Frequently Asked Questions
TRADEMARK
Q. What is a trademark?
A. A trademark is a word, symbol, or phrase used to identify the source of products and to distinguish the products of one manufacturer or seller from the products of another.
Q. What is a service mark, and is it different than a trademark?
A. A service mark is like a trademark except it is used to identify services rather than a product.
Q. What is trade dress?
A. Trade dress is the distinctive color, shape, packaging, design, or other visual characteristics of a product that identify the source of the product. The classic example of trade dress is the distinctive shape of the Cola-Cola bottle.
Q. What marks qualify as trademarks?
A. A mark must be used in commerce in connection with your product or service to qualify as a trademark. Also, a generic mark, or a mark that describes the category of your product or service (such as the mark “bank” to describe your banking services), is not protectable as a trademark. Finally, a merely descriptive mark, or a mark that merely describes a quality or characteristic of the product or service, may not be protectable as a trademark except when the mark has achieved sufficient public recognition through long and continuous use in the marketplace.
Q. Can I register my trademark with the U.S. Patent and Trademark Office if I am not yet using it in commerce?
A. If you wish to register your mark with the U.S. Patent and Trademark Office and are not yet using the mark in commerce but have the intent to do so, you can file an “intent to use” application and then, once you are using your mark in commerce, amend your application with a “Statement of Use,” but you must do so within the time frame required by the Trademark Office. The Trademark Office will not register the mark until you are actually using it in commerce.
Q. Do I have trademark protection if my trademark is not registered with the U.S. Patent and Trademark Office?
A. Yes. If your mark is protectable as a trademark and your use of the mark in connection with your product or service precedes that of others using the same or similar mark, you automatically have trademark protection without registration. Registration of the mark with the U.S. Patent and Trademark Office and in state or foreign trademark registries, depending on the extent of your use, provides additional protections and benefits, as described below.
Q. Why should I register my trademark with the U.S. Patent and Trademark Office?
A. Although you do not need to register your trademark to acquire trademark protection, registration with the U.S. Patent and Trademark Office provides additional protections and benefits, including 1) notice to the public that you claim ownership in the mark, 2) legal presumption of your exclusive right to use the mark in connection with your products or services, 3) a basis to register your mark outside the United States, and 4) a basis to prevent importation of infringing foreign products. Also, registration is required to file a trademark-infringement lawsuit in federal court.
Q. What factors should I consider when selecting my trademark?
A. Before selecting a trademark, you should determine if the mark is available for your use. This is important for two reasons: 1) to determine whether your mark is capable of registration, or protectable as a trademark; and 2) to avoid opposition to your registration by the owner of a similar mark.
Q. How do I know if my trademark is available?
A. You can order a commercial trademark search or hire an attorney to order or conduct a trademark search on your behalf. You can also search various online resources, such as the U.S. Patent and Trademark Office database, state trademark registries, domain-name registries, phone registries, business registries, and registries particular to your product or service. Because of the many factors that should be considered in determining the availability of a trademark, you should consider consulting an attorney.
Q. How long is a registration with the U.S. Patent and Trademark Office effective?
A. Federal trademark registration can be effective indefinitely if you maintain registration of your trademark by filing the required maintenance documents at the appropriate times. These include 1) a declaration of continued use between the fifth and sixth anniversaries of registration and 2) a declaration of continued use and an application for renewal between the ninth and tenth anniversaries of registration and between every ninth and tenth year afterward.
Q. What is the significance of using the ™ and ® symbols?
A. You can use the ™ symbol (or “SM” in the case of a service mark) next to the mark before the mark is registered to indicate that you assert trademark protection over it. You can use the ® symbol next to your mark once it is registered with the U.S. Patent and Trademark Office. You should only use the ™ and ® symbols in connection with your mark when you are using the mark as a source indicator.
Q. What are the fees for registration of a mark with the U.S. Patent and Trademark Office?
A. The U.S. Patent and Trademark Office registration fees are listed on the Office’s website.
COPYRIGHT
Q. What is a copyright?
A. Copyright is the exclusive ownership right to an original creative work, or “work of authorship,” and includes the rights to do and authorize reproduction, distribution, performance, and display of the work, and the rights to do and authorize preparation of a derivative work from the original work.
