Trademarks vs. Copyrights, and the Need for Attorneys

I get this question a lot: “What’s the difference between a Trademark and a Copyright?” Usually, that’s followed by: “Ok, so do I need an attorney to Trademark or Copyright my IP?” Today, I’m going to address both questions in some detail, focusing primarily on licensing your intellectual property.

crtm
What’s a trademark, what’s a copyright, and what kind of things do they protect?

A trademark is a word, phrase, symbol or design, or any combination thereof, that is distinctive of a person’s goods or services and distinguishes them from the goods or services of another. For those curious about where Trademark protection comes from, it is conferred through federal law called the Lanham Act, also known as the “Trademark Act”, which is 15 U.S.C. ยง 1051 et seq. Practically speaking, when we’re talking trademarks, we’re talking about protection for things like a brand (for instance, “NIKE”, “Lacoste”) or design (i.e., the NIKE “Swoosh”, or the Lacoste “Gator”–I think that’s a gator anyway, but it may well be a croc’).

A copyright is an original work of authorship fixed in a tangible medium of expression. Copyrights enjoy federal protection under Title 17 of the United States Code, as well as a clause in the United States Constitution, (See, Article 1, Section 8, Clause 8). Practically speaking, we’re talking about things like books, songs, movies, that sort of thing.

What are some key differences between Trademarks and Copyrights?

As stated above, trademarks and copyrights generally protect entirely different things. Certainly, depending on what the creativity of a trademark’s design there could potentially be some overlap, but we don’t see it that often.

Here’s a few other differences:

Ownership

  • Trademark – Trademark ownership is based on “use”. The mark must actually be used in interstate commerce at some point if you wish to register with the USPTO.
  • Copyright – Someone owns a copyright the moment they place the work into a fixed medium.

Ability to Sue for Infringement

  • Trademark – If you can show legitimate use in commerce, you’ll have a much weaker case than you would if your mark were registered, but you’ll still have the ability to sue.
  • Copyright – Must be registered with the U.S. Copyright Office to sue.

Duration of Protection (if Federally Registered)

  • Trademark – Assuming you file your section 8 declaration of continued use between the 5th and 6th years after registration, initial protection lasts 10 years. Registration may be extended an additional ten years if a renewal is filed between the 9th and 10th years. Then, you can start renewing every ten years. Essentially, these things don’t last indefinitely if improperly maintained (or if they cease to be used). The USPTO’s website offers guidance in this regard.
  • Copyright – Assuming the creative work is made today, copyright protection lasts the duration of the owner’s life and an additional 70 years thereafter.

Cost

  • Trademark – Trademarks can get expensive quickly if you’re wanting to claim numerous goods or services under your brand. Generally, the fees to apply for federal trademark registration are $375.00 per class of goods for a paper filing and $325.00 per class of goods for an online filing. These figures do not include the filing of documents necessary to maintain your trademark. Under certain circumstances you may be eligible for reduced fee filings, hence consulting the advice of a trademark attorney is highly advisable.
  • Copyright – Copyrights are, simply put, vastly less expensive than trademarks to register. For single author literary works; visual arts works; performing arts works, including motion pictures; sound recordings; and, single serial issues, if the author is the claimant and it’s not a work made for hire, online copyright registration is $35.00. If you don’t fit squarely in that category, online copyright registration is $55.00. Paper applications are $85.00, and in the certain cases you may be compelled to register via paper. For further information on the schedule of fees, check out this PDF from the U.S. Copyright Office, or consult your copyright attorney if you have further questions.

Complexity to Register (for Laypeople or First-Time Applicants)

  • Trademark – High. Trademark prosecution invites myriad opportunities for a first time applicant to stumble (and potentially lose a lot of money in the process). There are some strict deadlines in the post-application and post-registration process that are inexcusable to miss. More, there’s the potential that the Trademark Examiner will institute an office action if there’s an identifiable defect or issue with the application.
  • Copyright – Lower. Copyright registration is fairly straightforward, and is summed up fairly nicely in this tutorial provided by the U.S. Copyright Office.

So, in your opinion do you think I need a Trademark attorney, Copyright attorney, or both?

I’m going to run the risk of sounding entirely like a cliche attorney when I answer, “it depends”. There’s never a substitute for professional legal advice, which this blog does not profess to be offering (especially given I can’t foresee what your particular issue(s) or goal(s) may be). However, here’s what I generally think:

If you believe someone is infringing your trademark or copyright and want to institute a suit against said alleged wrongdoer, then, of course you need an attorney–I mean, these things are tried in Federal court.

With respect to simply filing a registration for a Copyright, if you believe you can educate yourself with respect to the materials afforded to you by the U.S. Copyright Office, you may be able to skate by without any issues of consequence. Still, it never hurts to at least consult with a Copyright attorney if you have any questions relating to the process (and my office is happy to help you with that, usually free of charge).

With respect to filing for registration of a Trademark, there’s no legal requirement that you employ an attorney to assist you with your application, but it’s very advisable that you do. A Trademark attorney can save you a lot of money (and stress) by: advising you as to the likelihood of success for registration of your proposed trademark (or service mark); conducting a “knock-out” search for similar marks in the database; identifying the overall strength of your mark and aiding you to improve it if merited; eliminating unnecessary declarations of goods or services, or conversely, anticipating the necessity of such a declaration; responding to office actions on your behalf; calendaring important USPTO deadlines for your registration post-filing; and, generally walking you through the process which can be very complicated for first-time registrants.

In sum, if there’s a scintilla of doubt in your mind, it’s best you contact a professional to help out. After all, my office does provide you with an initial free consultation.

Leave a Reply

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