Please note, that this blog article and the video recording of our discussion are not substitutes for professional legal advice. Neither Melissa nor I are responsible for actions taken as a result of the information shared in this blog post.
I recently had the opportunity to pick the brain of an intellectual property lawyer, Melissa Spindler, on what small businesses and marketers need to know about branding, logo design, and business naming. This topic interests me greatly, as these are all services I provide to my clients at Alicia Nagel Creative! You can watch a video recording of our discussion on Hustle With Aloha - a side project of mine where I share tools and resources to help small businesses with branding, marketing and graphic design.
Melissa is a registered patent attorney with Smith Keane LLP in Wisconsin, and works with businesses nationwide. Her practice includes all aspects of intellectual property law, with an emphasis on brand protection and intellectual property litigation/dispute resolution. In practice since 2004, Melissa has become adept at developing cost-effective business solutions to legal disputes. Melissa collaborates with her clients to enforce their patent and trademark rights and defend against charges of infringement. Melissa also works with her clients to create value by using cost effective strategies to build intellectual property portfolios. Melissa is passionate about bringing intellectual property knowledge to small businesses and empowering clients to gain competitive advantage by protecting their brands.
In her free time you will most likely find Melissa at a hockey rink cheering on and/or chasing her kids, volunteering with the Wisconsin State Bar, or playing DJ on family road trips and boat outings.
Trademark, Copyright, and Patent
What are the differences between the three?
Trademarks = protects branding. For example, a business name, logo, color, sound. Anything that differentiates you from your competitors. Examples include: sound that plays upon launch of Netflix, Pepsi name and logo. “Since 1998, Tiffany Blue® has been registered as a color trademark by Tiffany and, in 2001, was standardized as a custom color created by Pantone® exclusively for Tiffany and not publicly available.” Reference
Copyright = protects an artistic expression in a fixed medium, this isn’t limited to what you’d find in a museum - it could be the choreography of a dance
Patent = protects a process or a way of doing things. Examples include: recipes, machines, medicines, computer programs, articles made by machines, chemicals.
Assignment of rights
According to Melissa, if you hire a designer, start by looking at their contract to see if you actually own the rights to the design they’ve created for you. Unless there’s an agreement in place, the rights don’t necessarily get assigned to the client. To cover all bases as a business owner, it’s best to get an assignment of rights in writing from a graphic artist so you can copyright the business’ logo in the future should you wish to. If the designer is producing other assets for the company that they wish to retain rights to, the logo rights can be granted in a separate agreement just for the logo.
Putting a Copyright Symbol in the Footer of a Website
As a graphic designer, I was by agencies and other designers that best practice was to at least put a copyright symbol, the current year, and the business name in the footer of a website to enable to business owner to protect themselves in the future should they need to. If someone comes after the business owner, then they can can register the copyright really quickly and still be protected.
Melissa said yes this is true! Business owners actually need not register a website with the US copyright office to be protected. For them to sue someone for infringement however, they would need to register it with the government at that time. If it’s registered before the infringement started or within a certain number of days of the infringement starting, then you can get enhanced damages (more money). She explained that you own copyright on something you create as soon as you put that something out into the world. If you want to enforce that ownership legally, then you have to file for the copyright registration. If you register well before any infringement, this can help the owner receive even more damages. So really, the earlier the better.
Protecting Your Business Name or Logo
Melissa and her team at Smith Keane LLP help with registering copyrights. You can file your own copyright application - on the copyright office website there’s info on how to do it. Melissa doesn’t think that it’s really difficult to do it on your own, but as we know government and legal wording can be confusing and there are pitfalls that business owners may not know about. So if you are a business owner who would like help with that, it’s $500 to work with Melissa or her team to have them prepare and file a copyright application. Once filed, it takes a couple months for the government copyright office to process it.
