On this weeks episode Ian Paget interviews Gordon Firemark, a practicing attorney from Los Angeles to talk about the legal side of logo design, including the difference between copyright and trademarking, the approach to trademark a logo, what action you can take if your work is copied, how and when to use the right symbols on logos, and the ins and outs of contracts too.
Gordon is the producer and host of Entertainment Law Update, a podcast for artists and professionals in the entertainment industries. His practice also covers intellectual property, cyberspace, new media and business/corporate matters for clients in the entertainment industry.
- Law Offices of Gordon P. Firemark
- Digital Entrepreneur’s Business and Legal Toolkit
- Trademark Electronic Search System (TESS)
Gordon Firemark Interview Transcription
Ian Paget: To provide some credibility to the information you provide, can you briefly introduce yourself to the audience?
Gordon Firemark: I am a practicing attorney here in Los Angeles, California. I do entertainment, media, and business law, and within that is the field of intellectual property; copyrights and trademarks specifically. I don’t do patent stuff myself. In these industries, copyrights and trademarks are sort of the main articles in trade, and so we entertainment lawyers know a great deal about this.
In my business, I register trademarks for clients across all industries, but largely in the entertainment and media artistic spaces, and I’ve been doing this for about 27 years, since 1992. Before that, I was in the television production business, and before that the theatre business. Yeah, I love what I do, I love what I do. In fact, I like to teach and I like to help people learn how to do it themselves as well.
Ian Paget: Brilliant stuff. As I mentioned, I run a Facebook community for logo designers, and recently I mentioned to the group that I was going to be interviewing you, so I asked if anyone had any questions. I was really amazed by the responses. There were so many questions from members, so I know that this will be a really popular episode.
To start the discussion, the first question I have for you is from the standpoint of protecting your work, what is the difference between copyright and registered trademark?
Gordon Firemark: A copyright is a protection for the design, the artwork, the expressive, creative originality that goes into creating something like that, and it protects against copying of that design of the logo, and it being used and incorporated into other kinds of works, and so on.
Gordon Firemark: Trademark protection is … it’s a different flavour. Now, when we deal with logos, of course it is a distinctive symbol or mark of some sort that’s being used as a brand identifier, and so what the protection gives us is the right of the owner of that mark, the user of that branding, to have exclusive right to use it in connection with those kinds of goods or services as a brand or source identifier.
Copyright law wouldn’t stop somebody else from using something similar to identify their own goods or services that are competitive in the marketplace. Trademark law goes as far as anything that is confusingly similar, so … and there’s some kinds of logos that wouldn’t be protected by copyright, for example, a red triangle in a corner of a box. Here in the U.S., we have a brand called Nabisco that probably sells worldwide now. That red triangle design is probably not protectable by copyright, it’s a red triangle. There are other components to it that might be.
Another issue that comes up that’s recently becoming an issue is here in the U.S., the copyright term is coming to an end for a number of works. One of the most notable ones is Mickey Mouse. The original design of Mickey Mouse’s character protected by copyright from the movie Steamboat Willy is going to fall into the public domain in 2024, but Disney uses it in … and has obviously a great deal of investment in the Mickey Mouse character, so they have begun using it as their trademark as well. Trademark protection doesn’t expire as long as the owner continues using the mark as an identifier in commerce of the source of goods or services.
Ian Paget: So to expand on that, as a graphic designer, since there’s so many registered marks already in the world, how do you avoid breaching any trademarks? Are there any tools out there beyond just performing a Google search?
Gordon Firemark: Well, there are search firms out there that can do visual searching, and Google can do a search of images as well, so that you can do a match up search kind of a thing. I think most of the time trademarks are prominent enough in the world, especially logo designs. Well, maybe I’m wrong about that, but if they’re really distinctive, you’re likely to know about them, or they’re likely to show up in a fairly basic search.
There are much more comprehensive searches available for a fee from various vendors, and we do recommend before someone goes and registers a trademark that they confirm that it’s available. I’m not sure at the design phase … well, I mean, I guess if someone’s investing a great deal of money and resources into designing a new logo for their business, they want to make sure they’re not going to have to do it all over again in six weeks because they found something infringing.
Yeah, so these searches are worth doing in that instance, but again, you’ve already done a lot of the design work before you can run that search. Now, in the U.S., the U.S. Trademark Office does have a database that has design code indicators where you can say, “Well …” An example that I see often is a key with a heart shaped handle. You can search for, “Heart shaped key,” and find all the different ones that are registered in the database there.
