend it, which you don't necessarily have with copyright. You can kind of pick or choose your battles on copyright defense and enforcing infringement claims with trademarks. Once you're federally registered, you're gonna have a duty to police it. So taking a step back into registration. You guys have two major applications that you can submit to the US PTO office. One is one that's not really commonly used. It is an intent to use. And when I say not commonly, everything I'm saying is like focused on with photography industry. It's very common in other businesses, but for most small, single or small partnership photography businesses, they don't typically use this intent to use trademark application. Essentially what it is is calling dibs on a name or a logo or so forth. It's just putting yourself in line that you have that priority that you're intending to use it in commerce. You do that, you have it, you have x amount of time that you then need to put it into commerce. You're gonna have to file an in commerce which is the second application and the one that you guys really are most needing to be concerned about. In order to do this you need to be using whatever it is, in this instance we're talking about business name, needs to be actually being used. So let's say that you're a new photographer. You're a hobbyist maybe, and you're wanting to enter into business. You have a really good name, but you're not yet using it in business. Your only option would be to do the dibs, the intent to use application, because it's not actually being used. Okay on the flip side, if you've been using it for a bit, you're good to use it for the in-commerce application. Now the thing with that is, I wouldn't really suggest October 1st to come out using it, then October 2nd submit it to the US PTO, because they're gonna wanna see established use in commerce. So when you go to do your application, you're gonna choose the, now you guys can do it or an attorney can do it for you, it is a little bit overwhelming, and this is an area that I don't really recommend DIY because it costs upwards of $1000.00 to do and you can muck it up and we really don't want you guys to lose the money on that. Copyright I'm gonna talk a little bit more of like a DIY type of process. But with trademarks, you're gonna also have to demonstrate when it's been used in commerce. The examples for this, for photographers specifically with a business name would be like business cards, your website, your social media. All these specimens is evidenced to the office to show that you're using it in commerce. Maybe if you're someone that sells physical product, because we may have photographers who are not listening here, you guys have multiple income streams, it could be product packaging. And the same thing like with your logos. Screen shots and all of this are accepted with the application as evidence of the use. So we have, what are we going to? When you do the application in commerce, what is it that you're submitting, but you also have to connect it, and this is where the big misconception comes in with trademarks. You have to connect it to a specific classification. Have fun, if you want some fun nighttime reading, go check out the US PTO website and you can see all the different classifications that are available out there. You guys are probably gonna commonly connect it to photography services. The reason that this is extremely important is that there can be multiple federal registrations of a name or a similar name, and they can co-exist without infringing upon each other. The most common example that I can think of is like United Airlines and United Moving Vans. They're both United, but they're connected to completely different classifications, and I think there was also a United storage company, actually I ended up finding. Like, there's a whole list of them. So think about that, and I share this with you, so if you ever receive a letter from someone who has DIY'd it, trying to defend their business to say, oh your business is so similar to mine or it's the same, because again it doesn't have to be the exact same, the threshold is if a substantially similar likelihood to cause confusion, that's the nice little. If you're at cocktail party and you wanna throw it out, the likelihood to cause confusion, ask what classification it is. If they are a brewery, and you're a photography business, they're not offering photography services, and they don't have the registration, and you are not offering brewery services. If you're not producing beer, more than likely you're not having infringement. Don't freak out, just consider, okay, you know. But if you guys are in substantially similar, and often times this comes up, when you have a photography business that maybe starts branching out into offering graphic design services, or education services, you can start having overlaps with other people, so just be mindful. I share all of this to say, that was a lot to get to this point, when you are choosing a business name, and maybe you've been in business a while, it is very beneficial for you to go, I was gonna say now, but after this class, and go look and see if there's anybody that is similar or substantially similar to your business name. You also may have rights there of enforcement, under the common law that I talked about. It could also potentially hinder your trademark down the line. But also consider from the marketing perspective, is maybe there a confusion between the two? Or, to keep yourself in mind, that you could potentially be in receipt of contact by