Many business owners have logos that represent their brand. And the majority of them didn’t create the logos themselves. Chances are, you hired a graphic designer to create your logo based on some idea you verbalized to them about what you wanted it to look like and voila, your logo was born. My guess is you paid the guy a couple hundred dollars, he delivered the logo, and you went on your merry little way.
Problem is, you only paid for his services, not the actual results and proceeds of his services, which are subject to copyright protection. Copyright ownership exists with the originator of the work and that right of ownership can only be transferred by a written work-for-hire document in compliance with United States copyright law. Without the work-for-hire, you’re infringing on the graphic designer’s copyright – the one you paid to create it, the one you gave the idea to form it, yea, he actually owns the copyright in your logo. Not you.
So, before you take the step to protect your logo under trademark law, you might want to make sure you actually own it first. While the USPTO isn’t searching copyright records to see who owns the design of your logo, you definitely don’t want to build a brand appearance centered around a design you don’t have the rights to exploit.
That brings me to some things you might want to consider when designing your logo with your graphic designer. Keep the trademark law in mind in order to maximize your chances of registration.
Trademark law classifies the distinctiveness of marks under the following categories (from most to least distinct): fanciful; arbitrary; suggestive; descriptive; and generic.
Fanciful marks are invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark. Some examples are Exxon, Kodak, Xerox.
Arbitrary marks utilize a device having a common meaning that has no relation to the goods or services being sold. Examples include Apple for computers and smartphones, Camel for cigarettes, and Shell for gas stations.
Suggestive marks are those marks that suggest a quality or characteristic of the goods and services. Although suggestive marks are not as strong as fanciful or arbitrary marks, suggestive marks are more common due to the advantage of tying a mark to the product in a customer’s mind. Suggestive marks are often difficult to distinguish from descriptive marks, since both are intended to refer to the goods and services. Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods; wehereas, descriptive marks allow consumers to reach that conclusion without such imagination, thought or perception. Examples of suggestive marks are Microsoft (microcomputer software), Airbus (aeronautics company), KitchenAid (home appliances).
Descriptive marks merely describe the services or goods on which the mark is used. Descriptive marks are in essence not a mark, since it doesn’t serve to identify the source of the goods or services. No trademark rights are granted to merely descriptive marks. However, it is possible for descriptive marks to become distinctive by achieving secondary meaning. Although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this “second meaning”, a trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through consumer surveys to show that consumers recognize the mark as a brand. Examples of marks that have received trademark protection via secondary meaning are American Airlines, United Airlines, Continental Airlines and Pacific Gas and Electric.
Generic marks actually name a product and do not function as a trademark. Unlike descriptive marks, generic marks will not ever receive trademark protection, even if secondary meaning can be proven in the mind of consumers. A valid trademark can also become generic if the consuming public misuses the mark sufficiently for the mark to become the generic name for the product. The examples of former trademarks that became the generic name for a product are Aspirin and Cellophane.
Fanciful, arbitrary, or suggestive marks are considered distinctive enough to function as trademarks. On the other hand, descriptive marks can function as a trademark only if it has obtained secondary meaning. Generic marks can never be a trademark. The strength of a mark is determined in part by where it falls on this spectrum. The stronger the mark, the greater protection it is granted.
Lerae Funderburg, Esq. is the Managing Attorney at Funderburg Law, LLC, an Atlanta based entertainment law firm. Lerae has almost 10 years of experience in entertainment law in both music law and film law. As an entertainment lawyer and blogger, Lerae keeps her viewers and subscribers up to date with entertainment law news, especially in the areas of music, copyright law and trademark law. If you are local to Atlanta, call and set up a consultation! She would love to hear from you!