That doesn’t mean it’s necessarily free and clear, because there could be others that are using similar designs that aren’t registered as trademarks, but it’s a good start. Going in and learning how to really search the U.S. Trademark Office’s website and database is probably a good start, also. There are, like I said, these search firms can do it for you. Fees tend to be in the hundreds of dollars per search, so doing a preliminary knockout search is probably a good idea for yourself.
Ian Paget: Sure, so basically it would just be a case of doing an image search on Google, and also checking the database you mentioned.
Gordon Firemark: Yeah.
Ian Paget: Is that database something that’s freely available to everyone?
Gordon Firemark: Yes, the U.S. PTO, that’s the Patent and Trademark Office.
Ian Paget: Brilliant, so what I would do for listeners is link to that in the show notes for this episode, which can be found at logogeek.uk/4.1.
Gordon Firemark: Yeah, yeah. So when you do that, just note for your reference, USPTO.gov, and the service is called TESS, T-E-S-S. Trademark Search … yeah.
Ian Paget: Fantastic. So once you do have the design complete, what’s the process for registering that logo?
Gordon Firemark: Well, before we go there, I think I should talk a little bit, and let me toss you the question to ask me, or maybe … It’s about whether a designer is the person who should register.
Ian Paget: Sure, that’s a good point.
Gordon Firemark: It’s important that we note that a designer can own a copyright in a design he or she creates, because they’re doing the original work to create it, but unless that designer is using that mark to identify his or her own services or goods, they’re not the owner of the trademark, the client for whom they’re creating that work is the owner of the trademark. That’s who would be registering the trademark or service marking in this instance. So yeah, designers need to be mindful about that and retain ownership of their copyright in the image at least until they’ve been paid in full for the design work.
Ian Paget: I think while we’re on that topic, it’d be worth discussing the best approach for transferring copyright of a design to the client. What I do at the moment, in my contract it states that copyright is transferred once payment has been made, and I also send a … what I call a copyright transfer document, and that’s just something that I put together based on things I found online, and it just briefly explains that basically the copyright of the final logo has been transferred, I sign it, the client signs it. Does something like that suffice in that situation?
Gordon Firemark: The specific language of a transfer of ownership is usually in the context of the document we call an assignment of copyright, and it’s relatively simple. It’s about a three quarters of a page of typed text when we lawyers do it. The fact of it is, in your engagement contract or whatever you do, it could be as little as two or three sentences.
Ian Paget: Brilliant, thanks for confirming. To go back to the original question, in terms of registering the trademark, what is the process for that?
Gordon Firemark: Here in the U.S., registering a trademark is a relatively straightforward procedure. You log into the USPTO‘s … you can do it on paper, but most of us log into a website, and we begin entering the identifying information about the owner and the mark itself, and pay a fee. We have to provide specimens to establish that we are in fact using it in commerce, because that’s the way the rights attach, so once we’ve done that we’ve established the proof.
Then what happens is you submit this with your filing fees, and the government takes its time to process the application. Now look, they’re backlogged, it’s a busy office, and eventually an examining attorney gets assigned to the case who will look at the application, determine whether the mark qualifies, that is is it distinctive? Are there any confusingly similar marks already out there in use?
They do their own search to verify that, and assuming that they find it registrable, then they will notify you and certify it for publication. The publication is essentially an opportunity for the general public to comment or oppose the registration, because they may feel that the mark is too similar to their own, or that it infringes on their brand, or something like that.
Now, if the trademark examiner has found that it isn’t yet qualified for registration, they will notify the applicant, usually through the attorney, with what’s called an office action, and that is a legal proceeding, essentially, where they’re inviting you to respond to their objections to the registration, and you can make your legal arguments. You can modify the application in some respects, to accommodate a concern, changing the wording of the description of the goods and services that the mark is attached to, those kinds of things. Eventually you either get a final rejection or a final approval and publication.
Once the publication happens, there’s this window of time, as I mentioned, for public comment, and that’s 30 days. And after that, then it gets scheduled to be published in what’s called the Trademark Gazette, the gazette of the Trademark Office, and that is once it’s published … I’m sorry, it’s published in the gazette for comment, and then once it is registered, it is placed in there permanently. You’ll receive a certificate, and off you go. At that point, you may start using the R in a circle design or indicator to show that it’s a registered trademark.
Ian Paget: Brilliant, really great answer. Moving on from that, once you do have your logo trademarked, what happens if we do find that the logo has been copied in some way, or if you find something similar? What can you do about that situation when once the logo’s been trademarked?
