Category: Intellectual Property

• Copyright FAQs

  

  When I speak, I often refer to previous blog posts as potential resources for attendees. I frequently talk about copyright issues and I realized I haven’t written a post about copyright basics. So let me fix that.

  What is Copyright?
  The copyright law gives you rights to your original work. Your work may be comprised of text, drawings, photographs, video, sculpture, music, etc. When you create something, you have the right to control where your work is copied, distributed, displayed, performed, and what derivative works can be made from it.

  What’s a Derivative Work?
  

  When Do You Get Copyright Rights?
  You get your copyright rights the moment your work is fixed in any tangible medium. It has to be a work you’ve created, not just an idea in your head. You do not have to register your work with the U.S. Copyright Office or even put a copyright notice on your work (“©[YEAR] [YOUR NAME]”) to get your rights.

  How Long Does Copyright Last?
  For all works created on or after January 1, 1978, the duration of copyright is as followed:

  • For work created by an individual: Life of the author + 70 years
  • For work created by a company: 120 years from the date of creation

  After this time period, the work become part of the public domain and anyone can use it for any purpose without needing the copyright owner’s permission. The owner of a copyright can give up their rights to their work at any time by releasing it into the public domain. If they release a work into the public domain, they can never reclaim their copyright rights.

  What’s the Difference Between Copyright and Trademark?
  

  What’s the Benefit of Registering a Copyright with the Copyright Office?
  There are two main benefits for registering your copyright with the U.S. Copyright Office:

  1. It is strong evidence that you actually own what you claim you own.
  2. You cannot sue for copyright infringement unless you register your work with the Copyright Office.

  If you want to be in a position where you can sue for copyright infringement when someone steals your work, talk to a copyright attorney about your copyright strategy. There are many ways to protect your work. This is where the law can get really complicated and you want to make sure you’ve set yourself up for your desired outcome.

  How Do You Register Your Work with the Copyright Office?
  You can register your work on the Copyright Office’s website. You’ll need to fill out the form, upload a copy of your work, and pay a filing fee. The filing fee for a single work is $35-55. You can do this yourself, but the Copyright Office’s website is not very user-friendly.  I recommend at least hiring an attorney to walk you through the process the first time.

  If you want to do it all yourself, allot at least 2-3 hour to get through it the first time. And you might want to have an adult beverage on ice as a reward at the end of the process.

  To put it in context, it took me an hour the first time I registered my own work and I knew what I was doing. (I have a certificate in intellectual property in addition to my law degree.) Now, I can submit an application to register a copyright in under 30 minutes most of the time.

  I hope this has been helpful. If you have questions about how copyright works in terms of the internet, social media, and /or blogging, please check out my book, The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed. Approximately half the book addresses copyright issues.

  If you want to talk more about copyright, feel free to connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
  Please visit my homepage for more information about Carter Law Firm.

  June 24, 2014

  •

  Ruth Carter

  •

  Intellectual Property, Photography & the Law

  arizona copyright attorney, Carter Law Firm, copyright basics, Copyright infringement, copyright law, copyright registration, copyright rights, derivative works, Phoenix copyright lawyer, Ruth Carter

• Intellectual Property in Comic Books

  

  I had the pleasure of presenting on Comic Book Creator Rights with the award-winner comic author Mike Baron at Phoenix Comicon last weekend. We talked about how important it is for writers and artists to understand what rights they have in their work and the various ways they can protect it.

  Copyright
  An artist or writer has copyright rights in their work the moment they put fingers to keyboard or pen to paper. As the owner of their work, they can control where their work is copied, distributed, displayed, performed, and what derivative works can be made.

  Unlike books where a complete story is often contained in a single volume, a comic book story may be broken up into several 22-page issues. One thing Mike and I suggested to our audience was registering the copyright in the “story bible” as well as each issue that the artist creates. A story bible is a master document that lays out the setting and norms of that universe and the backstory and characteristics of each major character.

