IP Attorney Ben Natter Talks Trademarks

Dabney Lee planner for Blue Sky Planners

When you are born with an original name like Dabney Lee, you are destined to become a brand, but do you really need to trademark your own name?  How does a designer like Dabney Lee protect her signature stripe patterns from potential copycats?  What’s the difference between trademarks and a copyrights?  These are some of the questions I get from prospective clients who seek to grow their brands through licensing. I also get a lot of queries from manufacturers who want to make sure that the licensed trademarks and designs they invest in are truly original and protected.

I interviewed New York City based IP attorney Ben Natter of Haug Partners LLP who was generous enough to answer these questions and provide a primer on trademarks and copyrights.

JT:  If I want to develop products using my legal (birth or married name) do I have to trademark it? 

BN: You are not required to register or apply to register a mark to be used with potential products or services.However, if you are expending time, effort and resources into a brand, whether it be your name, a coined term, design or existing term, it is wise to clear the potential mark to confirm you are not infringing the rights of an existing brand owner and to determine if you will be able to protect the mark. 

Using a surname alone as a brand can be quite complicated and it can also be difficult to protect a surname, on its own, as a trademark in the United States.

Additionally, as brands evolve, brand owners using their own names needs to be very savvy when entering into agreements.  There are many stories of famous designers losing rights to their own names.

JT:  If I have not trademarked my name but have been developing and marketing products under a brand name for several years, can someone else trademark it?  What do I do if that happens? 

BN: You would have priority rights to the brand name and would be able to challenge another party’s attempted use or registration.  Despite potential recourse, it is not a good idea.

JT: How much does it cost, on average, to trademark a brand name?  At what point do I know that it’s really worth the investment? 

BN: It depends.  With smaller clients,  I always make a point to discuss realistic plans for a brand in the near future, potential markets and a budget.  As I mentioned, clearance is extremely important and it should first be established that one is not infringing another party’s trademark rights. 

JT: Describe the trademark process (in brief). 

BN: It is best to work with an attorney to have a mark cleared in all of countries or regions where there are plans to use a mark in the near future.  If we are discussing goods, and you anticipate products being sold in the US, Mexico and United Kingdom initially, we would work with local counsel to clear the mark in those countries and work on a filing strategy to achieve the most seamless prosecution process (the time from filing to registration).  In the United States, the time for an application to reach an examining attorney is approximately three months.  Provided the examining attorney is of the opinion that the mark is registrable, the mark will be approved for publication and scheduled for publication shortly thereafter.  Once published, any party that feels they may be injured as a result of the registration of the mark may oppose the application.  This period runs for thirty days.  Provided the mark is not opposed, it should register or a notice of allowance should issue (if the mark was not in use at the time of filing).  A smooth trademark application process generally takes nine months in the United States if the mark is in use at the time of filing.  If the mark is filed based on intent to use at the time of filing, we will need to file evidence of use after the allowance issues.  If you commence use of the mark at some point while the application is pending and we file the statement of use immediately, it takes only slightly longer for the mark to register.

JT: I was recently in a situation where a brand I was interested in licensing owned its trademark in the UK, but someone else trademarked a name that was very similar in the US.  I won’t say the name specifically but say I owned “Ashley’s Toys” in the UK and someone else trademarked “Ashley’s Toy” in the US, I would assume that it would be difficult to trademark my UK brand name here in the US, correct?

BN: That is most likely correct, however we may have grounds to challenge the US registration if we can find prior use by the potential licensor in the US.  It is always wise to have an attorney review the situation as it may still be possible to register the mark.

JT: What are the risks for licensing my product internationally without owning my trademark in each and every territory? 

BN: Firstly, you may potentially be infringing another party’s rights in a specific country.  Most commonly, licensees or distributors use this as an opportunity to register the mark in their own name. This can create major problems later on if you wish to change licensees. Trademark “squatting” is also becoming an increasingly common practice and, if selling in a country without a registration, any party can register a mark and then try to prevent a brand owner from selling its products.  In summary, it is a major risk and there are a myriad of problems that can occur as a result.

JT: Switching gears to copyrights, what is the difference between a copyright and a trademark? 

BN: A copyright protects original works of authorship fixed in a tangible medium.  Designs, books, blogs, photos and videos, digital photo, a printed image, and many other works can qualify for copyright protection.  A trademark is, most commonly, a word, design or symbol used to indicate a source of goods.

JT: I have heard varying opinions on the issue of whether a designer/brand needs to own a copyright in order to license it to a third party.  Some lawyers have said that by virtue of one licensing a piece of art or pattern on a product over multiple years, or on multiple products, it is protected by law and therefore filing a copyright is a waste of money.  What are your thoughts on that?

BN: A copyright is relatively inexpensive and a registration is needed as a prerequisite to a copyright infringement suit.  We recommend clients entering into license agreements file for copyright protection, thus a registration will already be in place if a design is ever infringed.

JT: A lot of design these days is derivative or influenced by things we’ve seen in the past or on social media.  What steps should a designer take when they are creating products or patterns in order to prove that his/her work is original? 

BN: Designers should keep records of their work.  Copyright registrations can also be helpful for this purpose.

JT: Can one copyright generic patterns like dots and stripes, or trademark common phrases like “You Go, Girl” or “Home Sweet Home”? 

BN: In the United States, works must posses “at least some minimal degree of creativity” to qualify for copyright protection.  If the pattern is original and possesses some level of creativity, it may be eligibly for protection.  With respect to popular phrases, a trademark must be able to serve as a source indicator when used in conjunction with particular goods or services.  If the phrase can function as a source indicator to distinguish goods or services, it can technically be registrable.  However, it is generally not advisable to file for a well known phrase as a trademark as it is likely the phrase may be associated with another party.

JT: Lastly, if you believe someone has copied your designs or is using your trademarked brand name, when would it make sense to take action?

BN: The infringing party should be put on notice immediately.  A good number of instances of infringement are innocent and can be resolved swiftly.  It is also important to use either a tm (if the trademark is not yet registered) or the ® (registered trademark symbol, which can be used only with trademarks that are registered) after your mark to put other parties on notice of your rights.  Failure to use the ® symbol can also limit recovery in the event of  infringement.