Gordon Firemark: Right, so whether you’ve registered the trademark or not, when you encounter a situation of infringement, it’s important I think at that point to consult with a lawyer. You can reach out to the other party with a notification, “Hey, we have a registered …” If you have a registered trademark you say so, or that, “We’ve been using this brand for our business in commerce in this way for these many years.”
Oftentimes, you can work out a solution, especially if you’ve notified them, if you’ve become aware of it early enough in the other mark’s life. The longer you wait, the worse it gets, because they’re now more and more invested, and they’re more entrenched in their branding.
So yeah, I think it’s important to consult a lawyer if that doesn’t work, and again, be quick about it, so that we can send that cease and desist notice, a letter basically demanding that they stop and explaining the consequences if they don’t, and sort of laying out the legal arguments. If that doesn’t work, then we have decisions to make about whether to proceed with litigation or sometimes if it’s another … if you’re on the other side and you’ve discovered someone’s applying for something similar to yours, you can file an opposition or a proceeding to cancel it if it’s recently registered. But that’s real legal wrangling. There’s some heavy lifting involved, so you want to have a lawyer helping.
Ian Paget: For copyright, in comparison, just to paint a picture, it’s very common for designers to share their work in a portfolio, or on social media platforms such as Instagram, Behance, and so on. A situation that comes up quite frequently is that work is often copied or stolen by someone who might claim it as their own work. What can be done in that situation if the logos haven’t been trademarked?
Gordon Firemark: Well, in this instance, we’re talking about a copyright infringement, not a trademark infringement, because that person isn’t holding it out as their brand for their business, they’re merely showing someone else’s work, and they’re claiming it as their own, which has trademark implications, but the good news is that I think that it’s copyright infringement, and you can do the normal copyright infringement remedies, which is A, you can do that cease and desist letter, tell them to stop it and demand that they do so, but also here in the U.S., we have the Digital Millennium Copyright Act, the DMCA. That’s that take down procedure that you’ve probably seen with YouTube videos, and music sites, and things like that.
It works for images as well, so if somebody has posted a portfolio of their work and your work is in it, you can have that image taken down just by notifying the operators inside the ISP or the host of the website, and filing that DMCA take down notice. There’s a special form you have to do, but it’s easy enough to look up online and find out. They’re supposed to take it down very quickly. If that doesn’t happen, then you can file a lawsuit, but most of the time it doesn’t go that far.
Ian Paget: That’s good to know. As a related topic, online I’ve seen stories of big brands basically stealing designers’ artwork and using it on things like clothing. I believe Zara was one example. What can graphic designers do in these instances?
Gordon Firemark: Well, I mean, I do think the legal option is the strongest option. You can reach out to a brand early on and say … But again, it’s best to do this before they’re deeply invested in whatever they’re doing so that they can stop what they’re doing, or you’re reaching out to them for some kind of a settlement or a license.
You can offer to license it to them for a fee, and there’s no reason that you need a lawyer to do that unless it devolves into some kind of a fight. Most of the time, I think people use lawyers because they’re trying to head that off and avoid the potential for that fight by handling it in a disciplined way.
There is a little bit of a risk when you threaten a … anybody, that they can turn around and sue you first for what we call declaratory judgment, and so being careful in how you frame things is important, and that’s why people use lawyers. But no, if you have a way of contacting the designer or the company, excuse me, the company that’s taken the design, it doesn’t hurt to do so informally and ask for what you think is fair.
Ian Paget: That’s really good advice. With logo design and trademarking, how different does a logo need to be to be seen as different? As an example, I know Adidas tend to go after any company that uses anything slightly resembling three stripes. In some cases I’ve seen, I don’t think they look remotely similar. I’m keen to know from you how different should a logo be to avoid infringing on a registered trademark?
Gordon Firemark: Well, so we have two different legal standards to consider. Under copyright, the standard is substantial similarity, and good luck figuring out exactly what substantial means, but you know. If a viewer is going to look at this thing and say, “Oh yeah, that’s just like the Adidas logo,” then that’s going to be enough to say substantially similar.
That’s pretty similar to what we encounter in the trademark space where we’re talking about confusing similarity, confusingly similar. If there’s a likelihood that a member of the public is going to be confused as to which company is behind this product or service because of the logo that’s applied to it, then that’s trademark infringement. So confusingly similar.