  The copyright laws regarding infringement for published and unpublished works are different, and under the current laws (that are in need of overhaul), a work that is released only online is “unpublished.” To maximize your options for recourse (i.e., financial damages), I advise artists to register their work with the U.S. Copyright Office before they release it if it is unpublished. Mike also suggested doing a short run of each issue so the work will qualify as “published” and the rules about when you have to register to be eligible for what’s called statutory damages are more favorable.

  Trademark
  A comic book artist could have several trademarks related to their series – the name of the series, logos, slogans, and the name and possibly depiction of the characters. Any or all of these could be trademarks used to market the artist’s work.

  For each of these potential trademarks, it’s a good idea to run a search on the U.S. Patent and Trademark Office’s (USPTO) trademark database to make sure that another artist doesn’t already have the exclusive right to use that trademark in relation to comic books or similar products. If they do, they can force the other person to rebrand.

  If the desired trademarks are available, putting a superscript “TM” next to them will put everyone on notice that the artist is using them as trademarks, not just elements in their series.  Registering them with the USPTO will increase their value and give the artist the exclusive right to use those trademarks. No one else in the industry could have the same trademark in the U.S. Registration also increases their value and may make the artist’s work more desirable if their goal is to be acquired.

  Identifying and creating a strategy to protect your intellectual property is complicated, so if you want to talk more about this subject, feel free to  connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
  Please visit my homepage for more information about Carter Law Firm.

  June 12, 2014

  •

  Ruth Carter

  •

  Business Law, Geek Law, Intellectual Property

  Arizona copyright lawyer, comic book copyright, Comic Book Creator Rights, comic book trademarks, creator rights, Mike Baron, Phoenix Comicon, phoenix trademark lawyer, Ruth Carter

• Fan Art and Copyright: You May Have Rights

  

  Let me tell you a story. MGM owns the copyright for The Wizard of Oz. In 1976, they hired Bradford Exchange to create a series of Wizard of Oz collector plates. Bradford had a competition for the “Dorothy” plate design. Jorie Gracen submitted a design that clearly depicted Dorothy, Toto, and the yellow brick road, but the image doesn’t match any screenshot from the film. Gracen’s design won but she refused to sign the contract to turn her painting into the plate. Bradford allegedly gave her painting to another artist who used it to create a similar design which was made into the plate.

  Gracen sued Bradford and MGM for copyright infringement…and she lost, but this is a pivotal case regarding derivative works.

  

  The collector plates were derivative works; however, Gracen was acting in compliance with Bradford’s direction when she created her design. She couldn’t get a copyright in her work because it was based on the movie but she couldn’t get in trouble for simply creating it for the contest.

  Bradford’s mistake was they didn’t include a copyright assignment or license in the competition rules. I would expect a similar contest to include a provision that everything the artist creates for the contest becomes the proper of the contest organizers or the company they represent.

  Here’s the big lesson I take away from this case – if a copyright holder tells fans to create fan fiction or fan art, the fans’ work may not be original enough to warrant their own copyrights, but they shouldn’t get in trouble for creating something that they have been authorized to create.

  However, the fans may only be able to create fan fiction or fan art; they may be committing infringement if they try to distribute it. I would expect the copyright holder to be especially upset if you try to sell your work because you could be interfering with their profits and/or hurting their brand with inferior artwork.

  I will be doing two panels on copyright at Phoenix Comicon this weekend:

  • Comic Book Creator Rights, Saturday, June 7, 2014, 10:30 a.m., North 130 with Mike Baron
  • Copyright and Fan Fiction/Art, Sunday, June 8, 2014, 12 p.m. North 130

  Copyright is a murky subject. If you want to chat more with me about this subject, connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
  Please visit my homepage for more information about Carter Law Firm.

  June 5, 2014

  •

  Ruth Carter

  •

  Geek Law, Intellectual Property

  Carter Law Firm, Copyright and Fan Art, Copyright and Fan Fiction, Gracen v. Bradford Exchange, Mike Baron, Phoenix Comicon, Ruth Carter, Wizard of Oz plate copyright case

• Is It Fan Art or Copyright Infringement?

