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One of my readers recently asked, “We hired (and paid) a person to design our logo, do we own the copyright?”

As a paralegal, I am not allowed to give out any advice, as I am not an attorney.  However, I did find an article that answers the question whether a graphic designer owns a logo / trademark / copyright or the business owner.  Of course, you should always consult an attorney specializing in Intellectual Property to be certain that the information is correct.  The United States Patent and Trademark Office (USPTO) provides information that may help anyone looking to find out about patents, trademarks and copyrights.  If you desire to officially trademark a logo, (trademark or service mark) in the U.S. and your business is in the U.S., I provide several references from the USPTO below.  I also include the definitions of the different types of trademarks, determined by whether you are providing a service or selling goods.  Be sure to read about “Assignments” at the end of this article for possible legal protection.  This may benefit you if you wish to file a trademark application.  To decide whether your logo is to be copyrighted or trademarked, I have included an extra article that may help you. 

Start by reading this article on How do I know if I need trademark or copyright protection at http://www.legalzoom.com/trademarks-faq/trademark-versus-copyright-protection.html

Per AIGA, in an article addressed to graphic designers,

“Who owns a trademark?

Unlike copyright, ownership of a trademark is not about who created the mark. Trademark rights are created by using the trademark for goods and services in commerce. So when you create a logo for a client, your client will own trademark rights in that logo as soon as she starts using the logo on products or promotions for her company.”

Just to sort out the difference between copyrights and trademarks and the different types of trademarks I list several quotes from the United States Patent and Trademark Office.

Per the USPTO,

“COPYRIGHTS protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last the life of the author plus 50 years. Gone With The Wind (the book and the film), Beatles recordings, and video games are all works that are copyrighted.

A TRADEMARK includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

A service mark is any word, name, symbol, design, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services. ¹

TYPES OF TRADEMARKS

“Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce. Specific types of trademarks include:

• Service marks identify and distinguish the source of a service rather than a product.
• Certification marks are any word, name, symbol, device, or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
• Collective marks are trademarks or service marks used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.²

REGISTERING A MARK

“You can establish rights in a mark based on legitimate use of the mark. However, owning a Federal trademark registration on the Principal Register provides several advantages, including the following:

• Constructive notice to the public of the registrant’s claim of ownership of the mark;
• A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• The ability to bring an action concerning the mark in Federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries; and
• The ability to file the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.

Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the Federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the Federal trademark registration.

Starting the Process
Step 1: Is your product eligible for a trademark?

Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future. What is “use in commerce”? For the purpose of obtaining Federal registration, “commerce” means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. “Use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark.

Generally, acceptable use is as follows:

• For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
• For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

If you have already started using the mark in commerce, you may file based on that use. A “use” based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.

Step 2: Conduct a trademark search

The next step is to search our database, before filing your application, to determine whether anyone is already claiming trademark rights in a particular mark. You may conduct a search online for free via our TESS (Trademark Electronic Search System) database (http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk). If your mark includes a design element, you will need to search it by using a design code. To locate the proper design code(s), please consult the Design Search Code Manual at http://www.uspto.gov/tmdb/dscm/index.html.

Registering a Trademark
You may file your trademark application online using TEAS – the Trademark Electronic Application System(http://www.uspto.gov/teas/index.html) . TEAS allows you to fill out an application form and check it for completeness, and then submit the application directly to the USPTO over the Internet. You can pay by credit card, through an existing USPTO deposit account, or via electronic funds transfer.

You may also contact the Trademark Assistance Center (http://www.uspto.gov/main/contacts.htm#support) for a hard copy of the Basic Facts brochure, or a paper form. Paper forms are not processed as quickly as those submitted electronically, however.

Registering a Trademark Overseas
Federal registration is not valid outside the United States. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application,” with the International Bureau of the World Property Intellectual Organization, through the USPTO. For more information about the Madrid Protocol see http://www.uspto.gov/web/trademarks/madrid/madridguide.htm.

Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. See TMEP Chapter 1000 (http://www.uspto.gov/go/tmep/1000.htm) for further information. The laws of each country regarding registration must be consulted.”³

Trademarks are filed in separate classifications.  You can find a list of the classes at Trademark FAQs (http://www.uspto.gov/faq/trademarks.jsp).

You can check the Identification of Goods and Services Manual.

You may also check out the online trademark application form (http://www.uspto.gov/teas/teasplus.htm).  It also lists the fees.

If you decide to file a trademark you can file an Assignment (http://www.uspto.gov/faq/assignments.jsp) with the USPTO.  I found an example of a trademark assignment (http://www.formsguru.com/free-legal-forms/free-assignment-of-trademark-form.html) online.  Laws change in the field of Intellectual Property, therefore, you should contact a trademark attorney for most recent laws.  The designer would be the “Assignor” and the business owner who purchased the logo would be the “Assignee”.

You can also read the Trademark FAQs at http://www.uspto.gov/smallbusiness/trademarks/faq.html

REFERENCES:

1. All About Trademarks, USPTO http://www.uspto.gov/smallbusiness/trademarks/ (Accessed 2/3/2009)
2. Types of Trademarks, USPTO http://www.uspto.gov/smallbusiness/trademarks/types.html (Accessed 2/3/2009)
3. Registering a Mark, USPTO http://www.uspto.gov/smallbusiness/trademarks/registering.html (Accessed 2/3/2009)