them, of them claiming that there's infringement. Okay? So I always suggest if you're newer in business, especially, this is my, the way I recommend for newer businesses to search. Go and start with the web. But that's not the be all and end all because a lot of people's SEO is not really good. You're not gonna find everyone. Go to social media next. Notice I haven't put the federal register yet, because not everyone registers their name. As we discussed, you don't necessarily have to. So you checked all the social media handles and websites, and then I go in and search the federal register for a same or substantially similar, in this case a business name, and then check the classification. Don't just automatically think that it's excluded, like with United. Aw, you know, there's another United. You've gotta look at what you're exactly connecting that to. That is a nice little quick crash course. I had to take like a year of law school to learn all of that. But it gives you guys a good little foundation, to think in your mind, and put onto your business plan, if you intend to ever go down the trademark route, these are things that you need to keep in mind if you see other people also operating a business, maybe similar businesses with the same or similar name. If you are looking at adding another income stream, like the example I gave you, maybe you're a photographer who's starting out on graphic design services. Both (mumbles) are great. You just gotta keep in mind that you don't wanna start infringing because trademark infringement suits can be really costly. This is actually one of my biggest struggles with the legal system is that even if you may be in the right, you're still gonna have to spend how much money on an attorney in order to prove that you're right, you know? And it kills me sometimes, because we've had clients that, their, other companies have tried to say you're infringing upon our logo, our business name, and just for her to, these clients to be able to get an assessment to say, actually that's not true, and for us as attorneys to send the letters back, they're spending a couple thousand dollars on that. And some of these, that I can think of, could have been remedied, if they had not just gone into business with that name. Think about it too, from a practical standpoint. Why do you want a business name, in the same class or service, as somebody else or something that's similar that could cause, because, way back in the day, sounds so old, way back in the day we were very geographically rooted. The internet was not as pervasive. Now it's super easy to google something and you're gonna get four or five different people with a similar business name. Did you have a question? I'm wondering, for those of us who have names, business names based on our names-- I knew this was gonna come up. Yeah? And we live somewhere but do work nationally and sometimes internationally, and you know we travel and, may move. You know, how does it apply if we might be moving into another market or, you know, haven't registered a trademark yet? That's a really good question. That's like four questions. It is, but if we need to look, do we need to look at the markets we might wanna be going into? I mean what happens if someone has a similar name? So lemme actually, lemme take the personal name off the top and then we'll move into kind of identifying with names and moving. If, this is kind of, it's really difficult. The general rule is, a person's name, a general name cannot be trademarked. Jennifer Smith is probably never gonna get trademarked. Which actually brings up a good point. It's something I completely missed and I apologize for this. When they, when you submit your application, they're going to look at this broad spectrum of what even can be registered. Stuff that's very general terminology, is probably not gonna be approved, all the way through, and there's like five or six classifications in there, all the way through really original and distinct type of words. Like TheLawTog is a fairly made up word. People outside our industry, they have no idea. They're like what? They have no idea what it is. So in that same name though, personal names typically are not. I say typically because there are some names that may be more distinct, that can be federally registered. Okay? On the next point of what you were asking about, moving, it's a very good point. If you're planning on working nationally, internationally, or just want to exclude others from use of something, so you don't, and I say something that could be a name or logo, slogan or whatever it is, if you want to be able to exclude others from use of that, so you can maintain that brand value, that brand recognition, and keep it for yourself, I would get a federal registration. On the business formation side, when you are going to create your business, and say you set up an LLC or a corporation and you choose a business name, it's only excluding people in that state from using that business name. That's a huge distinction from trademarks so I'm very glad you asked this question. So you could have Sweet Pea Photography in Alabama, and have a Sweet Pea Photography right over the line in Florida, and that's okay. If they're not federally registered, I'm talking completely about a faith form to like an LLC or corporation. But what happens when you start searching or then want to move. You know, say you want to move from Alabama to Florida. Since that person would have been in that, in Florida, using Sweet Pea Photography, you don't have a federal registration, they