Ask a Lawyer // February 2018 // Tricky Trademark Questions

Because I work with a number of designers and lots of other small business clients, I spend a significant amount of time counseling clients about trademarks and what constitutes a good trademark. As a general rule of thumb, the more unique the elements of the trademark are, the words, the design, the typography, the better the trademark will be in a legal sense. But legal questions are only part of the question in a trademark counseling session.

A trademark is best thought of as source identifier. The trademark serves as a mental shortcut between the visual (or sound) of the trademark and the company who puts that product or service out into the world of commerce. When you see the Nike Swoosh, you immediately have an opinion about the quality of the product and the reputation of the company behind it.

In addition to logos or company names, a business can trademark a tag line. Famous taglines like “Just Do It” (Nike) or “Taste the Feeling” (Coca-Cola) or “King of Beers” (Budweiser), are some of the most iconic tageline trademarks. Taglines are incredibly useful for business. They help create the impression of what the product or the business is about or the business is about, and could operate as a very good source identifier.

The difficult with trademarking taglines is that unlike a brand logo or company name, a tagline usually involves words and language that are common, and it is the combination of those words and language that creates the tagline. Common words are inescapable, but common words to an industry increase the difficulty of a quality trademark. So, for example, let’s say we’re going to be doing a new brand for a plumbing business, and the tagline is going to be something like “Keeping your pipes clean” you might run in to a problem called genericness, which would render the tagline ineligible for registration as a trademark.

The other common problem for trademarks is descriptiveness. A trademark that simple describes the features or attributes of a product or service generally will not be registered. For example, Speedy for delivery services, or Cold for icepacks simply describe the product. Taglines will often use the traits that the company is wanting to portray. The result, however, is the tagline, while useful, does not operate to identify the source of the product or service because it is not distinguished enough. To avoid these problems, designers should conduct a broad competitor search and look in another direction for inspiration.

The next tricky question of trademarks has to do with color. Now, believe it or not, a single, specific color can be trademarked. The most famous example being Tiffany Blue is a trademarked color as it applies to jewelry. But, someone else could use a color close to or Tiffany blue for shoes or computers, so long as it is very different from what Tiffany and Co. sells in terms of jewelry and similar products.

A common question I am asked is should I submit a trademark that uses color as part of the identifying mark? For example, the Coca-Cola logo contains the color red as part of its trademark. The answer is you can include color as part of the trademark, but for that mark to continue to be used in commerce and to serve as a registered trademark, the same color must be used.

So, what happens when you change colors? The short answer is that if you want to change the color of the trademark, you have to submit an additional registration.

Which leads us to our last sort of tricky question, and that is evolution of trademarks. Do evolutionary changes to a logo or brand need to have a new registration submitted to the Trademark office. The answer is, like lots of lawyer answers, “it depends.”

Trademark law allows for something called tacking. Tacking allows a trademark owner to claim use and continued use of a trademark that is similar to a registered trademark but has some minor evolutionary changes to the design. So long as the new logo and the old logo create the same commercial impression, the new design need not be registered. Usually, though, tacking is used as a defense to a challenge to a trademark.

Starbucks is a good example. When Starbucks originally created their mermaid logo, it was very complex, very detailed, and over the years, if you go and you look at Starbucks trademark registration, you’ll see that it’s become a flatter, cleaner design, fewer elements to the design. Each time that they changed that design it was similar enough that it would like be considered a derivative. While Starbucks has the cash laying around to pay an attorney to submit the trademark application, it probably would not have been required to do so and still maintain all the benefits of registration.

So, we’re left with this question of what is enough of an evolutionary change, or is there too much of a change, particularly when you’re dealing with a rebrand? I believe that tacking should be looked at from the viewpoint of is there change but not a radical departure from a previous design. Unfortunately, the trademark examination process is as much an art as it is a science. So it may be difficult to see evolution and it may have to be explained to the trademark office. Hopefully designers and their clients can avoid the complication of needing to claim tacking. But the claim is available.

So, there are some tricky aspects of trademark that designers should understand the basics of in order to advise their clients, and of course, consult an actual trademark attorney so that they can get more detailed guidance about their specific question.


BIO Disclaimer

MATT JOHNSTON IS A SOLO ATTORNEY WITH A FOCUS ON SMALL BUSINESS REPRESENTATION, COPYRIGHT AND TRADEMARK LAW, AND DISPUTE RESOLUTION. MANY OF MATT’S CLIENTS ARE DESIGNERS AND CREATIVE PROFESSIONALS WHOSE CONCERNS OVERLAPPING MATT’S PRACTICE AREAS. MATT CONCENTRATES ON DRAFTING CLEAR CONTRACTS OF ALL TYPES AND HELPING DESIGNERS WITH THE LEGAL SIDE OF THE DESIGN BUSINESS. AS A BENEFIT TO AIGA MEMBERS, MATT OFFERS A 10% DISCOUNT ON ALL CONSULTATION APPOINTMENTS, FLAT FEE PROJECTS, AND HOURLY FEES.

THE CONTENT OF THIS COLUMN IS FOR EDUCATIONAL AND INFORMATIONAL PURPOSES ONLY AND SHOULD NOT BE CONSTRUED AS LEGAL ADVICE APPLICABLE IN ANY SPECIFIC SITUATION. NO ATTORNEY-CLIENT RELATIONSHIP IS CREATED THROUGH THIS COLUMN. IF YOU NEED CONFIDENTIAL LEGAL ADVICE, MATT IS AVAILABLE FOR PRIVATE AND PRIVILEGED CONSULTATIONS. CONTACT MATT IF YOU HAVE SPECIFIC CONCERNS.

By Matthew S. Johnston
Published February 2, 2018
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