Home | Trademarks | Should An Artist Trademark Their Name? [Part II]
Trademarks

Should An Artist Trademark Their Name? [Part II]

trademark

In Part 1, we talked about the basics and potential pitfalls of trademarking your name for your product or service.  One important point was that trademarks are for products or services currently being sold; otherwise referred to as “in commerce.” But what if you want to register a trademark for products you haven’t made yet but are planning to in the near future?  That concept is known as “intent to use.”  Let’s say you were planning on making t-shirts and other clothing products. Well, first, that is Class 25: Clothing and Apparel Products – Clothing, footwear, headgear.  What we can do is submit an “intent to use” application for those products in Class 25. Think of it as holding a space in line.

Once you get the products made, you will need to convert your application to an “in use” application by paying the requisite fee. Even though your product isn’t made yet, nobody can trademark with your name for that class. If somebody makes products during that holding period, your trademark effective date will be the date that you submitted the “intent to use” application, not the day you convert the application to “in use” (which should be the day you sold the products in commerce). You cannot hold the space forever, though.  You will have to pay a fee every few months just to continue the “intent to use” classification. After a couple of years or so, you may lose it.  Certainly, if someone else wanted to register the Trademark, and could show you were not making any of those products for the last 2 or 3 years, they would likely be able to contest your “intent to use” classification.

If you don’t have a trademark, you are not without rights. Let’s touch briefly on the difference between ™, ℠ and ®.  ® is for a trademark that has been registered and approved by the United States Patent and Trademark Office. (USPTO).  The ® confers certain federal rights:

Registration gives a party the right to use the mark nationwide, subject to the limitations . . . . 15 U.S.C. � 1072. Registration constitutes nationwide constructive notice to others that the trademark is owned by the party. Registration enables a party to bring an infringement suit in federal court. 15 U.S.C. � 1121. Registration allows a party to potentially recover treble damages, attorneys fees, and other remedies. Finally, registered trademarks can, after five years, become “incontestable,” at which point the exclusive right to use the mark is conclusively established. 15 U.S.C. � 1065.(Harvard.edu)

This does not mean that you have no rights without a trademark.  ™ and ℠, which stand for Trademark and Service Mark respectively, can be used attached to a name without registration with USPTO. The symbols are used to provide notice of a claim of “common law” rights in the name, which means regular everyday state laws. They inform potential infringers that a term, slogan, logo, or whatever name you are trying to protect is being claimed as a trademark. But, use of the symbol ™ or ℠ does not get you the federal protection. If you want to fight someone for using your name, then you have to go the standard lawsuit route, but the ™ and ℠ do give you a bit of extra protection over those that did not claim the symbol. That is a topic for another post but for now, if you do not have a trademark in your name or are in process, you can still use the ™ or ℠.

intent to use
You can ‘hold your place’ and prevent anyone from operating a business with your name while trademarking a product or service.

So, should you submit a trademark registration for your name?

In general, if you can show distinctiveness in the name, my feeling is that it is far cheaper to register a trademark now than try to fight someone over it later. Think of it as an insurance policy. You may not have needed it, but you are glad you have it when the accident happens. This is a big country, so someone may be out there right now using your name, making the same products without your knowledge.  You don’t want them to become popular and apply for a trademark, knocking you out of the game. It is better that you are the one sending a cease and desist letter.

Finally, trademarks can be complicated.  Don’t try to do Trademarks yourself if at all possible. Deciding on distinctiveness is only one of the many issues that a good Trademark attorney can help you determine.  They know what to do, they can submit applications in a way in which they are more likely to be approved.  Also, if the USPTO does have problems with the submission, they will issue “office actions” requiring responses. That is something you would be better served to have a trademark attorney deal with. The truth is that many trademark applications are denied, so working with an attorney enhances your chances of having your trademark approved. Applications submitted by attorneys have a far greater acceptance rate than those submitted by non-attorneys. Also, note that trademarks fall under federal law, so you don’t need to find a local attorney.  You can use an attorney from anywhere in the country.

 

Enhanced by Zemanta

About the author

Steve Schlackman

As a photographer and Patent Attorney with a background in marketing, Steve has a unique perspective on art and law. Should you have any questions on Intellectual Property contact him at [email protected] His photography can be seen online at Fotofilosophy.com or on display at the Emmanuel Fremin Gallery in New York City.

Add Comment

Click here to post a comment

Your email address will not be published. Required fields are marked *

The Latest From Artrepreneur

  • How to Keep in Touch with a Generous Arts Organization

    Finding an arts organization or art collector interested in sponsoring your work is an important accomplishment. Here's how to keep those patrons engaged and inspired by your work.The post How to Keep in Touch with a Generous Arts Organization […]

  • Document Your Artwork to Ensure Its Preservation

    When you're livelihood depends on your artwork, you can never be too careful. Document your artwork, assess its value, and create a digital art portfolio in order to protect yourself from catastrophe.The post Document Your Artwork to Ensure Its […]

  • Mastering The Art of Video Storytelling

    Video storytelling is a quick, attention-grabbing way of getting people interested in you as an artist. Here's how to get started.The post Mastering The Art of Video Storytelling appeared first on Artrepreneur. […]

  • These Artist in Residence Programs Will Help You Connect With Nature

    The National Park Service Artist Residencies offer artists a chance to escape their everyday lives and seek the inspiration they crave.The post These Artist in Residence Programs Will Help You Connect With Nature appeared first on Artrepreneur. […]

  • Emerging Artist Amy Hughes on Showing Work Post-Grad

    Figurative painter Amy Hughes on studying in Liverpool, moving to New York, and balancing teaching with art-making and exhibitions.The post Emerging Artist Amy Hughes on Showing Work Post-Grad appeared first on Artrepreneur. […]

  • 5 Female Artists Putting Inclusion in the Spotlight

    In the constant struggle for greater recognition and representation, these five female artists make their voices heard.The post 5 Female Artists Putting Inclusion in the Spotlight appeared first on Artrepreneur. […]

  • How to Heal Common Pain Points for Artists

    Often times, the overwhelming process of achieving mental balance within our studio practice means that our physical wellness takes a back seat. Wellness for Makers founder Missy Graff Ballone has some solutions.The post How to Heal Common Pain […]

  • When Applying for Visual Art Grants, Bigger Isn’t Always Better

    Although local level visual arts grants might not have the allure of large-scale international grants, these small milestones can help you reach your goals as a professional artist.The post When Applying for Visual Art Grants, Bigger Isn’t […]

  • The 11 Best Podcasts for Artists

    If you’re bent on driving more innovation and strategy to your practice but your visual mind needs a break, consider adding some podcasts for artists to your daily task list instead.The post The 11 Best Podcasts for Artists appeared first on […]

  • Jasmina Danowski on Her Latest Exhibition at The Pierre Hotel

    Brooklyn-based artist Jasmina Danowski reflects on her first exhibition in a nontraditional space. "Field Trip" is on view at The Pierre Hotel through February 2018.The post Jasmina Danowski on Her Latest Exhibition at The Pierre Hotel appeared […]