One of the ways that we deal with this in the courts is by getting survey evidence. If it seems like there’s a confusing similarity, one thing you might want to do is go out and ask a few dozen people, or 100 people, “Do you recognise where this comes from?” If it’s a red can of soda with a white stripe on it, people might have a pretty clear idea where it’s coming from.
Ian Paget: Okay, that’s really interesting. Just a statement like, “confusingly similar,” explains why Adidas would jump on a competitor who might use stripes in their logo in some way.
Gordon Firemark: But there’s more to it than just stripes, if it’s vertical stripes, or if each of them’s a different colour, now we’re talking about something different. So it’s not necessarily confusingly similar, and it’s certainly not infringing a copyright, because lines, even diagonal lines, are not original, entitled to copyright protection, but they might be entitled to the trademark.
Ian Paget: Okay, so I’m just thinking in some of those situations, as these companies have the financial backing, is it possible that they are going after anything remotely similar just so that they can kind of get rid of or annoy the competition? Does money influence what happens?
Gordon Firemark: Well, I think it gives someone or a company the power to be a bully, right? If you can afford a lawyer and they can’t, that letter from the lawyer is very frightening for the one who can’t afford representation, so we end up with, “Stop it, or else we’re going to keep these letters and nasty grams coming your way, and you’re going to be paying lots.”
Ian Paget: That’s pretty much the way I thought it would be, as there’s some examples I’ve seen online, and the logos just don’t look anything like each other. As a consumer, you can’t mistake them at all, so it’s clearly bullying.
Gordon Firemark: Yeah, and sometimes the brands do miscalculate, and they encounter someone who maybe does have resources or just stands up on principle and says, “I’m going to fight this anyway because it’s wrong.” Every once in a while, it works against the brand.
Ian Paget: Good, I’m glad to hear that. Now, earlier in the conversation we briefly spoke about how logos can use certain symbols, such as like the TM trademark symbol, or the registered R symbol. Could you talk through when each of these symbols should be used?
Gordon Firemark: So the R inside the circle is the symbol for registered trademark. Only a trademark that’s registered under the U.S. trademark law is allowed to affix that R to it. It applies for both goods, trademarks, and services trademarks, which are called service marks. When the work isn’t yet registered, whether it’s in the process or not, if an owner wants to claim that they have rights because they’ve been using it in commerce, and there is a common law kind of trademark as well, they can affix the TM or the SM depending on whether it’s goods or services, TM for trademark, SM for service mark.
Same thing, just a little superscript next to the brand, whether it’s a word mark or a logo mark, sort of puts the world on notice that, “Hey, we’re claiming a kind of ownership here.” I would say it’s worthwhile doing as soon as you have a brand that is reasonably distinctive. That’s really the threshold for protection, is the mark has to be distinctive. If you have fruit flavoured chewing gum, that’s not a trademark, but when you call it JuicyFruit, one word, yeah, it’s become a trademark.
Ian Paget: Okay, and in terms of using those symbols, are there any specific rules for how they should be used? Because I’ve never seen them used in a set position or a set size. Like the new Mastercard logo, for example, it includes the R symbol, but it’s so tiny it’s barely legible. It basically just looked like a dot, so I was just wondering, are there any rules on that?
Gordon Firemark: I’m not aware that there are any specifications to how that mark should be applied, and I don’t think it’s even a legal requirement that it be applied for a registered mark. I think it’s discretionary, and I think it’s a good idea, because it does put the world on notice.
I haven’t read the statute, so I can’t say for … I haven’t looked for the statute on that particular provision, but I imagine that there’s little to be said about that beyond, “This is what the mark looks like, what the symbol should look like.”
Ian Paget: Sure, it’s useful to know your thoughts. Another area I’d like to discuss with you is contracts. When I first started out, I just found an example, a line, and edited it accordingly just to something that I felt would work. Should a designer work with a lawyer, like someone like yourself, to create a contract or are these templates that are freely available online sufficient?
Gordon Firemark: You know, I think there comes a point in everybody’s business where they should go beyond the form they find online, or the template document, and have something that’s custom tailored to their own needs. The good news is, in the graphic design business, this is a maturing industry, and the standards and practices are fairly well established now, so it’s certainly not a giant legal expense to have a lawyer draw up a contract for your business, but when you’re just starting out, there’s some of this stuff you can do yourself.
A contract is really another word for agreement, or it’s a manifestation of an agreement, I guess you could say, and so what’s important is that you have a document of some sort that really serves as evidence of a meeting of the minds between the parties. In contract law, we talk about mutual assent, and that is that there was someone made an offer, and somebody accepted that offer, and that all of the necessary material and important terms have been laid out. So that’s the who, the what, the where, the how, the why, and the when. As long as those things are in a contract, it should do the job.