can exclude you from wanting to use it there. You would end up having to change your business name, and operate under a different one. However, if you have a federal registration, it grabs the entire United States and allows you to freely move. You can use that name everywhere. In, I'm going down the little rabbit hole here, in that same vein, you can federally register something, and this is talking about the duty to police, and you find somebody who has registered as a business name or is operating under a business name that is similar or the same as your federal registration, you can get them to stop. You do a trademark infringement claim against them. Even if they're registered under a legal business. Say that Alabama decides to give them Sweet Pea Photography, they don't check the federal register, they just give it to them. They just check within their state lines. But if you came in first and priority. You were the first Sweet Pea Photography in America, and you decide to get a federal registration, you could then get them to change their business name. That make sense? So I say all that to say, think long term in your business plan. Are you gonna be moving? Are you wanting to start marketing to other areas? For example, I live in the northern Virgina and DC area. We have DC, Virginia, Maryland, Pennsylvania. Just registering in Virginia doesn't do much good it just does Virginia. I have to federally register, or register in each of those states. But I have to federally register that business name or whatever it is, business name in that case, in order to be able to exclude anybody else of use. Throw a little kink in it. Lets say now you come and you're like, okay, we're gonna end up moving and we'd like to federally register this. But say someone already exists using a business name somewhere. I'll actually use one of my own trademarks. I own co-working spaces for photographers. It's rentals of studio space. And, I went to submit Snap Space Studios for registration. I did a whole application, they actually didn't find that anybody else was using it. They did not deny it. It was approved. But then I found that there was a Snap Space in Orlando and believe me I had gone through the whole process that I just told you. Website search; SEO sucks, that didn't show up. I went through social media, their social media presence isn't that good, either. All the way through, they weren't on the federal register. But then I found out that they actually had come before me, so they had priority rights. They hadn't registered anything. They were just acting in the Orlando area Florida as Snap Space Studios. Even though, I feel like this is gonna explode minds, they have that common law right that I was talking about before when I was saying don't feel like all is lost just because you haven't registered it, okay? They had a priority right in the Orlando area. Even though I had the federal registration, I came after them. I am excluded. I have the rest of America, except for that geographical area. Which is a little debatable of how wide that geographical area could be. So, you feel like I just threw a whole big kink in there. But just keep that in mind. If you are, if there is any chance, if you're a military spouse and you're moving around. Or maybe you're working full time and your job relocates you a lot, it probably is very beneficial for you to go ahead and do the application and get that on lockdown. But even if you're not moving, think about the traction on the internet, and being able to exclude others from having that substantially similar. Because if you're gonna put that much time and energy into SEO and brand value, you want to be, you want to maintain all of that for you. Did you have a question? Federal registration equals trademark? Are those interchangeable words? Yeah this is federal registration for trademark. Correct with the US PTO. So it's go and figure out which application, in commerce or intent to use which is the dibs. But we're mostly talking about in commerce here. The type, the classification and then submitting your evidence. It takes them forever and a day to get it approved and and ready for you. Yes. Question from over here. Lemme ask you this. Just can you give us your advice a little bit. Coming from where you're sitting. Do you recommend that us photographers go out there and get that federal registration, and is it relatively affordable? It's about between seven, it's beyond $700.00. So it depends on if you hire an attorney. I can't remember what the application, they just changed the prices. I think it's like $750.00. Don't quote me on that. I can't remember right now. [Male Audience Member] Ballpark is great. So if you're definitely in one of those situations where you know you're gonna be moving, yes. If you definitely value your brand value, yes. I know that because it is so expensive and you do have this duty to police and that could trigger you having to hire an attorney, you don't have to, a simple letter could be enough, like in my situation with Snap Space. I mean obviously I have the luxury of being an attorney. I didn't have to send a formal letter. I just said hey this is what's going on and we worked it out ourselves. Like it wasn't that big of a deal. Someone else may not necessarily know what to do, right? So I do highly recommend that people put it in the back of their mind, to put it on their business plan. Especially if you have a very distinct business name, and you have any inkling that you are, you're gonna want to move or branch out. Now one thing to