  

  I have the pleasure of speaking about copyright and fan fiction and fan art at Phoenix Comicon this year. It’s always fun to hear about the projects fans are working on, and to see that so many of them are mindful about the copyright. I wish I had more black and white answers for them about what they can and can’t do.

  Fan fiction and fan art falls squarely into the murky realm of copyright and fair use. The owner of a copyright controls where and how their work is copied, displayed, distributed, performed, and what derivative works are made. Fan fiction and fan art can be derivative works but they also may be protected by fair use.

  Fair use is part of the copyright laws that acknowledges the fact that many works are inspired by past art. This law allows artists to build on existing works in creative and innovative ways. One thing to always remember is that fair use is a defense, not a permission slip. There is always a risk that the copyright holder will claim you’re infringing on their copyright and you’ll have to basically tell the court, “Yes your honor, I used their work but it’s OK because . . . .”

  When a court considers a fair use case, these are some of the main factors it considers:

  • Purpose and character of your use of another’s work (Is what you did transformative and did you do it for commercial use?)
  • Nature of the copyrighted work (What did you copy?)
  • Amount and substantiality of the copyrighted work used (How much of the original – quality and quantity – did you copy?)
  • Effect on the market (Would someone seek out the original and accept your work as a substitute?)

  These are some of the main factors, but the court can consider others if it wishes. This is also not to be treated as mathematical equation. Regardless of how many fair use factors favor you, you can always lose.

  For Phoenix Comicon this year, I wanted to create an easy mnemonic device that fans can use to remember the fair use factors; and here it is: PAIN.

  P = Purpose and character of your use

  A = Amount of the original used

  I = Impact on the market

  N = Nature of the work you copied

  Another thing to consider if you want to use another artist’s work is how the copyright holder historically responds to fan fiction and fan art. Some encourage it; some are OK with it as long as you’re not making money off of it; some are OK with it as long as it’s not sexual (i.e., slash fiction); and some dislike all fan fiction and fan art and will try to lay the smackdown on you if you create it.

  If you want to talk more about the legalities of fan fiction and fan art, come see me at Phoenix Comicon on Sunday, June 8th at noon. Both talks will be in North 130. I’m also doing a panel on Creator Rights on Saturday, June 7th at 10:30 a.m.  You can connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
  Please visit my homepage for more information about Carter Law Firm.

  June 3, 2014

  •

  Ruth Carter

  •

  Featured Post, Geek Law, Intellectual Property, Photography & the Law

  Carter Law Firm, Copyright, Copyright infringement, Fair Use, Fair use mnemonic PAIN, fan art, fan fiction, JD Hancock, Phoenix Comicon, Ruth Carter

• How to Avoid Being the Next Social Media Horror Story

  

  I had the pleasure of presenting Social Media Horror Stories (and How to Avoid the Same Fate) at the Arizona Technology Council Lunch and Learn this week.  For those of you who weren’t there, I got to tell the stories of major missteps companies and individuals have committed with their social media activities and how to avoid the same mistakes. In every situation, the problems could have been avoided or mitigated with proper education, forethought, and applying common sense.

  This is my recommended follow-up plan for attendees:

  Register Your Trademarks
  To avoid problems with your competition, register the name of your company, products, blog, logo, and/or tagline with the U.S. Patent and Trademark Office. Without registration, the law only protects your right to use your trademarks in your established geographic market (which can be challenging to discern when your business is 100% online). You don’t want to find yourself in the Burger King situation where your market is limited or the Turner Barr situation where your business is essentially shut down because someone else registered your mark.

  Before you launch your next company, product, or marketing campaign, be sure to check the Trademark Office’s database to make sure that someone else doesn’t already have the exclusive rights to use your desired trademark.

