Yes, you can trademark an image with the United States Patent and Trademark Office (USPTO) if it’s used in the branding of your product (such as a logo). Otherwise, you probably want a copyright on the image. Trademarking an image provides trademark protection, ensuring exclusive rights to the image for use in commerce.
Trademarking an image is a tricky subject because we have often found that what folks really are after is a copyright. As we covered in our trademarks vs. copyrights article, different items get different types of legal protection.
Trademark or Copyright?
| Item | Trademark or Copyright? |
|---|---|
| Business Name | Trademark |
| Business Slogan | Trademark |
| Business Logo | Can be both |
| Books | Copyright |
| Manuscripts | Copyright |
| Screenplays | Copyright |
| Movies | Copyright |
| Paintings | Copyright |
| Photographs | Copyright |
| Poems | Copyright |
| Song Lyrics | Copyright |
| Music | Copyright |
Copyrights for Images
Once you create an image or photograph, you “own” the copyright, as long as it is both original and fixed to a medium (so, it can’t just be an idea for an image). You can register a photo as a trademark with the USPTO if it is used to identify and distinguish the source of goods or services.
However, you need to register the image with the U.S. Copyright Office if you want copyright protection which will help you enforce your copyright against someone else who is using your image without permission.
Copyright Registration
You can use the Copyright.gov online portal to go through the process of registering with the U.S. Copyright Office. Registering your copyright ensures you, as the copyright owner, have legal standing to enforce your exclusive rights.
Trademarks for Images
When you utilize an image in active branding, such as Nike’s famous “swoosh” logo, it is imperative that you trademark that image. Your first step in trademarking an image is to contact an attorney for legal advice and attain trademark clearance. Put simply, trademark clearance is the permission you obtain to register a trademark after completing a thorough trademark search.
When executed, this search will find not only exact matches of the image you wish to trademark but images bearing too close a resemblance. If such an image is found, your image will not be eligible for a trademark as it could potentially lead to confusion among consumers. If your image receives clearance, it would behoove you to work with an attorney, who will communicate with the USPTO during the trademarking process.
The Steps to Getting an Image Trademark
Step 1: Perform A Comprehensive Search
We will conduct a thorough trademark search to ensure your desired mark doesn’t closely resemble existing registered trademarks. Seeking an attorney’s help can aid in identifying both exact matches and “confusingly similar” marks, as they have access to various databases and can discern subtle distinctions. This search will include all elements of the image, such as specific colors and drawings used.
Step 2: File the Trademark Application
After due diligence, we file a trademark application through the Trademark Electronic Application System (TEAS) or its alternative, TEAS Plus. The choice between these two can impact costs and requirements; we’ll provide guidance on this decision and help navigate the complexities. Filing fees vary depending on the chosen system and number of classes for which you seek trademark protection.
Step 3: Monitor Your Application
Once the application is submitted, expect a waiting period of 4 to 6 months for feedback from the USPTO. While the initial response might be an approval, there’s a possibility of receiving an Office Action or denial, but amendments can typically be made and refiled. Monitoring your application is crucial to address any issues promptly and ensure continuous communication with relevant parties.
Step 4: Finalize Your Registration
Upon application approval, the trademark will be published in the Trademark Official Gazette for 30 days, allowing potential opposition from other companies. If opposed, the case might proceed to the Trademark Trial and Appeal Board (TTAB). If unopposed, a certificate of registration will be issued, but ongoing maintenance is essential to preserve trademark rights. Business owners must keep track of renewal deadlines and maintain the image in active use to avoid cancellation.
Service Marks and Business Logos
While trademarks protect images used in connection with goods, service marks protect images used in connection with services. Ensuring the correct type of mark is applied for is essential for comprehensive intellectual property protection.
Protecting Your Brand Online
In the digital age, internet presence is crucial for any business. Registering your image as a trademark helps protect your brand online, preventing others from using your images or logos without permission. Online trademark registration ensures your brand’s protection across various digital platforms. (Read more on trademarks and their usage on social media.)
Legal Advice and Assistance
Navigating trademark law can be complex, and obtaining professional advice is highly recommended. Our experienced lead attorney can guide you through the entire process, from conducting searches to filing applications and responding to Office Actions. This ensures that your image receives the legal protection it deserves, allowing you to focus on building your brand.
