The Art Director and the Law of Trademarks
A trademark can be defined as a symbol, word of phrase (or combination of these things), which is used to identify or distinguish a product or service. Trademarks which are used in connection with a product are generally referred to simply as trademarks, while trademarks which are used in connection with a service are sometimes called "Service Marks." Trademarks are also sometimes used to certify quality or approval, such as the mark of the better business bureau or the good housekeeping seal of approval, in which case they are called "certification marks." TM" is the symbol for a trademark and is used to designate that a mark is being used as a trademark. The symbol â simply means that the owner of the mark has filed and has been granted federal registration for the mark, on a federal register which is kept by the patent office of the Unites States Government.
Many people apply for federal registration because it gives them a record that they were the first users of the mark. It also gives other people who might wish to use the mark notice that it is already being used. In addition, there are advantages to federally registering a mark, if the owner ever has to take legal action against someone who is infringing the owners rights to use the mark exclusively. For example, the owner of a federally registered mark may be entitled to a reimbursement of attorneys fees, and may be able to recover the profits which the infringer made by trading off of, or doing business under the mark.
The manufacturers or businesses which use a mark often find that the mark becomes a symbol of the uniqueness, quality, or prestige of their goods and services, as opposed to those of someone else. They therefore want to protect against others who might wish to employ the mark and trade off of the good will associated with it.
The law recognizes that trading off of someone else's mark is an unfair form of business competition. It is "unfair," because someone who did not develop the mark should not be able to monopolize on the good will that is associated with it. As it is sometimes put, one should not be able to reap where one has not sown. Thus the use of another's mark may be unlawful.
The law also recognizes that if a mark could be used by more than one person for goods or services, the mark would not adequately distinguish from which of the two users of the mark the goods and services marketed under it were derived. One reason the law permits only one person to utilize the mark is based on the policy that the public should not be confused in this way as to the product's or service's source.
The Law of Trademark Has Dual Relevancy to Art Directors. Many Art Directors use a name to identify their own creative services and work, and do not want others to use or trade off of their name or mark and the symbol of quality or uniqueness associated with it. So they assert trademark protection in order to prevent competitors or others from unfairly capitalizing on the name that they have made and which is associated with their work. Secondly, when art directors design or create marks for clients who wish to use the mark to identify the client's products or services they become concerned with trademark law.
There are many different types of marks which may be capable of protection: There are word marks, like "Lifebuoy and Chevrolet" and design marks, like the Mobil flying horse, the Mr. Peanut peanut design, the Prudential Rock of Gibraltar, the MacDonald's golden arches, and the Art Director's Club symbol. There are slogan marks like "Good to the last Drop," "The champagne of bottled beers," "I'd rather fight than switch" and there are marks comprised of initials and numbers like "CPB," "GTE," and "3-M." Sometimes trade dress and general design marks can function as trademarks, as is the case with the Coca-Cola bottle, and the Howard Johnson's building configuration.
In order to obtain protection for a mark there are various legal requirements, and the law is somewhat detailed on what they are. The first is that in order to qualify as a protectable mark, the trademark must actually be used in connection with a product or service. Further, the use of surnames or geographical names is generally prohibited, although there are exceptions. Another restriction is that marks which are merely descriptive of a product or service are sometimes not prosecutable. And marks which a generic (like "coffee" as the trademark for coffee, or "shirts" as the trademark for shirts) can almost never be used. On the other hand, fanciful marks, coined names, and type and illustrative designs may often qualify.
Unfortunately there is no one test which can be applied to determine what will and will not qualify as a legally protectable mark. So it is usually necessary for the client or the art director to retain an attorney to evaluate under the many applicable legal criteria whether the mark can be protected.
One reason that art directors become concerned with whether the mark is or is not protectable is that they do not want to design a mark which their client will find incapable of protection. Obviously, the client may consider an unprotectable design worthless.
Another reason is that the art director will not want to design a mark which is a copy of or similar to another mark, because the use of a substantially similar mark may subject the client, and perhaps the art director, to an action for trademark infringement. As stated above, the law permits the bonafide owner of a mark to exclude others from using marks which are the same, as well as confusingly similar.
To ensure that the client does not use an "infringing" mark either the client or the art director might have a trademark search conducted. Attorneys and trademark search houses can perform this service. These searches are undertaken to determine if the same or a confusingly similar mark is in use. However problems often come up when the client does not perform a search and does not authorize the art director to conduct one himself.
In these situations there are nominal steps which the art director can take. One is for the art director to build into the price of the design the costs for having the search conducted. However, this is not always possible. When it is not, another solution might be for the art director to ask the client to release the art director from any liability which might arise from the design of an unprotectable or infringing mark, where the client refuses to conduct a search. In this way the art director can at least be sure that the client himself will not come back to the art director and complain that the mark cannot be used.
However, this does not necessarily protect the art director from suits which someone else might bring against the art director for the client's trademark infringement. So the art director might also ask that the client "protect, indemnify, and defend" the art director from such legal action, when this could have been avoided by the client's having a proper trademark search conducted. If such a release is not already in the art director's written contract with the client, it may be provided for in a separate legal document. In addition to these forms of protection the art director might consider obtaining or expanding existing professional liability insurance to cover liability stemming from trademark infringement.