Ian Paget: Sure. As a starting point, what would you recommend designers use as a contract? Would they just take one of the templates that are available online?
Gordon Firemark: Yeah, template documents are great. They shouldn’t be viewed as all powerful and all encompassing. You do sometimes need to get in there and tinker with it, and make sure that it covers things the way you want it covered.
For example, what we talked about elsewhere in the show, the issue of who owns the intellectual property and when. If you’re creating a design for somebody on spec, you don’t want them to own it just because you created it, so you don’t want to have a contract that provides for everything you do being a work made for hire, unless you’re sort of a full-time employee of the client. You’d much rather retain ownership of copyright and transfer it upon receipt of final payment, or something along those lines.
So not every contract template you find out there is going to do that just right. You have to think it through and maybe get some help preparing it. But contract doesn’t need to be a scary, formal document either. We can infer that a contract exists based on a series of emails back and forth. “Hey, I’ll do this work for you for this price,” and so on.
What’s troublesome about that is that it may not be as comprehensive and complete as doing a formal document, and let’s face it, one of the values of having a contract is the formality of having a piece of paper that people have signed, or even if it’s done digitally nowadays, we know there’s a seriousness to the transaction because there’s a contract, and that’s valuable.
Ian Paget: That’s a really good point, and whilst we’re on the topic of contracts, is there anything special that a designer should do if they’re subcontracting work out to ensure that they’re legally covered from a copyright point of view?
Gordon Firemark: You know, there’s a couple of issues that come up when you’re dealing with either subcontractors or vendors that are helping you provide some of the components. It might even be that you use a piece of clip art or a bit of … I don’t know, material that comes from third parties. You need to make sure that at the end of the day, you own all of what you’re delivering to your client so that you’re not in breach of contract with your customer.
So it’s important when you use … say if the person isn’t your employee, you’re running a virtual agency and you’ve got a designer that you refer out certain kinds of work to, you want to make sure you have a contract with that person that specifies your ownership of the material upon … I guess on payment, or whatever, or how that will transfer and become a part of the work that you deliver to your customer.
That’s where it starts to get a little tricky, and you may want to think about having a custom tailored agreement, at least the first time. It’s a great way to leverage your business by having other people doing some of the work, and I think it’s important, so you want to make sure that the … Actually, the way to do it is to use a contract that provides the subcontractor will be doing their work as a work made for hire for you, which sort of looks like an employment relationship, and that means you own the copyright on it, so you can transfer it to whomever you need to.
Ian Paget: Well, that’s really useful to know. Well, Gordon, you’ve answered my questions so well, so we’ll wrap up the interview now. Before we end, how can people get in touch or learn more from you?
Gordon Firemark: My law practice website is at firemark.com. I’m located in Los Angeles, California. You can always look me up in the phone book if that’s your style. Email me at [email protected] You can find that podcast at entertainmentlawupdate.com, and on most social media GFiremark is the handle, so you’ll be able to find me there.
I also have a product available for online entrepreneurs, creators of content, course creators, coaches, all those kinds of folks. Anybody who basically runs an online business. I’ve developed a toolkit of contracts, and forms, and templates, and instruction on how to use them, called The Digital Entrepreneur’s Business and Legal Toolkit, and it’s available at dolegalyourself.com. If you’re interested in bootstrapping things, handling it yourself because you don’t want to spend thousands of dollars on lawyers, that’s a great option for you, dolegalyourself.com.
Ian Paget: That’s brilliant. I’ll make sure to link to that and your website in the show notes for this episode so that listeners can check it all out.
Gordon Firemark: Fantastic.
Ian Paget: So Gordon, thank you so much for your time. It’s been a real pleasure talking with you. You’ve answered these questions so well, and provided a lot of much needed clarity around these topics, so I’d imagine that listeners will get a lot out of this episode. Gordon, thank you so much.
Gordon Firemark: Well, thank you, Ian, for having me. It’s been a lot of fun, and as you might be able to tell, I love the sound of my own voice and talking about this stuff, so I’m here again if anybody has other questions. Happy to help out.
Thank you to the sponsors
I’m incredibly thankful to FreshBooks for sponsoring season 4 of the Logo Geek Podcast! FreshBooks is an online accounting tool that makes it really easy to create and send invoices, track time and manage your money. You can try it out for yourself with a free 30 day trial.