Dear Designers, Protect your Unique Branding

Dear Designers, Protect your Unique Branding

This month Matt returned to speak with the Design Domination podcast, offering advice to graphic designers who do branding work for their clients. What do designers need to know about registering a trademark? Let’s dive in.

The truth of the matter is that if graphic designers knew a bit more about trademarking, it may very well influence how they work with their clients and the output that they are producing. Most often, clients are concerned about protecting their brand not only to uphold their image but also to increase the value of their business. Every graphic designer should know the basics of trademarking – what questions to ask, where to do their research, and generally how the whole process works.

Before stepping further, designers should be familiar with the basics about intellectual property. While copyright is the expression of an idea, trademark can be understood as a “shortcut” to identify a brand or product. Let’s take Nike as an example. While we can all identify Nike’s name and logo in a heartbeat, the trademark law actually ties these visual shortcuts to specific goods or services. Today we’ll be focusing particularly on trademarks.

Trademark 101: What Designers Need to Know

As a designer, you don’t need to be a trademark expert. After all, that’s a lawyer’s job. It can be helpful, however, to know about the process so you can let your clients know a trademark registration might be in the cards for them. Here’s your 101 need-to-know info:

  1. You can trademark a logo, product packaging, product names, taglines, and even colors or sound.
  2. The application process takes 6 to 6.5 months if everything goes smoothly. This process is managed by the United States Patent and Trademark Office (USPTO) and includes a series of internal checks. Examining attorneys work to make sure new applications are not “confusingly similar.”
  3. When you register a trademark, you are required to identify which “goods and services” go along with your product or service. The more clear you can be, the better. There are 35 international classes of goods and 9 international classes of services.
  4. How much does it all cost? It depends on how many categories of classes your trademark falls into. While you could fall into one, you could very well fall into four or five. Each class costs $225-$275. No refunds. This does not include your attorney fees.
  5. Once your application is approved for the next step, it will go into the “publication” stage where it is “open for opposition.” If no one speaks up within 30 days of the publication, your application moves forward.
  6. After surviving the opposition period, congrats! You’ll have a registered trademark and receive a certificate. You’ll have to renew the trademark in 5 years, but so long as your product or service is still in commerce, you’ll never lose your right to the trademark.
  7. While the USPTO can reject any new applications coming in, they will not be policing the trademark. If someone is copying your registered trademark on the market, you’ll have to work outside the USPTO, however having your registration gives you a lot of armor to work with.

 

The Benefits of Trademarking

As a designer, it’s worth it to have this discussion with your clients about the value of a trademark. It gives clients the perspective that you as a designer have enough confidence in the work to make it something legal.

If you can steward your client in the trademark direction, they’ll experience some great benefits. On top of the list is a protection of your brand development. Once your brand is registered, the USPTO will reject any trademark application that is confusingly similar to yours. That’s the legal right to lock people out of your trademark across the United States. For example, I use the #Mattthelawyer. If someone wanted to register #Matttheattorney they’d be stuck because attorney and lawyer can be easily confused.

With a registered trademark you’ll have the right to sue in court, cease and desist, and make claims to damage to inventory and/or loss of business. You can also register your trademark with US Customs & Border control. That way if imports are in violation of a trademark, the US government can reject them from entering the country.

You can use the ® symbol to show that you are registered with the USPTO. The ™ symbol on the other hand is a common law symbol that you can use without having a trademark registered with the USPTO, better yet while you’re in the application process. If someone copied your name or design you can go to court, but it lacks the federal law protection. You should consult an attorney to see whether or not and how to use the ™ symbol on your product or service. We don’t advise putting the ™ symbol on any company material that would be costly (such as printed brochures), and rather wait until the trademark registration comes through to use the ® symbol instead.

Don’t Forget

The more distinctive you are in your field, the better. If a business in another industry has a similar name, that does not mean its a problem. Remember that when a trademark application is being submitted, you have to select what classes of goods and services you want to register. If you’re a tech company and a dress company has a similar name, you’re going to be alright. That’s not to say a logo can be copied, but if there are similarities, it is doubtful that potential clients would confuse tech services with custom-made dresses. AKA, you’re in the clear.

As a designer you can guide clients in asking questions such as: Do trademarks look the same? Do the businesses have similar services? Do they serve the same customers? Are both businesses’ services limited geographically? To take a clear example, we’ve both heard of Macintosh apples and Mac computers. They can both use Mac/Macintosh without a problem, because without a doubt no one will be confused between the two.

It is completely possible to file a trademark application without legal support from an attorney. Many business owners use a service such as LegalZoom to submit their trademark application, or watch tutorial videos from the USPTO in order to file independently. As an attorney, I can recommend that having legal support in the process is helpful, particularly to consult prior to filing an application and after filing an application, especially in the case that everything doesn’t go so smoothly. An attorney knows what valuable questions to ask and how to manage an office action (which is when the USPTO says that something in the application needs to be addressed).

Even as a designer, it can be helpful to do some research before doing brand development for a client. Aside from a google search, you should be looking at the USPTO’s public database that shows records of all registered trademarks. You can check it out at USPTO.com/trademarks and click on “TESS.” Here you can do a basic word search looking at “live” trademarks, or even check out registered designs/logos, which can get a little more complicated since they have a code system.

Think you’re ready to let your clients know about trademarking designs you made for them? Awesome! We’re always here to help if you have any further questions. Send us a message anytime.

Want to hear this podcast episode for yourself? Click here.