Working with Smith Keane LLP on registering a Trademark for a business is about $2500 - it can be less though. The government does a review of the submitted trademark application and it’s a more rigorous examination as opposed to the review they do for a copyright registration. A big part of what can hold up a trademark registration is that the government trademark office looks at whether or not the trademark is deemed descriptive enough of the goods and services being provided and whether there’s anyone else who has registered something too similar which is likely to cause confusion. Lawyers like Melissa can do what’s known as a “Trademark Knockout Search” for about $400. This is a review of trademark records to see if there’s anything similar or if there’s something identical that’s already been filed - this last bit is particularly important when someone is starting out new.
The Three Levels of Trademark Registration
There are three different levels of trademark that you can file for a logo:
Standard character mark - just the words, no registration or font or color
Stylized mark - this includes design elements. Think about the Disney logo that’s a word that’s written but it’s in their Disney font.
Graphical representation - this includes all design elements. Due to the complexity of what’s included, this type of trademark registration is often the easiest to defend.
The Spectrum of Distinctiveness When it Comes to Naming
When it comes to naming, there is a “Spectrum of Distinctiveness” that a name will fall within, and the more distinctive it is the easier it will be to defend the trademark. In order of least distinctive to most distinctive, these are categorized as:
Generic - A word for product, for example: “Leather Furniture”. If it’s too generic, it can’t be trademarked.
Descriptive - The name describes your services or your business somehow. To defend a descriptive business name, the word has to have an acquired distinctiveness before registering it. It helps if you have been using it for a long time associated with your business.
Suggestive - For example, Netflix. It kind of gives you an idea of what they do but it’s not a literal description. In the case of Netflix, it’s a combo of flicks (or movies) on the Internet (or net).
Arbitrary - A real word that’s unrelated to what it is. For example, Apple or The Beatles.
Fanciful - Examples include Adidas and Pepsi. This is the most valuable and defensible type of name in terms of intellectual property law.
Some naming pitfalls to look out for from Alicia & Melissa
Limiting yourself by being too specific or geographically oriented. For example, ____ of Brevard (county). But what happens if you want to expand, or move locations? Also if you're too specific with your business name, you might be clipping your wings if your offerings expand in the future. For example, the business name _____ massage, may be limiting if the massage studio expands to also offer yoga classes or acupuncture.
Can people pronounce it? I love Fage yogurt but many people struggle with pronouncing it. Is it Fay-je? Fah-gay? Or Fah-yay? If someone can't pronounce your business name, you're already making them feel awkward and reluctant to say it - which can be a challenge standing in the way of happy customers spreading the word about your company.
Can someone easily spell it? If someone doesn't know how to spell your business name, it can be difficult for them to find you online and opens the door for imposters. Last names can be an issue here, as well as clever miss-spellings of a common word, or even an English word that not many people may know how to spell.
Is it memorable? This could be a potential missed opportunity. If it’s not memorable, then maybe your reputation and marketing can overcome that, but if it is memorable then it will help you.
Make sure you’re not merely being descriptive of product or geographical region. Some examples might be, The Orlando Spot or The Leather Sofa Store.
If you want to sell on Amazon, be prepared to have strongly secured trademark rights. If you sell on Amazon, knock-offs and look-alikes are rampant. In order for Amazon to take down any infringing listings, your business name needs to be registered with their Amazon brand registry and to do that you have to have trademark rights to the name. In some cases you can have a trademark pending, but if you can’t successfully secure the trademark registration then this will be an issue.
Naming Your Business
As a brand strategy consultant, I offer business naming services. A name is so important, and can be your ally or your handicap as a business owner. Through hands-on workshops and extensive market research, I help entrepreneurs discover the strongest options for naming their new business.
Creating a Unique and Memorable Logo for Your Business
My absolute favorite thing to do professionally is to design a unique and memorable logo for a new business. I also specialize in doing a design refreshes for existing logo for established businesses. If you're looking for logo design help, I'd be delighted to have a discussion to learn more and to share some examples of my logo designs with you. Please get in touch!
Legally Protecting Your Business Name or Logo
If you're interested in legally protecting your business name or logo, you can reach Melissa Spindler and her firm at Smith Keane LLP by going to their website and filling out the contact form. Please tell them I sent you!