orangenius
Trademarks

Should You Trademark Your Name? Pt.1.

Trademark Proper Names

One question artists, photographers, designers, and musicians always seem to ask is whether they should Trademark their name.  In many cases, an artist’s personal name is also their company name. That name is a corporate asset with real tangible value and protecting it is an important business consideration.  Understand though, that applying for a Trademark does not guarantee acceptance.  As always with law, there is no cut and dry answer on this issue but here some important points to consider.

First, The basic idea behind a Trademark is that as a society, we want to know whom we are buying from and we don’t want consumers to be tricked into thinking they are buying from one company when in reality they just bought a knock-off.  The clear examples would be someone buying a Prada bag, thinking it is the quality of Prada, but then 3 months later the bag falls apart. Follow that through to artists; a photographer would not want to see merchandise with similar photos on it with their name attached.  It is not the photographer’s photo so there is no copyright violation, but you can attack them through trademark.  A trademark is evidence in itself that you are the rightful user of the name for a particular type of product.  If you have to sue someone to make them stop using your name, just think about how much easier it is if you don’t have to prove that you own the rights to the name. (It’s tens of thousands of dollars cheaper too).

Ok, next thing you need to know is that names of people and companies, business logos and symbols, and particular sounds can all be Trademarked. However, trademarks that sometimes surnames are often refused a trademark registration, without showing that it is in someway distinctive.  Acquired distinctiveness means that the trademark has been used for a long period of time and has gained recognition by consumers and has become more than just a surname.  For example,  Ford Motors is a surname but because it has become so recognizable as a trademark it has acquired distinctiveness and therefore can be a registrable federal trademark. Artists that have been around for years with posters, books, t-shirts and other merchandise at the point where they are gaining notoriety should protect their brands.  Picasso, Michael Kors, Kate Spade, and Mark Kay are all trademarked.  If you are just starting out with no notoriety and wish to differentiate yourself by adding a word to your name, try to make that addition so it is not too descriptive.  For example, iPad is Trademarked, but iPad mini, was refused because mini merely described the size of the iPad.  So removing mini, you are left with iPad which is already Trademarked.  (For more, click the article here).  So try John Smith Fine Photo or JS Photography which is doesnt use the proper name rather than John Smith Photography.

But Trademarks do not apply to every product and service you might want to create.  Trademarks are only assigned for particular goods or services that you or the business are actually doing; goods and services that are being used “in commerce.”  If you don’t make it or plan to make it, then you are not getting a Trademark for it.  Currently, there are 42 classes of goods and services with hundreds of specific descriptions or identifications within those classes. (click here for the list at the USPTO). That means if you have a Trademark for a Class 1 product with the same name can generally create products in classes 2-42.  It gets a little more complicated so I’ll try to explain the rest with an example.

Let’s say I want to trademark Steve Schlackman.  I am photographer who uses my images to make pillows and rugs.  I am selling them in my online store so they are “in use”; used in commerce. The Trademark class that includes pillows and rugs is #20.*

 Class 20: Furniture Products – Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

When I apply for the Trademark, I must choose the products I sell from a list of acceptable goods and services within Class 20.  I will pick items like Pillows, Decorative Pillows, and Floor pillows.  I will also upload an image of those products to show they actually exist. If I receive my Trademark (which takes a few months) it will only apply to Class 20.  Someone named Steve Schlackman can make Steel Beams which is Class 6, Metal products and can also apply for a Trademark for that class.

But can people with my name make other products within Class 20? I only make pillows and rugs and the class has many more types of products.  What if someone is making Steve Schlackman brand Wicker chairs? Can I stop them? Maybe. The main criteria here are whether the wicker chairs are confusingly similar to my trademark. Would a buyer purchase the product because they think it is my company’s product.

Determining “confusingly similar” can be complicated. Courts will look at all the elements of a product together and try to decide whether a general everyday consumer would be confused and think they are buying something else. Look at a company like Coca Cola.  They make all sorts of products, like clothing, kitchen items, prints and vending machines. If someone made a Coca Cola pillow, people would think it was backed by Coca Cola.  So Coca Cola’s trademark would likely hold for all identifications in the class.  And, probably into other classes as well.

