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Why You Need a Trademark Now


Most business owners in the art community will consider registering a trademark for their businesses at some point. Very often trademarks are relegated to the “nice to have” column, replaced by what are believed to be more pressing business concerns. However, trademark protection should be given priority because, without it, a business owner may lose their brand name and waste the marketing efforts that helped make the brand recognizable in the marketplace.

Why Do We Have Trademark Law?

A trademark is a word, phrase, symbol or design that identifies and distinguishes a product or service. Before trademarks, two or more entities could have the same name and sell the same types of products, making it difficult for consumers to distinguish the two. So one of the primary goals of trademark law is to reduce the “likelihood of confusion,” by allowing only one entity to use a specific name for a particular set of products or services. As well, “likelihood of confusion” can occur when names are similar, not only when they are the same.   If a trademark holder has the mark for “Shirtly”, another company cannot use anything that sounds like or looks like that name. The Trademark owner can likely stop a company from using Shirty, Shirtz or Scherty.

While trademark protection is available on the state level, Federal Trademarks are national in scope. Regardless of where the brand’s products or services are sold, nobody can use the same or similar name for the same types of products or services anywhere in the country. However, that protection only applies to the products and services the owner produces. If the trademark holder chooses product or services he or she never intended on producing, then the owner may risk losing it.

When filing an application for a trademark, the user selects products or services from U.S. Acceptable Identification of Goods and Services Manual, which contains 45 classes (like categories) and over 80,000 items. Trademarks are only valid for the products and services chosen. For example, Company A using the brand name “Alligator” for their line of tractors can receive a trademark for producing “tractors,” which is in Class 07 Machines and Machine Tools. No other person or company can use the name, or register a Federal trademark for “Alligator” in conjunction with tractors or any tractor related products in the United States. However, Company B can use “Alligator” or apply for its Federal Trademark for any product or service not related to tractors in class 07 or any others in the remaining 44 classes.

Products and services can be very specific. Below are some standard items a photographer might choose from the manual.

  • 009   Downloadable photographs in the field of {indicate subject matter or field, e.g., automobiles, cats and dogs, etc.}
  • 016   Photograph albums
  • 016   Photographs [printed]
  • 016   Photographs that have been computer manipulated and enhanced to look like paintings
  • 045   Providing a website featuring listings and photographs of pets available for adoption and related information concerning pet adoption

Trademark Registration Should Be Done as Soon as Possible.

Given the breadth of coverage for a trademark, those who delay in filing, may find themselves losing their brand name. Let’s say you start a company in Miami called Photo Philosophy, which does unique stylized corporate photography. Your company spends two years building the brand such that corporations around Miami begin to recognize your brand name. You have an excellent social media following; lots of Facebook likes, a steady Instagram presence. Your marketing strategy is working, and you are making a lot of money. Then you receive a cease-and-desist letter from a photography company in Santa Monica, specializing in event and wedding photography. The letter says that the company has a trademark for Photo Philosophy and requires that you stop using the name. Your two years of branding just went out the window. Scenario 2: the company is called Fotofilosophy. It’s not the same, but that doesn’t matter. It’s still likely that people would confuse the two companies because the names are so similar.

I can hear you saying, “but one is in Santa Monica, and the other company is in Miami. People won’t be confused.” Well, remember, Trademarks are national. It doesn’t matter whether the Santa Monica company has offices in Miami or even sells in Miami. Perhaps they do a booming Internet business, selling to people in Miami or they might decide to go national at some point. It may be possible to work out some a co-existence agreement so both of you can use the name, but that may take time and cost money in legal fees.

If the Miami company had registered Photo Philosophy when they started their business, the trademark would have been rejected. The company could have changed its name before having initiated any significant marketing efforts, minimizing any losses. Alternatively, if the Santa Monica company had started its company after the Miami company, then the Miami company would have had priority and would be the one sending a cease-and-desist letter.

Beware: A Trademark Registration Can Alert Others Of Your Infringing Activities

If you have been running your business for a while, and this article prompts you to get a trademark, be aware that your trademark registration can inform other trademark holders of your existence. Most trademark holder hire companies that alert them when similar names are registered. So if you are considering registering your mark, you should consult an intellectual property attorney. Don’t use services like Legalzoom because those services won’t be able to advise you properly. If another similar mark is already registered, you may need to change your brand name, but at least you can do it slowly, in a way that limits any damage from the change.

If you are wondering how often trademarks are opposed or cease and desist letters are received; the answer is quite a lot. The Trademark Trials and Appeals Board has thousands of opposition g new trademarks on the basis of “likelihood of confusion.” Many of those companies end up withdrawing their applications and changing their names, although many end up with co-existence agreements.

So I urge everyone to at least contact an attorney about using trademark to protect your brands. Also, there are some special considerations if your business name is also your own name. If that is the case, you may also want to read my article on Trademarking your Personal Name.

If you have any thoughts or question that might be helpful to our readers, please leave them in the comments section.

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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