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10 Important Facts Every Artist Should Know About Trademark Law,
by Justin Osemene

Since prehistoric times when they drew images of bison on cave walls to the present day, artist have always been revered members of our society and society has long appreciated the value of artistic creation -- economic and aesthetic -- and has vigorously sought to protect it. Even the US Constitution empowers Congress "[t]o promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Rights to their respective Writings and Discoveries." Although this clause specifically protects writings in the form of literary works, it is applicable to a wide range of intellectual endeavors, and has been consistently interpreted to cover visual works of art also.

Artists, like other creative inventors and scientist, generally have inherent interests in protecting the use of their creative expression and barring others from adopting it in their original works. However, as history is replete with examples of artists borrowing themes from one another, one of the continuing challenges most artist face in the current digital millennium is in determining just how much an artist may draw from the work of another without infringing upon the original work or causing consumer confusion in identifying the source or creator of the original work of arts. While copyright law has long provided artists with the legal vehicle to protecting their artistic creations, in the current digital millennium, alternative source of legal protection is much more needed now especially in view of the global effect and commercialization the internet would provide for others utilize art work, artistic signature styles, and artists’ creation and endeavors in the configuration, packaging, distinguishing and merchandising of goods and products on the internet.

It is with this in mind that the Washington Lawyers for the Arts last month hosted a timely Trademarks and the Arts seminar. Trademark law has recently proved to be a novel, yet overreaching, alternative to copyright law for protection of artist’s names, artistic signature style, or work as source indicators. Traditionally, trademark law has rarely been applied to cases dealing with arts in generally. Unlike copyright law, trademark law does not protect against copying. Rather, it protects against the use by others of a word, name, symbol or device in connection with the sale of goods or services that might mislead customers as to the source of goods and services.

Under US trademark law, a distinctive sign, word or symbol need not be registered to be protected as a trademark. While section 43(a) of the federal Trademark statute provides for registration of trademarks, the statute also affords proprietors of unregistered marks that have achieved distinctiveness in the marketplace most of the remedies as are available for registered marks. But what does this mean in the context of the artist and their artworks? It simply means that the U.S. Patent and Trademark Office does routinely accept an artist’s name or work for registration as a trademark of original work of art. And even without registration, artists that have developed distinctive logos to promote the merchandising of their works have endeavored to enforce rights in their names and artistic styles and signatures against unlicensed uses. For example, a collective licensing society representing the Picasso heirs in New York obtained temporary restraining and seizure orders from a federal court against unlicensed vendors of T-shirts bearing the Picasso name and signature. It should, however, be pointed out that not all artists’ name may be perceived as trademark for the goods on which their names or images are merchandised. It is important to distinguish between the use of the artist’s name to identify the creator of the image depicted on the T-shirt or other merchandising property on the one hand, and the use of the name to denote or suggest, that the goods are made with the sponsorship or approval of the artist (or their heirs) on the other. Only the latter is a trademark use. It is against this background that the following basic aspects of trademark law is offered for every artists’ __________

What is a trademark?

  • A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods, products or creation of one manufacturer, seller or creator from goods, products, creation of another or sold by another, and to indicate the source of the goods, products or creation. In short, a trademark is a brand name, such as Coca-Cola, Microsoft, Boeing, Picasso.
  • What is a service mark?

  • A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. Legally, there is no difference between the term trademark and service mark, and the term trademark and mark are often used for all types of marks, including service marks.
  • What does it mean to "trademark" a business or product name or logo?

  • Generally, when people say they plan to trademark a name or logo, they are using the word trademark as a verb, and generally mean they intend to register the name or logo with the U.S. Patent and Trademark Office in Washington D.C. While federal registration provides important benefits such as notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods and services set forth in the registration, however, no registration is absolutely needed. Trademark ownership is usually determined by who uses the marks first in a commercial setting. So by simply using a name, logo or other symbols or devices to identify products, goods and services in the marketplace, a trademark has been created and trademark ownership has been established.
  • What are the benefits of federal trademark registration?

  • Namely
    1. constructive notice nationwide of the trademark owner’s claim,
    2. evidence of ownership of the trademark,
    3. jurisdiction of federal courts may be invoked,
    4. registration can be used as basis for obtaining registration in foreign countries, and
    5. registration may be filed with US Custom Services to prevent importation of infringing foreign goods.

    What is a "common law" trademark and what rights does it give me?

  • A common law trademark is any device (name, logo, slogan, etc.) that is
    1. being used to identify a business’s good or services in the marketplace and
    2. has not been federally registered.
  • The owner of a common law trademark that is used across state, territorial or international borders is entitled to use the federal courts to enforce its rights. These rights typically include
    1. the right to exclusive use of the mark in the parts of the country where the mark is being used,
    2. the right to recover for harm caused by the infringing use and
    3. the right to recover punitive damages and attorney’s fees if it can be shown that the act of copying was deliberate.
  • Why should I bother to register a trademark I’m already using on my business or product if I already have rights under the common law?

  • Simply, federal registration makes infringement lawsuit a lot more feasible from a fiscal point-of-view, and an infringement lawsuit is the only way to enforce trademark ownership. Federal registration makes it a lot easier to win a federal lawsuit against later users by establishing certain presumptions (meaning facts that you don’t have to prove in court) These presumptions include that you are the mark’s owner and that the later user deliberately copied the mark.
  • Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?

  • No. Use of the symbols "TM" or "SM" (for trademark and service nark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted.
  • When is it proper to use the federal registration symbol (the letter R enclosed within a circle) with a mark?

  • The federal registration symbol may be used once the mark is actually registered in the US Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or service that are the subject of federal trademark registration. Note that several foreign countries also use the R enclosed within the circle to indicate that a mark is registered in that country and use of the symbol by the holder of a foreign registration may also be proper.
  • Is a federal registration valid outside the United States?

  • No. Certain countries, however, do recognize a United States registration as a basis for registering the mark in those countries. Many countries maintain a registrar of trademarks granted, thus the laws of each country regarding registration must be consulted.
  • How can I find out whether a mark is already registered?

  • In order to determine whether any one or company is using a particular trademark, a trademark search can be conducted on the PTO trademark database, or by visiting the Trademark Public Search Library, between 8:00 and 5:30 p.m. at 2900 Crystal Drive, 2nd Floor, Arlington, Virginia. Use of the Public Search Library is free to the public.
  • Can I register my domain name/internet web site address as a trademark?

  • Yes, you can apply to federally register your domain name as a trademark, provided that it is being used to market goods or services on the Internet. If, on the other hand, the domain name is only being used as an address unconnected with goods or services (for example, you use it for personal or family reasons), registration will be denied.
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