Q. What types of works are protected by copyright?
A. To be protectable by copyright, a work must be 1) original and 2) fixed in a tangible medium of expression (such as written down or recorded). Works protectable by copyright include literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic and sculptural works, motion pictures and other audiovisual works, sound recordings, and architectural works.
Q. Is an idea copyrightable?
A. No. Ideas are not protectable by copyright. Neither are procedures, processes, systems, methods of operation, concepts, principles, or discoveries.
Q. Who owns a copyright?
A. When a work is created, the authors of the work co-own it. In the case of a work made for hire — a work created by an employee for an employer within the scope of the employment relationship or a work created for someone else pursuant to a written work-for-hire agreement — the employer or other person for whom the work was prepared is the author. The copyright owner may transfer the work by a signed writing. Transfers of copyrights to works created before 1978 may be terminated by the original author or his or her heirs under certain circumstances.
Q. Does my work have copyright protection if it is not registered with the U.S. Copyright Office?
A. For a work created in 1978 or later, copyright protection attaches automatically once the work is embodied in a tangible medium (such as written down or recorded). But registering your work with the U.S. Copyright Office gives you additional potential remedies for copyright infringement and is required before you can file a lawsuit for infringement. A work created before 1978 may or may not be protected by copyright, depending on a number of factors, such as when the work was created, whether and when the work was published, whether the work was registered and registration was renewed, and whether the work included a copyright notice.
Q. Why should I register my work with the U.S. Copyright Office?
A. Although works created in or after 1978 automatically have copyright protection if they are fixed in a tangible medium of expression, registering your work with the U.S. Copyright Office gives you additional protections and is required in some instances. Additional protections afforded by registration include the potential to recover attorney fees and statutory damages in a copyright-infringement lawsuit and a presumption of ownership if you register within five years of publication. Also, you must register your work with the U.S. Copyright Office before you can file a lawsuit for copyright infringement.
Q. What is the significance of using the symbol ©?
A. The use of the © symbol or notice of copyright is not required on works created in or after 1978 for copyright protection to attach. But the use of the © symbol, or the word “Copyright,” the year of first publication of the work, and the name of the copyright owner affixed to copies of the work may provide additional protection. Such notice notifies others that you claim rights to the work and may preclude a defendant in a copyright-infringement lawsuit from successfully claiming innocent infringement.
Q. What are the U.S. Copyright Office fees for registration?
A. The U.S. Copyright Office registration fees are listed on the Copyright Office website.
Q. How is a copyright different from a trademark and a patent?
A. A copyright protects a creative work. A trademark is a word, symbol, or phrase that identifies the source of a product or service. A patent protects an invention or a discovery.
ENTERTAINMENT
Q. What is the difference between a song and a recording of a song for purposes of copyright?
A. A song includes the music and lyrics. A recording, or a “sound recording,” is the unique one-time recording of a song. For example, the song “I Will Always Love You” was written by Dolly Parton. The song has been recorded by numerous artists, including Whitney Houston. Whitney Houston’s recording of the song is a “sound recording.” A song and a recording of a song are entitled to separate copyrights and may have different copyright owners.
Q. Why do so many companies have policies of not accepting unsolicited copyrighted works, like my recording of my new song or my book manuscript?
A. These policies protect companies from claims of copyright infringement. Companies want to ensure the work is coming from a trusted, known, or recommended source before they listen to or read it.
Q. A record company has offered to record my music in exchange for a large fee up front. Is this a good idea?
A. The general rule is that you should not have to pay a record company any fees up front. Reputable record companies typically are compensated through a percentage of the money made from sales of your recordings and not in a lump sum on signing your recording contract. You should consult a lawyer about any entertainment contract you are asked to sign.
Q. What is a performance rights society?
A. A performance rights society, including ASCAP, BMI, and SESAC, collects license fees and distributes royalties on behalf of song publishers, composers, and songwriters for the public performance of their songs by others. Songwriters and composers may affiliate with only one society. Information about the different societies is located on their websites and should assist you in choosing the best one for you.
