In this part of the Magenta Lessons, we will take a look at trademarks in the business world, and why it is important for graphic designers to know about this subject. You will also find a 1-page Trademark & Copyright Factsheet for Designers (free download) at the bottom of the page.

In the last two parts of this series, we talked about the role of color in design and the importance of brands. So after the ‘little’ break I allowed myself to take - a lot of work, and even more work fell upon us last month, plus the upcoming complete redesign of this blog (stay tuned for that!) - thanks for sticking with me, and let’s jump right to it!

Why is it important for designers to know about trademarks?

For the simple reason of offering your clients as much service and advice as possible. Think added value. Now quite a few of the readers of this blog are Art Directors in an advertising agency and not freelancing; and those of you might ask how this knowledge will help you. After all, you’ve got your CD and then the Account Managers who advise your clients in this direction. Also, you can assume that your large clients have their own capable people in the field of trademarks and intellectual property rights, or employ a law firm for just that.

My question for you would be this: You’re an Art Director right now, but don’t you want to climb up the ladder one day? Maybe you’d like to be considered for an open position as a Creative Director. And this doesn’t necessarily has to be within your own company. One nice day, you might even decide to go into freelance design and quit your day job. Or you will start a venture of your own, be it a graphic design firm, an advertising agency, a website, or something completely different! The point is to keep your options open and to look beyond the greater picture - by learning everything relevant to the field you are in. If you want to be successful at what you do, you need to strive for knowledge that expands and goes beyond what you currently do. Most of the time, the new stuff will be only peripheally tangent to your actual work, but it will increase your competency, thus your potential, in ways you might never have considered before. So do read on.

Copyright, Patents, Designs, Trademarks: What’s the Difference?

Granted, I’m not a legal attorney specialized in trademark law, and neither are you (or are you? Do tell). Thus, I wrote the following from the perspective of a designer; it will cover what I find helpful to know in the design business. My apologies if it appears lengthy at times - I tried to keep it short but trademarks are a wide field. If you can add someting that I may have forgotten to mention, please use the comments below to share!

1. Copyright

Copyright is the oldest legal form of intellectual property and instituted internationally. Copyright (©) is internationally standardized under the Berne Convention for the Protection of Literary and Artistic Works (1887), the Universal Copyright Conventions (UCC) of Geneva (1955) and Paris (1974), TRIPS (the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights of Marrakech, 1995), and the WIPO Copyright Treaty (WCT, Geneva 2002).

WIPO is the World Intellectual Property Organization and a good resource in any way. In most countries that have signed the above treaties (not taking part are e.g. Afghanistan, Eritrea, Iran, Iraq, Seychelles and more), you do not have to use the © on a work to mark its copyright - it is recognized for any original and completed work. But you can use it freely if you are the original creator - e.g. to emphasize the state of your artwork.

This is good to know for graphic designers: If you create an original artwork, you have exclusive rights to its use. But in case of conflict, you will have to prove that you were first and the copy is in fact a copy. This can be hard to prove sometimes.

How to protect yourself (your design) from copyright infringement

Here’s a tip that can help, also when you work with dubious clients of which you think they might try to steal your work. Now this isn’t approved or supposed to be a substitute for registering your design with your federal Copyright Office (links are in the Factsheet download below), but in a case of conflict, it’s better than empty hands. It’s also referred to as the “poor man’s copyright” –

Here’s how: Before you send your work out to your client, put all the source files (every version and draft) of the completed work on a DVD or CD, make some print-outs and put it all in a sealed envelope. Go to the post office and mail it to yourself by registered mail. Only after you got it back (and hopefully didn’t open it joyfully), send your design to the client. That way, if there are any problems with clients taking your work and using it without your permission, or even worse, without paying you - you are in the position to present the original in the unopened envelope as evidence, with the date on it. That’s the low-budget version; you could also give it to your lawyer for safekeeping.

How long does the copyright last?