The important consideration here is that should you ever get into a legal battle over someone selling under your name in the same class and you want to stop them, you will be in a much more powerful position (as well as spend a lot less in legal fees) if you own the Trademark. If you decided to wait to register your trademark, and someone gets their first, then you end up in a far more difficult legal position.

In Part 2, I’ll discuss what happens if you want to protect a product line you haven’t made yet.  I’ll also discuss using ™ and ® with your name.

Should you have any questions on this topic, or need a Trademark filed, you can always contact me at [email protected].  As usual, if you found this post informative, please post it to your social networks and help build a larger audience so we can bring you even more great content.    Thanks for reading. 

*it costs $275-$325 per class as a fee to the United States Patent and Trademark Office and anywhere from $600 to $1000 for an attorney to create the application. If you choose another class later, you will need another application and fee, so try to do your classes all at once. 

 

Enhanced by Zemanta

About the author

Steve Schlackman

As a photographer and Patent Attorney with a background in marketing, Steve has a unique perspective on art and law. Should you have any questions on Intellectual Property contact him at [email protected] His photography can be seen online at Fotofilosophy.com or on display at the Emmanuel Fremin Gallery in New York City.

2 Comments

Click here to post a comment

Your email address will not be published. Required fields are marked *

  • Hello Steve,

    I draw and I am looking to start selling my artwork. Your article was the first one I came across and seemed to be going in the direction of my question but not quite specific enough. My concern is that maybe someone takes my picture and uses it for something, maybe puts it on a shirt, and makes money off of it. My question is do you know if I should copy write every picture or just my name and then when I sign the picture my art is covered? I figured with you being a photographer, do you copy write, trademark or what every photo? Any help you can lend would be amazing!! Thank You, Alisha Howell

    • There are two different issues there. Trademark is a brand name and has less to do with he art itself. A trademark will keeps people from using your name to make people think they are buying your work, when it is not your work. Think Prada knock off bags. Signing your name will not give you federal trademark protection. You have to apply. Names are not easy to get though, since you would be the only one allowed to use that name for art. If there is another Alisha Howell, she can’t use her own name. So names tend to be reserved for those who already have some stature. If you are just starting out, a trademark is probably premature.

      The work itself is covered under copyright. Registration has a lot of advantages, but in particular, it allows for minimum damages (from $750-$30k per infringement) and your legal fees would be paid for by the supposed infringer if you win. The court has discretion but in practice, its rare not to get reasonable legal fees. It also changes the equation when trying to settle the matter out of court. So, registration makes it easier for attorneys to take the case on contingency, which allows you to sue someone without having to lay out a lot of money. The attorneys take it out at the end. Since many infringements are small, attorney won’t do a contingency unless they know there is enough money in it to warrant the risk. If you don’t win, the attorney gets nothing, other than hard costs like filing fees, which you would still have to pay. It could take $5000 in legal fees even for a small claim and you are only entitled to the profit the infringer made, plus any losses on your side such as a licensing fee. So someone could steal your work and lets say they made $2500. It really isn’t enough to sue since the legal fees would be higher than the return. If the work was registered prior to the infringement though, then you would get the legal fees back, making it more lucrative to sue. If some organization, like Forever 21 or Macy’s used your work on a t-shirt, there may be enough money in it for an attorney to take the case on contingency. On the other hand, it’s only $35 for each registration, so a good insurance policy. Although if you put out a lot of work, it could get expensive. If so, you might want to limit registrations to the best work, unless you can afford to register them all. We have a few articles on registration here on the blog, so take a look at those.