  Check Your Contracts
  If you outsource any of your content creation or marketing activities, review your contracts carefully. Look for information about who owns the social media accounts and any content created on your behalf. Also look for provisions that address potential problems and whether you will be indemnified if you’re sued or get in trouble because of something a third party did on your behalf.

  Remember that website terms of service are also contracts. Make sure you understand the implications of using a social media platform or web-based service. Your site may also have terms of service that manage your relationships with your users. Make sure they’ve been written to suit your needs.

  Be Careful About Copyrights
  When a person owns a copyright in text or an image, they have the exclusive right to control where they work is copied, distributed, and displayed. If you want to use their work, you often need to obtain permission or risk being accused of copyright infringement.  I frequently see people pulling images from search engine results without considering the artist’s rights. Many people think they can use whatever they want as long as they give an attribution and link back to the original, and that’s just not true. If you’re looking for images for your site, consider using Creative Commons. I always use images that come with the license that allows me to modify and commercialize the artist’s work.

  When it comes to your own copyrights, decide in advance how you want to react when someone steals your work and plan accordingly.

  Check Your Social Media Policy
  I’m an advocate for the idea that companies should generally leave their employees alone when they’re on their own time, including what they do on social media. However, I’m also a huge proponent of the idea that every company needs a social media policy. Employees need to understand what their dos and don’ts are when it comes to their personal profiles and blogs, and employers need to understand that their social media policy needs to comply with the National Labor Relations Act. If your policy prohibits employees from saying anything damaging about the company online, it’s likely illegal and if you fire someone for violating an illegal policy, you could easily face tens of thousands of dollars in legal fees and damages. This is an area of law that is still developing, so please have  lawyer help you write your policy so it complies with the law.

  Review Your Crisis Response Plan
  For most companies, the question isn’t if it will face a crisis, but when. Every company should have plans in place for dealing with expected problems, including pre-writing content for the media and social media, so what when an problem occurs, everyone knows what their role and the protocol that everyone will be following. When you’re having your planning sessions, it’s a good idea to have your legal counsel present to assist from a legal perspective.

  If you want a resource for you or your staff regarding the legalities of social media, please check out my book, The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed. If you’re interested in guerilla marketing, my book on Flash Mob Law will be available on Amazon in June 2014.

  If you want to talk more about social media law, you can connected with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
  Please visit my homepage for more information about Carter Law Firm.

  May 28, 2014

  •

  Ruth Carter

  •

  Business Law, Featured Post, Intellectual Property, Internet law, Legalities of Blogging

  Carter Law Firm, crisis response plan, outsource content contracts, Ruth Carter, Social Media horror stories and how to avoid the same fate, social media law, social media lawyer, Social media policy, terms of service contracts

• Register Your Copyright Before You Self-Publish

  

  A few days ago, a friend and fellow author posted on Facebook that someone put his book online as a free download without his permission. Some authors make their work available for free as part of their marketing campaign and that’s their prerogative, and they control where and when they do this.

  My friend and I started chatting about what he wanted to do to remedy this situation. A person who owns a copyright has the right to control where their work is copied, displayed, and distributed and has recourse if someone else steals or uses their work. If someone blatantly copies your work and is giving away copies of it, it’s likely copyright infringement.

  I thought my friend could qualify to sue for copyright infringement and sue for statutory damages. The copyright laws say that if someone willfully steals your work, you can ask the court to award you up to $150,000 plus attorneys’ fees. Alternatively, you could ask for actual damages, which is how much money you actually lost due to the infringement.  My friend is self-published in this case, so I suspected the potential statutory damages would be higher than the actual ones.

  Then my friend dropped a bomb – he hadn’t registered his copyright yet.

  I cringed with defeat.

  My friend is a smart guy, so he knew that he couldn’t sue for copyright infringement until he registered his copyright.  What he didn’t know what that you have to register your work within 3 months of publication or 1 month of learning of the infringement – whichever happens first – to be eligible for statutory damages.  He can still register his work and sue for the actual damages (which is likely low) and he’d be responsible for paying for his attorneys’ fees. If he doesn’t want to put in the time, energy, or money to sue for infringement, he can still get is legal eagle friend (that’s me) to send a cease and desist letter or a DMCA takedown notice to try to make the infringement stop.