From the moment of completion of the work until the death of the creator plus 70 years. (In some countries, this differs - the range is from 50 to 100 years after your death) This means that you can’t copy and sell, let’s say, Andy Warhol paintings and prints until February 22, 2057. As of that date, his work becomes public domain - this is what happens to all of your artwork 70 years after your death, folks. That is, if it’s good enough to survive… (If you’d like to know, the Artistic Rights Society (ARS) is handling the copyright for Andy Warhol art).

In order to qualify for copyright, a work must not have any ‘practical use’. I know, it sounds terrible.

Example: The Fashion Industry

You have a fashion label and sell self-manufactured t-shirts that have uber cool, colorful patches all over them (remember this is an example), and uber cool graphic designs printed on them. While the design of the print on the shirt falls under copyright laws, the design of the shirt doesn’t necessarily; that would be a design patent/industrial design right, as well as the sewing pattern of the t-shirt. Taken a level deeper, the company you bought the material from may have a utility patent on the special way they weave the cloth - thus you won’t find it anywhere else; and if your design uses mainly PMS 183, that is the intellectual property of Pantone Inc. (You may take a guess at what color PMS 183 is.)

More information on copyright can be found on the U.S. Patent and Trademark Office website.

2. Patents

A patent is a set of exclusive rights granted for a a fixed amount of time. Patents are mainly used for inventions. When you file for a patent of an invention, you must disclose the invention to its last detail. As soon as your application for a patent has been granted, you receive the right to exclude others from manufacturing, using, and selling the invention - for a term of 20 years.

There are different types of patents, such as utility patents, software patents, biological/chemical patents, business method patents, and design patents. A design patent is basically the U.S. form of industrial design right and protects the visual design of objects that are not purely ulitarian. We will get to that below.

There also exist utility models, which are not being used in the U.S. - more so in certain parts of Europe, Asia and South America. Utility models only have a term of 6 to 10 years and can be considered the “little brother” of a patent. They are cheaper, quicker and easier to get, and are used for incremential/small inventions, or when it can be expected that the life span of a product will not exceed that period of time.

Example: Tamagotchi

Do you remember that stupid little electronic pocket pet that was a must-have 12 years ago? The producers of the Tamagotchi invented the toy in 1996 and as of 2005, they have sold over 10 million of the little bastards. They were terrible, addictive little monsters that kept you from doing anything else.

I admit I had one too when they came out, until I broke it. In my defense (for owning it, not for breaking it), I was young and unexperienced. Anyway, Bandai Co., Ltd of Japan, the producers of the Tamagotchi, had decided to only apply for a utility model instead of a full-blown patent in the countries that offered them. Sure enough, 10 years later the original product had overstayed its welcome and magically disappeared from the store’s shelves. Instead, a hord of copycats started to produce cheap copies and sell them for a buck or two on the streets. In this case, Bandai employed the right strategy - it knew in advance that the Tamagotchi wouldn’t hold itself more than 10 years.

3. Industrial Design

Industrial design laws apply when the design of an object is not purely ulitarian, but has a practical value. This distinguishes industrial design rights from the copyright on artistic artwork; for example, product packaging vs. the photograph on the packaging by itself.

Industrial design can be registered as such with the WIPO. The U.S. calls industrial design rights design patents. They cover ornamental designs of goods, such as jewelry, cars or couces.

Example: Coca-Cola

A nice example for a design patent is Coca-Cola’s original contour bottle, designed in 1915 by Earl R. Dean.

4. Trademarks

Trademarks are a form of intellectual property and are used to protect a company’s brand and reputation. A trademark can be a name, word, phrase, logo, symbol, design, or image - or a combination of these. When registering a trademark, you have to specify the class of your goods or services according to the 45 Trademark Classes by the Nice Classification, which is governed by the WIPO.