The Latest From Artrepreneur

  • Art Walks Put California on Parade

    For most Californians, walking yields to driving as the main mode of transportation. Driving is such a driving force for the state’s residents that “Saturday Night Live” created a recurring sketch about soap opera characters […]

  • The Future is Bright, Say Art Entrepreneurs

    According to a new report by the Strategic National Arts Alumni Project (SNAAP) the old adage of the struggling artist may officially be a myth. SNAAP’s special report, “Career Skills and Entrepreneurship Training for […]

  • Artist Profile: Natalia Nakazawa — Art, Work, and Life

    Natalia Nakazawa is a visual artist who works in mixed media to create paintings, tapestries, and collages. Her latest installation was displayed in a window of the iconic art deco Clocktower Building in Brooklyn’s DUMBO neighborhood. The […]

  • Art Business Conferences for the Art Entrepreneur

    Are you on your way to becoming a thriving art entrepreneur? Check out these upcoming art business conferences to increase your chances for success! The post Art Business Conferences for the Art Entrepreneur appeared first on Artrepreneur. […]

  • Eight Artist in Residence Programs to Launch Your Career

    We’ve previously reviewed how important it is to craft a bio and resume that details your art career, and today we’ll discuss one essential element that’s sure to make your career stand out: the Artist in Residence. Artist in […]

  • Write an Artist Bio to Get Noticed

    Most artists are used to expressing themselves in creative ways, but fewer understand the importance of expressing who they are in words. In this article, we'll review the creating an artist bio while offering some useful tips on its content. The […]

  • Balancing a Full-Time Job with Fulfilling Creativity

    Need more time in your day to work on creative endeavors? Here are few ideas that may help. The post Balancing a Full-Time Job with Fulfilling Creativity appeared first on Artrepreneur. […]

  • Launching an Art Startup? These Online Resources Can Help.

    Launching your own art startup can be scary. Here are a few tips and online resources that may help. The post Launching an Art Startup? These Online Resources Can Help. appeared first on Artrepreneur. […]

  • Expanding Your Art Business Beyond You [Part 2]

    Are you ready to expand your art business? Here's what you need to know about hiring and terminating employees, employee retirement plans and vacation and sick leave. The post Expanding Your Art Business Beyond You [Part 2] appeared first on […]

  • You Don’t Have to be an Artist to Work with Art

    Just because you don’t possess any artistic abilities – or just because you haven’t made it as an artist yet – doesn’t mean you can’t have a creative, art-filled career. There are plenty of “art […]

  • Expanding Your Art Business Beyond You

    Artists successfully running their own art business may be ready to hire an employee. We've covered everything you need to know, from tax requirements to insurance obligations. The post Expanding Your Art Business Beyond You appeared first on […]

  • What Photographers Need to Know About Shooting People [with Cameras]

    In this article, we'll review a key example of publicity and privacy issues, and what you need to know to keep your photography in the clear. The post What Photographers Need to Know About Shooting People [with Cameras] appeared first on […]

  • Getting What You Want: Basic Negotiation Tips For Creatives

    Selling and negotiating can be very intimidating. Fear not! Here are some common sense tips to negotiation that can help you get what you want. The post Getting What You Want: Basic Negotiation Tips For Creatives appeared first on Artrepreneur. […]

  • How to Sell Art [Without Being Annoying]

    Most artists will tell you that the hardest part of their job is trying to sell their artwork to the masses. Sure, they love the creativity and the freedom being an artist provides, but how can they make a living unless they sell their work? While […]

  • Museums Deck the Halls with Holiday Cheer for All

    Check out seasonal exhibits from some of the country’s top art museums. The post Museums Deck the Halls with Holiday Cheer for All appeared first on Artrepreneur. […]

  • Why Galleries Should Get Down with Art Fairs [A Useful Guide]

    As we're winding down from celebrating Art Basel Miami Beach, we're thinking about all the different ways galleries and artists can benefit from participating in these international art fairs. The post Why Galleries Should Get Down with Art Fairs [A […]

  • Your All Access Pass to Art Basel

    Dying to tackle Art Basel Miami Beach, but not sure where to start? You won't want to miss these stunning displays of the best of contemporary art. The post Your All Access Pass to Art Basel appeared first on Artrepreneur. […]

  • Get Your Networking on at Miami Art Week

    Miami Art Week is the perfect time for artists to network and gather contacts to keep building an art business. Check out five events primed to bring new opportunities. The post Get Your Networking on at Miami Art Week appeared first on Artrepreneur. […]

  • The Garment District: From Buttons and Bows to a Home for Art

    The Garment District Alliance has worked hard to evolve the area from a faded industrial center to a revitalized business district committed to bringing art to the streets. The post The Garment District: From Buttons and Bows to a Home for Art […]

  • United States of the Art: Six Destinations for the Great American Road Trip

    A cross-country road trip provides plenty of opportunities to create art. The post United States of the Art: Six Destinations for the Great American Road Trip appeared first on Artrepreneur. […]

  • How Does a Photography Business Make Money?

