How to Trademark a Design
How to Trademark a Design is part of our How to Trademark series.
Federal trademark registration is governed by the Lanham Act. See 15 U.S.C. §§ 1051 et seq. The purpose of a trademark is to designate the source of goods or services. Many trademarks are words or catch phrases. Other trademarks combine words with stylized letters and/or an image to make a logo. Sometimes, a trademark has no words or letters, but contains only a design or an image like the Nike “Swoosh”.
Any type of design can be protected as a trademark. The following types of designs can be trademarked:
- Any other type of image
All of these can be registered as trademarks as long as the image functions as a trademark. That is, the image or design must be distinctive and must identify a unique commercial source of goods or services.
Design Trademark Application
Registering a federal trademark is a process of applying for registration with the US Patent & Trademark Office (“USPTO”). Generally speaking, registration is a five-step process:
- Create or locate a design or an image that meets the legal requirements of a trademark
- Conduct a search of existing design/image trademarks
- File an application for registration
- Monitor the application during the examination phase and respond to any Office Action or Opposition and
- Receive Approval and Registration
The registration process is complete when the registration issues. In recent years, trademark applications have exceeded 500,000 annually with less than 20% being approved on the first review.
Here is a step-by-step look at how to trademark various types of designs.
Step One: Create a Design Trademark
To be legally sound as trademark, a design must function as a trademark. That is, consumers must identify the image to designate a source of goods or services.
A design does not have to be particularly complex to be distinctive and therefore trademarkable. Take, for example, the Nike, Inc. swoosh design. It is a simple, single line figure of curves that resembles a stylized smile or the bottom crescent slice of a circle. Even though it is a non-complex image, it was distinctive enough to be trademarked in 1972.
Sometimes a design is too generic or common to be distinctive. Thus, the Trademark Office has rejected applications for trademarks that are common shapes like circles, oval, squares and the like. That being said, over time, a common non-distinctive design can acquire distinctiveness in the minds of consumers. When that happens, then the Trademark Office will approve registration.
Photographic images can be trademarked in the same manner as designs and drawings. To be trademarkable, a photographic image must be distinct and recognizable to the consuming public as designating the source of goods. That being said, photographic images can be somewhat difficult to register as trademarks. This is because photographs do not generally perform the trademark function of distinguishing and identifying a commercial source of goods. Mostly, photographs are used to identify the thing or person being shown in the image. For example, consider images of a sports celebrity like pro-golfer Tiger Woods. If Woods attempted to claim an image trademark for every photograph taken of him, that effort would be rejected. This is because there are thousands of images taken by thousands of photographers. In the minds of the consuming public, those images are identifying Woods, not identifying a unique source of commercial goods and services. Instead, each image could be protected by copyright.
However, a single, specific, distinct and often-used photographic image CAN function as a trademark. By constant use, that specific image can acquire distinctiveness in the minds of consumers if it is consistently used in commerce with respect to certain goods or services. Essentially, that one photographic image separates itself out from the thousands of other images of the celebrity. This is the result of a case concerning photographs of singer Elvis Presley. See Estate of Presley v. Russen, 513 F. Supp. 1339 (U.S. Dist. New Jersey 1981). In that case, the court rejected the broad claim that every photograph and likeness of Elvis functioned as a trademark. However, there was a specific photograph of Elvis in a certain pose wearing a certain costume that was used extensively on album covers and in advertisements while Elvis was alive. The court held that that specific image functioned as a trademark for Elvis-related music, movies, and entertainment materials.
Moving images can also be registered as trademarks. These trademarks are often called “motion trademarks.” Motion trademarks are defined as a repetitive moving image of short duration. Motion trademarks must satisfy the same Lanham Act requirements as other trademarks and are generally no more difficult to register than static non-moving images. The key is to properly prepare the application that includes
- A detailed description of the moving image
- Freeze-frame or screen-shot specimens showing the whole “arc” of the movement and
- Video of the moving image
Many motion trademarks have been registered and are common in the television and motion picture industry. Motion trademarks have also been issued in other industries. For example, automobile-maker Lamborghini obtained a motion trademark registration showing the unique and well-known movement of Lamborghini doors gradually opening like wings and moving to their upright position.