consider, too, I can't divulge too much about this, but we did recently have a client who was a graphic designer, that had their, a federal trademark, I can't remember how many years. She had had it for a while, was truckin' along, and because she had it, this large company came to her and they wanted to use it for a line of stuff in one of their stores. She got to retain her trademark, well no that's not true. She transferred and sold her trademark to them, but they licensed her a use of that trademark and she made a payday off of it. So, I mean I wouldn't say rush out and get a trademark on the potential that some large company's gonna come along and give you a payday. But just consider that's also one of the other options. Even if you never have to enforce it, and you can even pitch it to sell it to somebody. Its' your intellectual property to do what you want to do with it. Just keep in mind it does have a legal duty that you have to police it. And again, policing doesn't have to be necessarily so extreme as suing somebody but you do definitely have to keep on top of that as well. So I'm gonna move forward from trademarks 'cause copyright's pretty riddled. Do we have any question on trademarks? There. As a follow up question, in terms of international law, and maybe this is not your specialty but would you have an idea of how to approach that internationally? Are you talking about living here and working internationally or someone internationally infringing upon or using the same? I mean moving internationally with my brand. Okay, I would definitely recommend if you're doing any work here. The good thing is we do have a couple of conventions available for us with different overseas countries that do allow for enforcement of federal registration. It can be very costly and very complicated. I don't specifically work with international stuff. My partner is actually well versed in that. I like to stick with the, remember prevention over the cleanup later on, so, we definitely work and suggest on you getting it here if you are gonna work here, because it does, there is some broad reach over there as well. So trademarks again, upwards of $1000.00. An application. You have to apply. You do not receive it at creation. One thing really important to talk about here, and we discussed it a little bit in contracts. Say we have a logo that we wanna go get trademarked, you have to have the rights to be able to submit that logo. You have to have full ownership or rights to be able to copyright that logo. So say you went to Etsy, or you had an independent contractor, just a graphic designer friend from college who designed your logo for you, you're gonna need to have them physically sign over the rights to you, in order for you to be able to trademark, because by them creating and your use, this is crossing over to copyright which we're gonna talk about here in a minute, but your use, you only have a license to use. And this is assuming we don't have anything in writing. They just created the logo, gave you the logo and you've been using it in your photography business marketing. You only have an implied license of use. At any time they could revoke that and you can not get a trademark on that. So my recommendation is if you have a logo that you've been working with for how many years, try to go back and see if you can get the graphic designer to sign it over. But at the same time, think about if your clients or someone asked for you for the intellectual property rights to the images. They're probably gonna wanna be compensated for that, and I don't necessarily think that that's a wrong or bad thing, right? We need to consider that that was their intellectual property. And, we talked about it a little bit in the contracts. You can cut that off at the pass by having them sign an intellectual property acknowledgement before they ever do the job. So say you're moving forward from here, you can have them automatically sign over everything before it's even done, and of course they're probably gonna factor that into their cost of the project as well but so that you'll have that, because you do have to affirm that the intellectual property, the name or the logo or slogan for the trademark, same thing for copyright, but you're gonna have to, when you submit the registration application to the office, you're gonna have to affirm that you are the intellectual property rights owner for that. And you don't wanna go down the path of spending how much money to get a trademark and then having the designer come back later and go whoa, whoa. Like, you know that was mine, and seeking to have it canceled which can be done.

Class Description

Understanding how to create and defend your intellectual property is one of the trickiest issues plaguing photographers today. Join Rachel Brenke, TheLawTog®, as she gives you a 101 crash-course to make sure all areas of your business are covered, not just your photographs!

The Brenke Group, LLC, doing business as TheLawTog® (“TheLawTog”) provides an online legal portal to help customers identify business and legal problems commonly encountered by individuals in the photography industry. TheLawTog is not a law firm and does not and will not perform services performed by an attorney. TheLawTog is NOT a substitute for the advice of an attorney. Instead, TheLawTog provides templates and education to individuals who voluntarily chose to prepare their own legal and/or business documents, submit templates to licensed attorneys for modification, and/or for education purposes prior to contacting a licensed attorney.