  So here’s the take-away lesson from my friend’s experience: If you are a self-published author, register your work with the U.S. Copyright Office before you offer it for sale or download. That way, if someone steals your work, all your options for recourse will still be available to you. You can register your work online and the application fee is only $ 35 or $55, depending on your situation. And if you don’t want to register your work yourself, it’s not that expensive to hire a lawyer to do it for you.

  If you want to talk more self-publishing and copyright, you can connected with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me.  You can also subscribe to the Carter Law Firm newsletter.
  Please visit my homepage for more information about Carter Law Firm.

  May 27, 2014

  •

  Ruth Carter

  •

  Intellectual Property

  Carter Law Firm, Copyright infringement, copyright law, copyright registration, DMCA takedown notice, indie author, indie publishing, register book copyright, Ruth Carter, self-publishing

• U.S. Copyright Office is Raising its Filing Fees on May 1, 2014

  

  Last week, the U.S. Copyright Office announced that it is raising its fees to register your work. Effective May 1, 2014, the cost to register a single work or a collection of works using their online system will go up from $35.00 to $55.00 per application. For those of you who are old school and prefer to register your work by mail, the fee will go up from $65 to $85.

  So if you have projects that you were planning on registering with the Copyright Office, now would be a really good time to get them done.  You only have to get your application in before May 1st; it may take the Copyright office until after May 1st to process it.

  There is one piece of good news in the fee hike announcement. The U.S. Copyright made an exception for individuals who are registering single works that are not “works made for hire.” If you are a photographer, writer, or some other artist and you want to register you works individually, your filing fee will remain at $35 per application.

  I had a question about this exception because I know many artists who create a lot of works that are not works made for hire, but they do it under an LLC for liability and tax purposes.  I called the Copyright Office and they confirmed that you only qualify for the $35 fee if you register as an individual person. If you register your work under your business name, you have to pay $55 per application, even if you are the only person in the business.

  

  The only things that are changing on May 1st are the Copyright Office’s fees. The rest of the copyright laws have remained the same.

  To qualify for a copyright, you need an original work of authorship that is fixed in any tangible medium. When you have a copyright, you have the exclusive right to control where your work is copied, distributed, displayed, performed, and what derivative works can be made from it. You get these rights the moment your work is created, even if you never register it with the Copyright Office and even if you don’t put a copyright notice on your work – i.e. “© [Copyright Owner’s Name] [Year].”  If you register your work, your registration provides the presumption of ownership and validity of your copyright rights. If you ever want to sue for copyright infringement when someone steals your work, you must register your work with the U.S. Copyright Office first.

  If you want to talk more about copyright, copyright registration, or intellectual property strategy, connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. If you post your original work online, I strongly recommend you check out the many chapters on copyrights in my books:

  • The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed
  • The Legal Side of Blogging for Lawyers

  Please subscribe to the Carter Law Firm newsletter and visit my homepage for more information about Carter Law Firm.

  April 15, 2014

  •

  Ruth Carter

  •

  Business Law, Intellectual Property, Internet law, Legalities of Blogging

  Arizona intellectual property attorney, Carter Law Firm, copyright law, copyright registration, copyright registration fee, copyright rights, how to register a copyright, intellectual property strategy, Phoenix copyright lawyer, Ruth Carter

• Legal Issues if you Outsource your Blog Content

  

  I don’t believe in outsourcing my blog content, but I understand that some people do because they’re busy, or they’re afraid they’re not a good writer, or they’re not dedicated to maintaining their site. Whatever the reason, it happens. If you fall into this boat, there are some legal ramifications you need to be aware of and plan for.

  Regardless of who you use to write your blog material, you should review every post before it goes up to ensure that the content is accurate, especially if you work in a field where misstatements can happen and readers could be harmed if they rely on your blog’s information.

