This past week I had the pleasure of speaking to the American Advertising Federation’s Jackson Chapter about intellectual property law for the creative professional. The audience was made up of advertising agencies, graphic designers and public relations individuals. As you can imagine, the group had a lot of really great questions. I enjoyed their group and our interaction.
In other big Mississippi trademark news, The University of Southern Mississippi unveiled a new logo this week. One of Mississippi’s state colleges has been in a trademark battle for many years and without an officially registered trademark. This past week The University of Southern Mississippi, better known as Southern Miss, revealed its new logo featuring the golden eagle. They did so with much fanfare and even with a website included. You can view the new website showing off the new eagle logo HERE.
In or around 2003, The University of Southern Mississippi revealed a new logo and started seeking trademark protection by receiving a federally registered trademark. When published for opposition in the USPTO Trademark Gazette, The University of Iowa opposed Southern Miss’s federal trademark application on grounds that it was confusingly similar to the University of Iowa’s previously used mark of 30 years and the federally registered hawk head design. The University of Southern Mississippi lost their fight and have been without a registered trademark, until this week when a new logo was revealed. The website mentions how the “application has been filed.” The USPTO shows it is Live with opposition published in May of this year.
With preparation to speak to mainly advertising agencies and The University of Southern Mississippi’s trademark woes fresh in my mind, today’s post focuses on the 5 most common misconceptions I hear as it relates to trademarks and branding.[i]
1. I can use ® as soon as I create a new logo/brand for someone.
Actually, you cannot. Using the ® is a right only the owner of a mark/brand that is actually federally registered enjoys. It is a privilege and something you must earn the right to use by registering with the USPTO.
2. A trademark is only the name of a company. So long as a company name clears a Google search, I am good to go.
A really great trademark is more than just the name of a company. It is the overall logo and brand. It can include color. It can include creative design elements. It can even include smell and sound, in some cases. The more of these elements you can include, then the more creative and easily registerable your mark becomes. Google is a great place to start, but is certainly not the end of the analysis. The best way to be sure you can use your name is to have a trademark search completed and analyzed by a trademark attorney.
3. Once a trademark is secured with the USPTO, then no other steps are needed from the Agency standpoint.
The Agency in a very real sense has a duty to educate the client about usage of the mark. This includes things like developing brand guidelines. Working and educating the client about how the mark should always appear as well as ongoing consultation. Consistency is key to create a strong brand, but it is also legally necessary when creating a legally defendable trademark. If your current advertising agency does not continually engage you, as the client, in conversations regarding consistency, then you need to find another advertising agency and soon.
For more see, Why Reviving Colonel Sanders Was Legally Necessary
4. Believing a newly created logo/brand automatically includes them as holding trademarks and or copyrights on designs, names and tag-lines that fall under that brand
The design and branding work is important. Good branding and design can and should take steps to protect the work. But, trademark work does not receive automatic protection. First, the client must take steps to actually use the mark in a commerce. The greatest mark in the world will not receive protection if it simply sits on a shelf and is not in use in commerce. Short phrases, names and taglines would not be subject to copyright protection; therefore, seeking trademark law would be necessary. Copyright protection exists at the moment of creation. However, trademark law requires some extra steps.
5. The assumption that if a business owner has secured a .com domain address they have also automatically secured the rights to the business name too.
Securing a .com or .org is a great first step in establishing rights in the name of your business. But it is just that – a first step. While you might rightfully have all the domain names you do not have trademark protection. In fact, there might be someone else who is in the process or in the final stages of securing their trademark. Securing and using a website will demonstrate use in commerce, but it is by no means the stopping place for protecting rights.
I loved speaking to this group and sharing my love of copyright and trademark law! What branding misconceptions or ideas have you run across with in using trademark and copyright law? Take part in the Comments section below and Stay Tuned In!
[i] Thank you to Paul Mitchell with The Mabus Agency for providing some thoughts and serving as a sounding board. You can find examples of their work by going to www.mabusagency.com
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