Branding Meets Legal: How to Protect Your Trademark, Logo and Other Elements of Your Brand

By Margot Carmichael Lester, Staples® Contributing Writer

Regardless of where you are in the business lifecycle, or what your business goals are, you need to understand the trademark and copyright protections that impact your business, including your company and product names, logos, taglines and more.

What can I trademark?

Every element of your brand can be trademarkable, according to Lindy Herman, senior associate with California law firm Fish & Tsang, LLP with offices in Orange County and Silicon Valley. “Think about Nike’s portfolio: Nike (name), swoosh (logo), Just Do It (slogan), Air Jordan (product name). They’re all trademarked.”

What does a trademark do?

Trademarks identify your products and services, and help you build your brand. “Trademarks are very important for any business, big or small, because they help the consumer know what to expect from what he or she is buying and who stands behind the product or service,” explains Randy Friedberg, partner with New York-based White and Williams LLP. “They also differentiate you from your competitors, both large and small.” Trademarks can last forever if they are properly used and maintained.

How do I get a trademark?

Work on a trademark should be completed before you settle on a name or any other brand element, to ensure you avoid infringing on someone else’s. This includes both word and logo versions of your brand. Otherwise, the investment you make in design could be for nothing. While there are online options for researching and securing a trademark, the process can be complex, time consuming, and full of potential pitfalls. “The motivation and goals of the USPTO and of the intellectual property holder, while not adversarial, are not the same,” Herman says. “The rights holder’s goal is as broad protection as possible, while the USPTO wants narrow protection. So what you tell them has an effect on your rights in the end. It tends to be more costly — in dollars and in rights — to fix mistakes than to do it correctly the first time around.” Bottom line: you’ll likely spend less and get more by working with an IP specialist than doing it yourself. Learn more at the U.S. Patent and Trademark Office.

What can I copyright?

“Any original work of authorship with a minimal degree of creativity is subject to copyright,” notes Jeffrey Feldman, board-certified IP lawyer and co-founder of Feldman Gale, P.A., in Miami. That includes “original works” of architecture, audio-visual, choreography, drama, graphics/pictures, literature, music and sculpture, as well as sound recordings, software, and even your business website. For instance, this article and the website you’re reading it on are creative works copyrighted by Staples, Inc. James McCarthy, partner at Chicago-based McDonnell Boehnen Hulbert & Berghoff LLP, warns: “If a business is based in any way on creative works — books, videos, photographs, graphics, computer programs, etc. — the business owner should work with an IP attorney to carefully protect these items.”

What does a copyright do?

Copyrights protect your creative works from being copied by others. “A copyright protects an author’s exclusive right to reproduce, distribute, perform, adapt and display an original work of authorship,” Feldman explains. “Copyrights arise automatically when an author fixes his or her work so that it can be read or perceived by others, with or without a machine, for more than a moment of time.” Copyrights normally last at least 70 years beyond the lifetime of the author, and may last as long as 95 years or even 120 years under certain circumstances.

How do I secure a copyright?

Since copyright “attaches” to your work at the moment of creation, technically you don’t have to file anything. In fact, Feldman notes, “The copyright symbol (©) has not been required since March 1989, and therefore the use of another’s artistic, photograph or literary work that does not have a copyright symbol can still amount to copyright infringement.” That said, you can’t sue to protect your works if you haven’t at least sought registration. The copyright application consists of one page and the fee is between $35 and $55 for electronically filed applications, $85 if filed by mail. The process takes about 8 months if you apply electronically, 13 months if you apply via mail. You can do it yourself or engage an IP lawyer. Get more information from the U.S. Copyright Office at the Library of Congress.

Do I ever need both?

Copyrights and trademarks are designed to protect different things in different ways, but there can be some overlap. “You would do both a copyright and trademark if you have a trademark that’s a graphic logo,” Herman explains, like Chuck E. Cheese’s. “That’s a creative work — a two-dimensional graphic — used in sales of restaurant and entertainment services, so it’s protectable under both.” An IP expert can help you determine whether any part of your branding is copyrightable.

How do copyright and trademark protections apply to work carried out by employees and contractors?*

If your employees make anything — logos, software code, technical manuals — you need to address ownership in employee/employment contracts and policies. The same goes for contractors, Friedberg says. “Even if you hire a non-employee for a project, tell him or her what to do, pay him or her and provide ideas and feedback, the company may not own the copyright absent a properly drafted work for hire/assignment agreement.” These agreements are best developed by an attorney specializing in IP or employment law.

You spend a lot of effort and money creating your brand and building your business. Investing a little more provides better protection for your brand and can help you avoid costly mistakes.

*This extends to logos and other works created by Staples® Design Services. Per intellectual property laws, the small business customer is responsible for ensuring the ownership and/or clearance of the content and information they provide for the creation of the logo mark. All client deliverables are deemed to be “Works Made for Hire,” as defined under U.S. copyright laws.

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