You’ve spent a lot of blood, sweat, and tears to build your startup (and more friends-and-family money that you care to admit). One of the smartest things you can do at this point (besides hiring a great CFO), is protect your brand from a potential trademark infringers (and avoid a costly rebranding exercise).
Here’s a few tips to help you avoid trademark fights:
#1. Designate your Trademarks
You know those ™ and ® symbols? Time to use them! ™ indicates you don’t have a registered mark – you may have applied for registration – but you consider the name, logo, or tagline the symbol is associated with to be your protectable mark. The ® symbol means you have registered the trademark, and others cannot use it or a similar mark in conjunction with their own competitive company’s products or services (assuming you were using it first).
When you mention your trademarked name on your website, you should indicate it’s a trademark. You can use all upper case letters the first time you display it on the site, or use the ™ or ® when referencing it. You don’t have to do this every time you mention the trademark in company literature, but you should do it at least once, in a prominent location, on each piece of marketing material. And don’t forget to tell people it’s a trademark if you are using it for a product!
#2. Use your Trademarks Consistently
It is very important to be consistent in the way you use any trademark. If you have one trademark for the company name and another for the device you’re developing, you have to be consistent and not interchange the names (like referring to your company by the product name). A lot of people mess this up!
#3. That Goes for Color Trademarks Too
When you’re talking about brand development and recognition, colors can come into play. Whatever color you use to support your brand, it should be consistent. For example, if you are using blue and white for your logo, it should be a particular blue and white and it should be consistent on your website, business cards, and all marketing materials. Color consistency helps protect the brand and supports consumer recognition of the mark.
#4. Get the Rights to Your Logo
Logos can be protected by both trademark and copyright law. (Copyright law protects a visual work; trademark law protects a brand identifier. Logos can meet both criteria.)
If you are hiring a graphic designer to design your logo, remember to have an agreement that stipulates the designer transfers all intellectual property rights to you that relate to the logo. It’s called “an official assignment of rights,” and it has to be in writing if you want the rights to the logo design.
This is actually more important for copyright protection, because an independent contractor does not automatically transfer rights to you, even if you pay them to create the design. (But if a designer did this work for you as an employee, there may be an automatic transfer of rights).
#5. Clear Fonts and Graphics Before You Use Them
This is an issue that is becoming increasingly important as the self-publishing and e-book markets grow. Whatever a graphic designer is using to build your logo or the layout of your e-book, whether it’s from a third party site or something they develop from scratch, they must ensure that they have sufficient rights to use the basic design, logo, images, or fonts in the manner that they are using it for your project.
Companies like Adobe and Getty Images are pursuing companies and individuals who use their special fonts or images without proper authorization, including appropriate licenses. If you are hiring a designer to develop materials for your company, you have to ensure that everything they are using that they didn’t create from scratch has been licensed correctly and the license fee has been paid. This is something that should be covered in your contract with the designer. Also, the costs associated with these licenses should be discussed ahead of time so that everyone understands what costs and licenses the agreed-upon fee covers.
If an intellectual property attorney is clearing an e-book product for you, he or she has to figure out where the fonts and images came from and analyze whether the graphic designer had sufficient rights to use them in that product. They should also ensure that the graphic designer is transferring those rights to you, so you can legally use those fonts and graphic elements going forward.
#6. Make Sure Your Website’s Framework and Theme are Properly Licensed
Whether you use Drupal, WordPress, or another framework for your website, you have to understand what the website builder is using that is standard, what licenses apply, and how the licenses apply to the framework and themes that are used to build your website.
Certain open source entities have started pursuing website developers who are building customized themes or widgets for websites based on an open source platform, are making customers pay for them, and are refusing to give those customizations back to the community to further improve the open source product (in violation of the relevant open source licensing scheme).
WordPress, for example, has a couple of different licensing regimes that might apply depending on whether you’re talking about the WordPress website framework or the theme. Different standards apply to different parts of many open source products, and a website designer needs to know which license applies to the work they are undertaking for a client and whether they have the duty to give that product back to the community and are restricted from selling it as a private product going forward.
The Cloudigy team frequently gets calls from people who say, “I built a special theme for WordPress, I don’t want others using it, I saw someone else using, I want people to pay $1,000 to use this theme, and I don’t want to give it back to WordPress. Is this ok?” One of our attorneys will analyze the client’s situation, decide if they are required to give the theme back to the open source ecosystem, and discuss ways in which they can leverage past work without running afoul of the relevant licensing restrictions. If it involves web design, the question is always, “Are you fulfilling your obligations to the open source ecosystems based upon the licenses that apply to your work?”
#7. Content and Images on the Internet are Not “Free” From Copyright Protection
Another issue that arises with websites relate to the content and images, both of which may be protected by copyright.
Many website designers just rip content they like from other sites. It’s highly likely that this is a violation of somebody’s copyright – it could be the company that owns the website, a copywriter, or a marketing agency. It’s a big problem, and just because “it’s there” on the Internet doesn’t mean it’s free for the taking.
The same rule applies to images. If a designer created special images for you, he or she needs to assign the copyright in those images. If it’s stock art, you (or the designer) needs to make sure it’s OK to use each image for commercial use on a for-profit website. (There are different license options used by many of the stock art websites, which include editorial, commercial, non-profit, enterprise, educational, etc.)
Then there are sites like Flickr whose photographs are subject to The Commons regime. This means that when institutions post a picture on their site under The Commons rights regime, they are sharing the benefit of their research into the copyright status of photos they post (without granting any warranties to others who would like to reproduce or use them). If they have concluded that a particular photograph is free of copyright restrictions, they may note that “no known copyright restrictions” exist when posting that photo. This gives a user some basic level of comfort that someone has considered the copyright situation, but it doesn’t protect you from an infringement lawsuit if the relevant institution’s conclusion that a particular photo is not subject to copyright restrictions turns out to be incorrect.
Are you interested in learning more about copyright protections involving information available on the Internet? Then check out this three-part series covering this timely topic!