• A Registered Trademark (®) has been registered with a country’s federal Patent and Trademark Office (or with the WIPO, acting as an agent for more than one country at a time) and is represented by the R in a circle. You may not use this symbol with a brand name if your trademark isn’t registered. And if you filed a registration with your country’s federal Trademark Office, until the trademark is registered (which can take up to 12 months), you must use…
• An unregistered Trademark (™), which is represented through the TM symbol. In the States, you can even use this symbol under common law to protect your unregistered brand (that means you just slap it on the brand, no need to register it), but you are somewhat limited when it comes to trademark infringement. An unregistered trademark may only be protectable in the geographical area of its influence. Plus, the TM is also only used in the U.S. and has little legal grounds in other countries, such as the European Union, where it’s more of a “who files first” basis, rather than a “who uses first” one - except for Germany, where your market share is taken into consideration (if it is more than a certain percentage, which varies for every class of goods, you can hold such an unregistered trademark under common law).
• A Service Mark, which is represented throught the SM symbol. Service marks are also unique to the U.S. and can be used for a service that doesn’t include hard goods. Registered service marks may also be represented with the ® once they are successfully registered (not just filed).
• A non-conventional Trademark is a trademark that doesn’t fall into one of the conventional categories (name, word, logo, design, etc.). It includes both visible signs (colors, shapes, moving images, holograms, positions) and non-visible signs, such as sounds, scents, tastes, and textures.

So, what about color as a trademark?

In 1994, the World Trade Organizaiton (WTO) administered TRIPS. As mentioned above, that’s the Agreement on Trade Related Aspects of Intellectual Property Rights. What it does is simply provide requirements that a participating nation’s laws must meet regarding intellectual property. In that event, the definition of trademarks has been broadened to include:

… any sign […] capable of distinguishing the goods or services of one untertaking from those of other undertakings …

In plain english: per definition, a color can be a trademark. Now this, of course, isn’t the same everywhere you go. Different countries interpret this part differently - to some, you have to prove that the representation of the color is clear and self-contained. In the U.S., color wasn’t considered valid to be ‘trademarked’ until 1995. And in the European Union, where color trademarks have already been granted before TRIPS, the protected color must be used in specific, limited contexts such as packaging or marketing.

Examples for Color Trademarks

Examples, other than magenta for Deutsche Telekom AG, would be:

• the turquoise that Heinz uses for its Baked Beans cans,
• the energy company BP having exclusive rights to use green on signs for gas stations (in the EU; they tried to protect it for Australia as well but didn’t succeed),
• the color trademark ‘UPS Brown’ by the largest package delivery company UPS,
• the color trademark ‘Tiffany Blue’ by the jewelry and silverware company Tiffany & Co.

Conclusion

Now, to honor our Magenta Lessons motto, guess under what license T-Mobile registered its color magenta. That’s right, it is a registered color trademark. In the year 2000, Deutsche Telekom AG registered the color magenta under serial no. 39552629 for the classes 9, 16, 37, 38, and 42 (in Germany). You can check the goods these classes cover using the link to the Nice Classification page above.

So basically, if your company is doing business in one of these classes of goods and services, you may not use the color magenta for your brand or products, not even if you’re EngadgetMobile.com. Which brings us to the question: back in April, when T-Mobile sent their letter to the popular tech blog, who published it in a blog post and made a mock out of it — was that just a collaborative publicity gag? And if so, why on earth would they do such a thing?

That’s what we will discuss in the last part of the Magenta Lessons, Public Relations, following in just a couple of days. I promise it won’t take as long as the last time this time :)

Free Download: Nubloo’s Trademark & Copyright Factsheet for Designers

In order to make up with you, I set up this 1-page guide with the most important facts discussed in the article, with a bunch of links to resources, and nicely formatted it for easy digesting. Tell me if it helped and kindly leave a comment below if you like it :)

Click to open the Trademarks & Copyright Factsheet for Designers (635 KB) in a new window, or right-click and save-as on your computer: Download the free PDF here. Enjoy!