  Copyright
  If you outsource your blog to a third party, your content creator owns the copyright in whatever they create for you unless you have a contract that states otherwise. Without this contract, they own everything and, at most, you have an implied license to use it on your site. If you want to repurpose a blog post, you have to get your writer’s permission; otherwise, you could commit copyright infringement by reusing the material from your own site.

  Indemnification
  When your writer creates a post, you often do not know what source material they used or where they got the images for each post. (Yes, every blog post needs an image.) There is always a risk that your writer will rip off someone else’s verbiage or image without your knowledge.

  If you do not review each post before it is released on your site, there is a risk that your writer could post something defamatory or harmful to another person. The alleged victim in that case might sue you for damages because they were injured because of your website. To avoid this problem, you can protect yourself with an indemnification clause that holds the blogger responsible for the damage they cause or at least requires them to a pay your attorneys’ fees and/or damages assessed against you.

  Clear Contracts
  If you work with a third party content creator, you want a clear contract that explains all the pertinent aspects of your relationship – what they will create for you, deadlines, who is responsible for website problems, if they’re allowed to write similar content for others, how you’re going to resolve problems, who will own the copyright, and if the writer can use posts as work samples if they assign the copyright to you.

  I love contracts. If the term “contract” is a turn-off for you, think of it as a relationship management document. All it is a document that lays out how your relationship is going to work. I made a video this week about how awesome contracts are.

  When you work with third party content creators, not having a contract is not an option. If you want to chat more contracts for your content creators, connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also check out my books about the legalities of blogging:

  • The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed
  • The Legal Side of Blogging for Lawyers

  Please subscribe to the Carter Law Firm newsletter and visit my homepage for more information about Carter Law Firm.

  April 10, 2014

  •

  Ruth Carter

  •

  Business Law, Featured Post, Intellectual Property, Internet law, Legalities of Blogging

  blog copyright, Carter Law Firm, copyright license, outsourcing your blog, Ruth Carter, third party content creator contracts, work made for hire contracts, working with blog writers

• Can You Trademark & Copyright a Phrase?

  

  I saw this tweet come through my feed over the weekend.

  RT @ilenegold: @fatgirlphd Please tell me you have the phrase “Terminally Soulless Douche Canoe” trademarked and copyrighted.

  — Brian Cuban (@bcuban) March 30, 2014

  
  It made me grin, and then my big dorky legal brain kicked in and had to analyze the possibilities.

  Can You Trademark a Phrase?
  It depends.

  If a phrase is being used as a tagline or slogan for a company or product – think “M’m! M’m! Good!” for Campbell’s Soup or “Just Do It” for Nike – then yes, you can trademark it. If it’s just a phrase that’s not connected to a product or service, then it’s not trademarkable.

  The purpose of the trademark is to differentiate similar products and services from each other so consumers know what they’re buying. When you register a trademark, you have to tell the U.S. Patent and Trademark Office what you’re claiming as your trademark (name, logo, slogan, etc.) and on what product or service you’re using it. A cool phrase without a product or service is just a phrase. It can’t be protected with a trademark.

  Can You Copyright a Phrase?
  Probably not.

  The purpose of a copyright is to entice authors and artists to create works by giving them the exclusive right to control where their work is copied, distributed, displayed, performed, and what derivative works can be made from it. They have these rights the moment the original work is “fixed in any tangible medium.”  A phrase is often too short to be original so it doesn’t qualify for a copyright, even if it is fixed in a tangible medium like on paper or a digital file. If a person had a copyright in a phrase, they could stop others from using it in their work and it would create a big mess.

  Think about Paris Hilton and “that’s hot.” She does have a trademark that phrase in conjunction with “multimedia entertainment services” and alcoholic beverages. She can stop you from using “that’s hot” as a slogan or product name in those industries, but she can’t stop you from saying “that’s hot” in general.

