Trademark vs. Copyright
by Intellectual Property Attorney Bill Honaker, the IP Guy
Which Do I Choose?
They’re both valuable to business
Trademarks protect the reputation of a business. They also identify the source of goods for consumers.
Intellectual property law can be confusing. The USPTO website defines a trademark as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” A service mark identifies and distinguishes the source of a service rather than goods. Some examples include brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks. A good example of a logo is the Nike Swoosh, a slogan is “Just Do It” and a word mark is Nike.
Trademarks are critical to business success. They identify your business and symbolize your great products, services, and reputation. You want to avoid similar trademarks so that competitors cannot adopt similar marks that can confuse customers and feed off your goodwill. You also want to choose great marks so that you don’t face a lawsuit for getting too close to another mark.
The important lesson is you must choose wisely. It reminds me of the scene in Indiana Jones and the Last Crusade, where the Grail Knight says: “You must choose, but choose wisely.”
Trademarks are synonymous with brands, a more commonly used term these days. Your trademark is likely the most valuable asset your business owns, and it needs to be fully protected.
Every business has a trademark. At a minimum, you have a trademark in your business name. Having a strong properly protected mark is money in the bank for your business. It represents everything that is good (or bad) about your business.
Because of their value, you must protect them. The best protection is Federal Trademark Registration. This requires filing a trademark application with the United States Patent and Trademark Office.
US trademark law gives you rights by just using your mark. These are called common law rights. These rights extend only to the geographic area in which you use your trademark. But, if you get federal registration through the United States Patent and Trademark Office, you increase your rights to cover the entire United States.
It is important to remember that in many other countries, trademark protection is only provided if you register your mark, there are no common law rights. So, if you want to have rights in other countries you register in those countries.
How valuable are trademarks? A client recently sold its business for $60 million and the buyer was mainly interested in the companies’ marks. This is not uncommon.
Copyright law protects original works of authorship that are the expression of an idea fixed in tangible form. Tangible form means that it can be reproduced or copied. This includes images, pictures, paintings, books, articles, and computer programs.
The Copyright Act grants five rights to a copyright owner. The copyright protects:
- The right to reproduce the copyrighted work.
- The right to prepare derivative works based upon the work.
- The right to distribute copies of the work to the public.
- The right to perform the copyrighted work publicly.
- The right to display the copyrighted work publicly.
You get copyright protection immediately. Your work is protected as soon as you express an idea in tangible form. But, copyright registration with the United States Copyright Office provides the copyright owner with many important advantages, including statutory damages.
Damages Can Be Huge
Copyright infringement is costly. The copyright holder is entitled to an injunction, actual damages, and your profits that exceed actual damages. But, since these damages can be difficult to prove, statutory damages are available. These can range from $750 to $30,000 per infringement, and up to $150,000 for willful infringement. The successful party is also entitled to attorney’s fees.
The amount of statutory damages and attorney’s fees are at the discretion of the court. Since most courts dislike copying, they award accordingly and are encouraged to award attorney’s fees.
To be entitled to statutory damages, the application for registration must be filed timely. It must be filed before any infringement of unpublished work. If the work is published, it must be registered before any infringement, unless registration is made within three months after the first publication. It is important to file your registration as soon as you can.
It is also important to use a copyright notice on your works. The proper notice is ⓒ Year of Publication and the Owners Name (you should also include All Rights Reserved underneath). Although not required to have copyright protection, it is good to use notice.
Trademarks and Copyrights Can Coexist
So, is it better to copyright or trademark a logo? Sometimes the answer is both. If you have a logo it can be protected by trademark and copyright.
The Apple trademark is a good example. The Apple trademark is an apple with colored stripping and a section removed. Its use as a symbol for an electronics and software company is protected as a trademark. Its artistic representation is protected by copyright.
Keebler’s Ernie the Elf is another example. Earnie is a very valuable trademark as well as a copyright protected image.
Although trademark and copyright law protect two distinctly different rights, the same image can have both protections. You should definitely consider both forms of protection to take advantage of all available rights.
Intellectual property is important and valuable to your business. Intellectual property protection has never been more valuable. Take advantage of the protections provided by Copyright and Trademark protection. If it is important to your business, protect it.
Have questions about patents, copyrights, trade secrets, or other types of Intellectual Property? Let’s talk and assess your IP today.