    Photographers are uniquely positioned within the art world to earn money through various revenue streams. Here's how you find work. The post How Does a Photography Business Make Money? appeared first on Artrepreneur. […]

  • The Basics of Insurance Part II: Health Insurance for Artists

    In this article, we’ll a type of insurance that you’ll want to think about as you build your art business – health insurance for artists. The post The Basics of Insurance Part II: Health Insurance for Artists appeared first on […]

  • The Emergence of the Creative Entrepreneur

    The term “starving artist” has long been part of our lexicon, signifying the significant struggle artists face bringing their creative work to market. For the lucky few that survive until they have paid their dues, the career can be […]

  • Seth Godin and Marketing for the Art World

    A good marketing strategy can help grow a business if done well. Let Seth Godin show you how to be a modern marketer in his skillshare video series. The post Seth Godin and Marketing for the Art World appeared first on Artrepreneur. […]

  • These Five Companies Put the Art in Startup

    Technology and art are intersecting in more ways than ever, and today’s art startups are revolutionizing the way art is consumed and collected. Entrepreneurs have been intersecting art and technology since the start of the .com boom. Portfolio […]

  • The Art Museum In The Digital Age

    I talked with Steve Konick, Director of Public Relations and Marketing for the Currier Museum of Art, in Manchester, New Hampshire, to understand why art museums are still relevant The post The Art Museum In The Digital Age appeared first on […]

  • Should I Open a Corporation for My Art Business?

    About 375,000 visual artists claim to be self-employed yet many don't realize that their personal assets can be at risk. Find out how opening a corporation can help protect you. The post Should I Open a Corporation for My Art Business? appeared […]

  • Model Citizens and Protected Images: Work-for-Hire and Right of Publicity

    Last week, we discussed model releases, and an example concerning a model whose image was being used by a company in a more liberal manner than what had originally been agreed upon by the model and the company. You may recall that in this instance, […]

  • Does Copyright and Trademark Law Protect 3D Printing?

    3D printing is a relatively new art form is sweeping the internet and worrying designers and Hollywood executives alike. Along with the advent of 3D printing, a steady stream of piracy and copyright infringement cases have been reported by industry […]

  • Consider this tip before signing an International Art Contract

    Most art galleries participate in art fairs throughout the year. Many of those fairs are international, such as Art Basel Switzerland or the Hong International Art Fair. International art fairs are an excellent way to position your gallery in […]

  • Six Steps to Safer Image Sharing

    Despite the unfortunate reality that image sharing on the Internet can lead to misappropriation of your work, there are some steps that can minimize the risks. The post Six Steps to Safer Image Sharing appeared first on Artrepreneur. […]

  • Does Freedom of Speech Protect Taking Photos of People Through Windows?

    Fine art Photographer Arne Svenson spent a year secretly taking photos of the Fosters, a family living across the street from his home. Does the Foster's Right to Privacy outweigh Svenson's Freedom of Expression? The post Does Freedom of Speech […]

  • Four Reasons Artists Should Hire Lawyers

    Think artists can't afford to hire lawyers? Actually, artists can't afford to not have one by their side. Here's four reasons why. The post Four Reasons Artists Should Hire Lawyers appeared first on Artrepreneur. […]

  • Death and Taxes: Save Millions Through Careful Estate Planning

    Artists and collectors can minimize estate taxes on artworks by employing a planning strategy and understanding the complexities involved with assessing the work's fair market value. The post Death and Taxes: Save Millions Through Careful Estate […]

  • Can You Spot a Fake? The Trouble with Authenticating Art

    What are the challenges for collectors in authenticating artworks? What are the legal remedies when a purchased artwork is discovered to be a forgery? The post Can You Spot a Fake? The Trouble with Authenticating Art appeared first on Artrepreneur. […]