Trademark vs. copyright
A trademark is a phrase or symbol that functions as an indicator of a brand. The concept stretches back to ancient times, when skilled artisans working with metal or ceramic would imprint their own distinct mark, called a maker's mark, on the finished product. Today, you can often distinguish between a high-quality piece of jewelry and a knockoff by the maker's mark. A registered trademark is a legal enforcement of such a mark, both for physical products and for digital assets.
Virtually anything can be a trademark. Words, images and specific decorations can all count. A trademark has an associated "strength," which is how defensible it is as your unique mark versus how widely it can be used by other entities.
For example, the Apple logo with the bite taken out of it is a fairly strong trademark. Other entities are generally unable to use that specific symbol defensibly. On the other hand, Apple trying to trademark the word "apple" would be very weak; a bakery using apples is not in violation of Apple's registered trademark if it describe its pies as apple pies. Big Apple Bagels isn't in violation for using its city's nickname.
A very strong trademark is one that is completely made up. The brand name Xerox is one example. There was no entity or name called Xerox prior to the company creating the name and using it in its branding. It's very strong now, as any other use of it is necessarily in reference to the company.
Generally, trademarks should be registered. While you don't need to register a trademark, a registered trademark allows you to make your mark public knowledge and gives you precedence against future similar marks being registered.
Applying to register a trademark puts it on public record, which can backfire if you haven't done sufficient research. Trademarks also need to be defended. If you allow other brands to use something too close to your trademark for too long, it becomes a diluted trademark and is no longer as easily defensible. Too broad a usage of too broad a trademark means you lose the ability to claim the trademark. There are numerous legal cases in which brands have sued smaller companies for diluting their trademark, usually because of referential or parody uses of a mark.
Copyright, on the other hand, is an automatic protection of your own unique creations. You cannot copyright specific words like you can trademarks, barring unique brand names like Xerox. Copyright does not protect words, typefaces, logos or simple designs. It does protect more complex creations, like full blog posts, graphic designs and other images. When choosing whether copyright or trademark is the better protection for your business, keep the distinction between these item and product categories in mind.
Another major factor in choosing copyright or trademark is that copyright is automatic upon the creation and publication of a protectable work. When you publish a blog post, copyright for that post is yours. When you create an image for your blog post, you own copyright over that image. A trademark, on the other hand, requires registration.
Copyright protects your image or writing against use you don't approve of, but not against fair-use alteration. What constitutes fair use is a broadly debated and legally fraught concept. Generally, people can't just take your image and use it themselves, but they can edit the image for the purposes of satire. Simple edits like a change in hue don't count. This is why you can't just run a Google image search for images to use in blog posts – you need to find those allowable for use under an appropriate license, like Creative Commons.
Can you trademark a website graphic?
There are tons of guidelines for what constitutes a trademark, and the United States Patent and Trademark Office (USPTO) provides a series of educational videos to help you navigate trademark law.
In general, you can't trademark any old graphic design. Taking a photo of your front lawn and putting your logo on top of it isn't a trademark, because you're not going to use the resulting image as a branding mark for your products in the future. On the other hand, your logo with stylized grass underneath it might make a compelling and unique mark you could use on products. You could potentially trademark that image, though other lawn care companies with similar grass designs might want to defend their own use of similar designs if you try to register the mark.
You probably won't be able to trademark any website graphic or illustration you're using. If you create illustrated characters for use in your branding, you can copyright those characters but not trademark them.
If you want to trademark something, you can trademark your logo and, if it's sufficiently unique, your brand name. If you have individual products with their own logos, you can trademark those logos and names as well. Otherwise, you're looking at copyright, not trademarks, to defend your creations.
How to submit a trademark
If you choose to pursue a registered trademark for your assets, you may find it helpful to follow the below steps for how to submit a trademark. You'll take these actions after you obtain a trademark application through the federal Trademark Electronic Application System (TEAS).
1. Add contact information for the owner of the mark.
The owner may be the legal entity under which your business operates, or it may be an individual. The contact information should include the following:
- Mailing address
- Email address
- Fax number
2. Determine your mark format.
When you submit your trademark, you will need to indicate one of these three mark formats:
- Standard character for words, letters, numbers and combinations of these characters in any font or format
- Special character for words, letters, numbers and combinations of these characters in particular fonts, formats, or colors, or for images and other visual design elements
- Sound mark for audio trademarks (a prominent example is the MGM lion's roar)
3. Complete the picture and specimen section.
The first two steps of the TEAS are quick to complete. Providing a picture and specimen may take longer.
- For the picture section, submit a drawing, whether hand-drawn or computer-generated, if you are registering a special character mark. Your file must be a JPEG attached to the TEAS application.
- For the specimen section, you'll take one of these actions:
- Submit an electronic audio or video file for a sound mark in WAV, MP3, MPG, WMV, WMA or AVI format. Audio files have a maximum size of 5MB, and video files have a maximum size of 30MB.
- Submit a graphic showing the planned use for your trademark if it is a standard or special character mug. This graphic could display your mark on merchandise or marketing materials.
4. Indicate your mark's goods and services.
In this section of the TEAS, you will indicate and detail the goods and services for which you'll use your mark. Follow the U.S. Acceptable Identification of Goods and Services Manual as a guide, and use any relevant wording you see in the descriptions there. If necessary, you can detail your goods and services in your own words.
After submitting your TEAS form, you cannot change your trademark's goods and services.
5. Indicate your trademark's filing basis.
Choose one of these four bases:
- Use in Commerce: This category describes marks used in goods or services that you already offer.
- Intent to Use: This category is for marks you intend to use within the next four years. You must start using the trademark and provide proof of specimens before registering it.
- Foreign Application Exists for the Same Goods or Services: If you have applied to file a trademark domestically within the last six months, use this basis to indicate a foreign application for that same trademark.
- Foreign Registration Exists for the Same Goods or Services: If your trademark already exists internationally, you must use this basis and provide information for the U.S. application, such as a copy of the trademark's foreign registration certificate.
6. Submit your application.
After paying your filing fee, which can be as much as $400 per good or service class, the USPTO will refer your application to an attorney, who will review it within three months. You will be contacted if you must remedy any mistakes before your application reaches the USPTO's weekly publication, the Trademark Official Gazette, where other trademark holders can counter your application if it appears to similar to their marks. Should you successfully counter any challenges (or face no challenges), after the months to years it can take to properly address a trademark lawyer's concerns, your trademark will be approved.
James Parsons contributed to the reporting and writing in this article.