Home | Trademarks | Should An Artist Trademark Their Name? [Part I]
Trademarks

Should An Artist Trademark Their Name? [Part I]

Trademark

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.  However, it’s important to understand that applying for a trademark does not guarantee acceptance. As always with art law, there is no simple answers, only 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. 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, only to find that the bag fell apart three months later. Let’s apply that concept to artists: a photographer would not want to see merchandise bearing photos that appear similar to their own with the photographer’s name (wrongly) attached. It is not the photographer’s photo, so there is no copyright violation. The only way the photographer would be able to seek redress is through trademark law. 

A trademark is evidence that you are the rightful user of the name for a particular type of product.  It’s a lot easier to sue someone to make them stop using your name, then it is to prove they’ve infringed on your copyright: Just think about how much easier it is if you don’t have to prove that it is, in fact, your name. (It’s tens of thousands of dollars cheaper, too).

What Type of Names Can Have a Trademark?

Names of people and companies, business logos and symbols, and particular sounds can all be trademarked. However, surnames are often refused a trademark registration, if the applicant is unable to show that the surname is in some way distinctive.  “Acquired distinctiveness” means that the trademark has been used for a long period of time, 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 has acquired distinctiveness, and therefore can be a registrable federal trademark.

trademark
Most fashion brands trademark their name.

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.  Pablo PicassoMichael 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 a trademark because ‘mini’ merely described the size of the iPad.  So in removing mini, you are left with iPad which is already Trademarked. (For more, click the article here).  For example, you might try to register John Smith Fine Photo or JS Photography, which doesn’t use the proper name, rather than John Smith Photography.

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 making, offering, or producing; otherwise known as 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, 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 a photographer who uses my images to make pillows and rugs.  I am selling them in my online store so they are “in use;” or used in commerce. The trademark class that includes pillows and rugs is #20. (Note: 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).

 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.  Additionally, someone named Steve Schlackman can make Steel Beams which is Class 6 (metal products) and can also apply for a trademark for that class.

trademark
Coca Cola’s trademark likely extends across every product 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 takeaway 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 (and 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, we’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.

 

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 steve@orangenius.com. His photography can be seen online at Fotofilosophy.com or on display at the Emmanuel Fremin Gallery in New York City.

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  • 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.

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