Congratulations! You have the opportunity to create an entire new branding for a client. The client is entrusting you with the launch of an entirely new marketing campaign. This work will include artwork, logo design, marketing materials, and other collateral. You will be doing work for which the client is going to pay tens of thousands of dollars or more. So how do you make sure that you are not wasting the clients time and money on a branding effort that infringes on someone else’s trademark?
Think about the impact of wasted time and money. If you are asked to design a logo, a brand, or an entire campaign and it infringes on someone else’s trademark, what have you done? You have wasted your time, you have wasted your client’s money, and you may get fired (your errors and omissions insurance is paid up right?). Trademark infringement is a very, very expensive litigation and can cost your clients hundreds of thousands or more in addition to losing all of the work that you did.
So how do you prevent this loss of time and money? Simply put–do a trademark clearance search early in the design process. If you are presenting a client with two options, it is worth exploring both options through a trademark clearance search to ensure, to the extent possible, the trademark, the logo and the brand that you have created can actually be trademarked and does not infringe on other people’s trademarks. The best time to conduct a trademark clearance search is before presenting options to the client.
So what is a trademark clearance search? Because all trademark databases, federal, state, and international, are public record they can be searched using a variety of algorithms and programs that will search for not only words but Design Elements as well. Searching for word trademarks is easy; you simply plug in the terms into the search functions and then press enter and a series of results will come back.
Trademarks with a graphical elements take a bit more time to set up and execute the search. The United States Patent and Trademark Office have a number of numeric codes that correspond to design elements. These codes include everything from fanciful creatures like unicorns and dragons to simple elements like squares and curves. The skill that is necessary to search a design code element requires a knowledge of the design codes themselves which fortunately the USPTO publishes for public use.
A number of companies exist that can run a trademark clearance search. Some of the companies are better than others and some cost more money than others. Don’t be fooled by the brand name often a smaller company can do the same work for far less money. I encourage everyone to shop around and find a service that not only meet your budget but meet your needs as well. If you need a recommendation contact me or another trademark attorney.
Interpreting the results of a trademark clearance search often requires an understanding of design, the client’s goals, and the law of trademarks. I realize that it sounds self-serving to suggest that you consult with an attorney for your clients or to recommend that the client engage their own trademark counsel.
The goal of a trademark clearance search is to determine whether or not any similar trademarks exist. If you conduct a trademark clearance search and no hits come back, one of two things is possible. First, the trademark clearance search criteria did not adequately check for similar marks. The other option is that you have created such an original campaign that no other person has ever dreamed it up. While the latter may be a designer’s goal, do not discount the former option. A good trademark clearance search will do wildcard searches on words and design codes. If you are unsure which of these two results occurred check with a trademark attorney.
A trademark needs to have both the trademark itself and a description of the goods that the trademark represents. It is possible for trademarks to be similar in sound, in appearance, and in other ways. Such trademarks can coexist because the trademarks themselves represent different kinds of goods or services. So unless your new clients branding attempts to derive or copy from a very famous brand (Nike, McDonald’s, Southwest Airlines, and the like), it is possible for similar trademarks to exist. That is why a trademark application must include not only the logo or trademark itself but must also describe goods or services in order to fully register a trademark.
While no trademark clearance search, or for that matter advice from an attorney, can guarantee that a trademark will be registered, conducting a trademark clearance search gives the designer the opportunity to determine whether or not their new branding campaign will step on the toes of other businesses. It is far better to conduct a trademark clearance search at a time when no firm decision has been made by the client. Of course it is easier to go back and revise a design or branding campaign during the design process than it is after materials have been printed.
Whether you contact trademark counsel yourself on behalf of the client or the client retains their own counsel conducting a trademark clearance search is worth the investment of time and money. Better to spend a little money earlier in the process then be at risk for much larger expenses later in the process or worse yet, after the branding campaign has launched.
If you need assistance with trademark clearance search please contact me or other qualified counsel.
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.