Step Two: Conduct a Trademark Image Search
After creating a trademarkable design, the next step in the registration process is to conduct a trademark search. An image cannot be registered pursuant to the Lanham Act as a trademark if it is the same as or is confusingly similar to an image or design that has already been registered. The USPTO maintains a searchable online database of active registrations — and pending applications — called the Trademark Electronic Search System (“TESS”).
With respect to images, a TESS search is a bit more complicated than a search of word trademarks. One must accurately describe the design/image. However, the USPTO has created 29 codes and an indexing system to help narrow the search. For example, included in design code one are “celestial bodies,” code two is for “human beings,” code three is for “animals” and so on. With careful use of the coding and indexing systems, a successful image search can be conducted.
A TESS trademark search will identify potential conflicts between a proposed trademark and a registered trademark. If there is a conflict, then a new trademark can be designed. Doing a trademark search for designs is not nearly as important as trademark searches for words and they also cost more so oftentimes our client chose to skip this step for design only trademarks.
Step Three: Prepare and File the Design Application
The next step in the registration process is to prepare and file the application. This includes making choices about the class of goods and services with which the trademark will be associated. Trademarks are registered with respect to classes of goods and services. For example, the Nike swoosh design discussed above is registered with respect to apparel like clothing, footwear, headgear in Class 25. A trademark application can only be made for one trademark at a time. However, an application can select more than one class of goods or services.
An application for registration must include the following:
- A depiction/drawing of the proposed trademark – this is usually a black and white version of the design. As noted, if the proposed trademark is a moving image, then several freeze frame images should be provided along with a video; if color is claimed to be part of the design or image, then a full color depiction must be provided
- The class of goods and services with which the trademark is to be associated
- Specimens of use showing the trademark in use in commerce or documentation supporting intent-to-use
Step Four: Monitor the Design Application and Respond Quickly to any Office Action
The fourth step in the registration process is to respond quickly to questions and correspondence from the Trademark Office during the examination phase. About four months after an application is filed, an examining attorney from the Trademark Office will begin work on the application. If the examining attorney has questions or concerns about the application, correspondence will be sent. These are called Office Actions. It is important to respond quickly, credibly and timely to any Office Actions that are received. Failure to respond or failure to adequately address issues raised by the examining attorney will cause the application to be denied.
Step Five: Receive Approval and Registration
After the examination phase is completed and if the examining attorney has resolved all issues with respect to the legal sufficiency of the application, the proposed trademark is published in the USPTO’s Official Gazette for 30 days. During this phase, third parties and owners of existing trademarks can oppose the registration. Such challenges are called Trademark Oppositions and they are conducted before the Trademark Trial and Appeal Board. It is important to respond timely to any Opposition filed since failure to respond will lead to an adverse decision and to a refusal of the application. Oppositions can be resolved through several methods including:
- Negotiated modification to the proposed trademark
- Partial withdrawal of the application (for example, withdrawal as to one or more of the selected classes of goods or services)
- Agreement — this usually involves a use agreement of some sort between the applicant and the challenger
- Successful defense of the proposed trademark at an administrative hearing before the TTAB
If resolved through these methods, generally, the Trademark Office will approve the application. On the other hand, if the Opposition cannot be resolved via negotiation or agreement and if the challenger wins the administrative hearing, the application for registration will be denied. Note that appeals can be taken for any adverse decision made by the Trademark Office or from a decision made by the Trial and Appeal Board.
If there are no further issues with the examining attorney or an opposition, the registration will issue.
For assistance in registering your image or design trademark, or if you have design trademark related questions, please contact us today for a consultation.