The following article originally appeared on the Small Business Administration website in February 2001, but it was subsequently removed.
The basic concept behind copyrights and patents is providing legal protection to the inventors, authors, and creators of artistic works that insures their right to economic benefit from the investment of their time, skill, energy and vision of their inventions and creations. This nation’s founders viewed legal protection for economic benefit resulting from one’s creative efforts as so crucial to the encouragement of artistic and scientific inventions that they included it in the Constitution, and the first federal patent and copyright laws were enacted in 1790.
The basic concept behind trademarks is to prevent unfair competition. Trademark law protects the owner of a trademarked name or symbol, e.g., the name “Burger King” or McDonald’s “Golden Arches”, from a competitor using a name or symbol that is so similar that it causes confusion for consumers, who may be “stolen” from the owner of the trademark. For example, because the name “Burger King” has trademark protection, it would be illegal for a competitor to name its fast-food restaurants the same, or nearly the same. Similar protections are extended to unique services through “service marks.”
Copyright law guarantees that the copyright owner has the exclusive right to: reproduce the work, prepare derivative versions of the work, distribute copies of the work, perform the work publicly, display the work publicly, or authorize others to do any of these activities.
Today, copyright protection attaches at the time the copyrightable work is created. However, only those works registered with the federal government within three months of “first publication” are entitled to the full range of remedies for copyright infringement.
Some elements of a sign are subject to copyright protection, and you must be careful not to infringe upon the copyrights held by others when designing a sign. Pictorial graphics, pictures and company logos, but not typefaces, are entitled to copyright protections, and unauthorized use or reproduction of these items may result in liability. For example, a business owner infringes on copyrighted material by copying the artwork or other pictorial elements displayed on someone else’s sign (or shown to the business owner by a sign manufacturer) for his own use without prior authorization. When this happens, the infringing business owner is subject to legal action that can result in his having to pay the copyright owner monetary damages, attorney fees, and substantial financial penalties, including statutory penalties of $100,000 per infringement.
Information and forms for registering a work as copyrighted are available online from the U.S. Copyright Office http://lcweb.loc.gov/copyright/, or may be requested from:
U.S. Copyright Office
Library of Congress
101 Independence Ave. S.E., LM-401
Washington, D.C. 20559-6000.
Telephone inquiries can be directed to the Public Information Office, (202) 707-3000, from 8:30 a.m. to 5 p.m., Eastern Time, Monday-Friday.
The issuance of a patent is the grant of the legal right to exclude others from making, using, or selling one’s invention, and this includes the right to license others to make, use, or sell it. Patents are registered with the United States Patent Office and have protections under federal law similar to copyrights.
Patent issues may arise concerning the design of a sign’s frame, materials, components, or other structural elements. A patent holder may sue anyone he believes has infringed on his rights in the patent by using some, or all, of the basis of the patent without authorization. If successful in such a lawsuit, the patent holder is entitled, at minimum, to a court order barring further infringement of the patent, and compensation for any lost royalties that resulted from the infringement. Where the patent holder can demonstrate that the person who infringed on his patent did so knowingly, he may also be awarded attorney fees.
Information about patents is available from the U.S. Patent and Trademark Office online at http://www.uspto.gov/. If you need answers to specific patent questions or want to know more about patents in general, please contact the Patent Assistance Center at 1-800-786-9199. If you are calling from Northern Virginia, the number is (703) 308-4357.
Trademarks and service marks
A trademark is a word, phrase, symbol, or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or its packaging, while a service mark appears in advertising for the services.
Trademark rights arise from either 1) actual use of the mark, or 2) the filing of a proper application to register a mark in the Patent and Trademark Office, and stating that the applicant has a bona-fide intention to use the mark in interstate commerce. While federal registration is not required to create a trademark, there are several advantages to federal registration, including: notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
The federal Lanham Trademark Act (15 U.S.C., section 1051, et seq) protects federally registered names, marks, emblems, slogans, and colors, if included in the registration, from government interference. The first clause of section 1121 (b) of the Lanham Act reads as follows:
No state or other jurisdiction of the United States or any political subdivision or any agency thereof may require alteration of a registered mark, or require that additional trademarks, service, marks, trade names, or corporate names that may be associated with or incorporated into the registered mark be displayed in the mark in a manner differing from the display of such additional trademarks, service marks, trade names or corporate names contemplated by the registered mark as exhibited in the certificate of registration issued by the United States Patent and Trademark Office.
While it is well accepted that a governing entity may regulate signs, subject to constitutional protections, the plain language of the Lanham Act prohibits federal, state and local governments from requiring alteration of a registered trademark, as registered. A Lanham Act issue may be raised should a community require, as a condition of obtaining a sign permit, that the trademark be altered. Also in such cases, either in the alternative or in addition to reliance on the Lanham Act, a sign owner precluded by a code from displaying a registered mark on a sign could argue that such preclusion violates the “content-neutrality” requirements imposed by the First Amendment.
Basic information about trademarks, including access to trademark forms and information about applying for a trademark, is available from the U.S. Patent and Trademark Office online at http://www.uspto.gov/. This website also contains information on how to conduct a trademark search to determine if your proposed trademark is already registered. You may also contact the Trademark Assistance Center at 1-800-786-9199. If you are calling from northern Virginia, the number is (703) 308-9000.
How to use a trademark effectively.
As a small-business owner, one of your primary goals in signage should be to create “brand” recognition of your business in the community. One of the best, and most cost-effective, methods of doing this is to create an attractive company logo or pictorial graphic and use it on all of your signage. Repeated viewing by passing motorists of your company’s “signature” signage will help brand your business site, and begin to create “top of mind awareness” with potential customers. Also, your company’s trademark should appear for example, on company stationary and uniforms. And whenever possible or feasible, it should be featured in other media advertising, such as the Yellow Pages.
Photo credit biwook