  What about “Terminally Soulless Douche Canoe?”
  “Terminally Soulless Douche Canoe” is an awesome phrase. You could use that as a company name, product name, or slogan if you want, but you have to be able to identify what industry that company or product is in. Unfortunately, even though I think it’s highly creative, it’s too short to get a copyright by itself. If it was part of a larger work – such as an essay, blog post, poem, book, or integrated into a work of art – the artist would likely have copyright protection for the larger work, but probably not for the phrase alone.

  For more on the difference between trademark and copyright:

  If you want to chat more about trademarks and copyrights, connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
  Please visit my homepage for more information about Carter Law Firm.

  March 31, 2014

  •

  Ruth Carter

  •

  Intellectual Property, Internet law

  Arizona copyright lawyer, Arizona intellectual property law firm, Carter Law Firm, copyright a phrase, difference between copyright and trademark, Paris Hilton trademark that’s hot, phoenix trademark lawyer, Ruth Carter, Terminally Soulless Douche Canoe

• How to Register a Trademark with the USPTO

  

  I’ve had several people ask me what is involved in registering a trademark with the U.S. Patent and Trademark Office (USPTO). Your trademarks include the names, logos, tag lines, and anything else you put on your products and services to inform customers about the source and quality of what they’re buying.

  Once you have a trademark registered with the USPTO, you have the exclusive right to use your trademark on your goods or services anywhere in the U.S.  If anyone tries to start similar business or sell a similar product with trademark that is too similar to yours, you can make them change it. The only companies that can have the same trademark as you are companies who were using the same trademark before you registered yours with the USPTO (i.e., the Burger King situation) or companies that use a similar trademark but on a product that is so different from yours that no one would think that they are owned by the same company (i.e., Delta Faucets, Delta Dental, and Delta Airlines).

  Here is the process that I go through to register a client’s trademark with the USPTO:

  1. Clarify what the trademark is and what products or services it’s being used on. You can only claim rights to a trademark that you’re using in commerce or expect to use within six months.

  2. Determine if the desired trademark is trademarkable – not every trademark is. Your trademark can’t be the product itself.

  3. Check the USPTO database to make sure no one else has registered the same trademark on a similar product as my client’s.

  4. Evaluate if others are using the same trademark without registering it with the USPTO. Once your have a registered trademark, these companies can keep using it in their established geographic market, but they can’t expand without rebranding.

  5. Complete the USPTO trademark application which includes determining the best description of the product and which class(es) of products we’ll be applying for. The USPTO charges a fee for each class of products you register the mark for.

  6. Submit the application to the USPTO with the filing fee.

  7. Wait three or four months for the USPTO to get around to reviewing your application. Yes, their backlog is that big. Once I submit an application, I typically check on it at the beginning of each month to see if it’s been assigned to a reviewing attorney at the USPTO.

  8. Respond to any Office Actions if we receive any from the USPTO. An Office Action is a communication from the reviewing attorney that says that there’s a problem with the application. They may request clarification, a disclaimer, or claim that the desired mark can’t be registered. Depending on what the USPTO and my client wants will determine how I respond and how much work will be required.

  9. Once the USPTO approves the mark, they will publish it on its official gazette. This puts everyone on notice that your mark is about to be approved. If no one objects within thirty days, your trademark will be registered.

  You should expect the entire registration process to take at least eight months, but it could be longer. Once you have a registered trademark, you can use the ® next to it. You will continue to have your trademark rights as long as you’re using it in commerce. The USPTO requires that you send in update affidavits periodically that verifies that you’re using the trademark. If you don’t use your trademark for three consecutive years, it will be considered “abandoned” and anyone can use it.

  If you’re looking for more information about what a trademark is and the benefits of registering it with the USPTO, I made a video about it.

  If you want to chat more about trademark registration, you can connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
  Please visit my homepage for more information about Carter Law Firm.

  March 6, 2014

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  Ruth Carter

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  Business Law, Featured Post, Intellectual Property

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