Q. How do I protect my band’s name?
A. A band name may be registered with the U.S. Patent and Trademark Office as a trademark if it is not being used by another band. A good way to check for the availability of a band name is to search Allmusic.com. You should reach a written understanding with your band members, your producer, and your record company as to ownership of your band name and provide in advance who will own the name in the event a member leaves the band.
INTERNET
Q. How do I know if a domain name is available for registration?
A. You can search the availability of a domain name on the website of any domain-name registrar, such as Network Solutions or Go Daddy.
Q. How do I register a domain name?
A. You can register available domain names on the website of a domain-name registrar, such as those listed above. The cost and term of registration is set by each registrar.
Q. How do I determine the identity of the registrant of a particular domain name?
A. To determine the identity of a domain-name registrant, you can conduct a “whois” search on the Internet at locations such as Network Solutions. Many registrants pay an extra fee to their domain-name registrars to make their personal contact information private, so you may not be able to determine the identity of the registrant through a “whois” search. If you have a legal action against that individual or wish to make an offer to purchase a domain name from that individual, the “whois” search should at least reveal an agent you can contact.
Q. Can I register a domain name containing the name of a real individual or someone else’s product or business name?
A. You should exercise caution in doing so. The use of the name of another living person in your domain name may constitute unlawful “cybersquatting” if you registered the name without that individual’s consent and did so with the intent to profit by selling the name to that individual or another. Also, the use of another individual’s product or business name, or a similar name, in your domain name may constitute cybersquatting if the name is a protectable trademark and you registered, sold, licensed, or used the name with the bad-faith intent to profit from it.
Q. What recourse do I have if someone else has registered a domain name containing my name or the name of my business or product?
A. If someone has registered a domain name containing your personal, business, or product name with the bad-faith intent to profit by selling it to you or another, you may have a legal claim under the Anticybersquatting Consumer Protection Act. You may also file a complaint under the ICANN (International Corporation for Assigned Names and Numbers) Uniform Dispute Resolution Policy, an expedited manner of seeking relief. If someone uses a domain name containing your trademark in a manner that violates your trademark, you may have a claim for trademark infringement. Keep in mind that simply because someone has registered a domain name that includes your personal, business, or product name does not necessarily mean you have a claim to the domain name. If your name is generic or the individual is using the domain name fairly and not in bad faith or in violation of your trademark rights, you may not have a claim. For example, a lawyer would have no claim against the registrant of the domain name lawyer.com because the term “lawyer” is generic.
Q. Do I own my website content?
A. It depends. If you created the content and did not transfer ownership to someone else through a signed writing, you own it. If your employee created the content for you within the scope of his employment, you own it. If you hired a non-employee to create the content for you and do not have a written contract with the designer, the designer owns the content. You would need a written “work for hire” contract or assignment from the designer to assign ownership of the content to you. You should also make sure you have permission to use any elements included on your website that are owned by a third party.
Q. What are some of the legal concerns of which I should be aware in hosting my own website or blog?
A. For a comprehensive review of legal concerns regarding use of your website or blog, you should consult an attorney. Following are some of the concerns of which you should be aware:
1. Permissions: You should make sure you have permission to use all third-party content on your website, such as photos, music, artwork, text, and trademarks, or consult with an attorney to determine if use of the third-party content is “fair use” and does not require a license.
2. Privacy: To the extent users can input personal information into your site, you should be aware of privacy concerns and consider posting a privacy policy. If you do post a privacy policy, you should be careful to honor it, as you are creating a contract between you and the user.
3. Right of Publicity: Your use of another individual’s name or photograph for advertising purposes without the individual’s permission could lead to a claim of violation of the individual’s right of publicity.
4. Third-Party Content: You should carefully monitor content posted by others on your website or blog for defamatory, obscene, or infringing content. Several laws, such as the Digital Millennium Copyright Act of 1998 and Section 230 of the Communications Decency Act of 1996 may protect you from such postings if you comply with the notice and procedural requirements of those laws. You should consider posting a “Terms of Use” section making clear the terms users of your website must follow, including the types of content that are not acceptable on your site.
DISCLAIMER: The information in the answers to the Frequently Asked Questions is provided for informational purposes only and does not constitute legal advice. The information is also subject to change without notice. Many of the principles discussed may be subject to exceptions and qualifications not noted.
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