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  • MLJ


Updated: May 28

By Manotti L. Jenkins

You and four of your creative, talented, and exquisitely dressed fraternity brothers have

been talking about establishing a fashion design business since your college days. Life happens and you go your separate ways for a while, but meet up again at the organization’s Centennial Celebration. The five of you emerge from that prominent event poised to pursue your dream company and to utilize a platform that had not substantially matured during your college days – the Internet.

The five of you establish a limited liability company (LLC) and launch a website. Each of you begins developing various clothing designs that have a certain signature style, including written pattern instructions. You coin a name and create a logo to brand your LLC, as well as names and logos to brand your various clothing products. And you create an electronic newsletter to help with on-line promotion and marketing. In other words, your LLC and its individual members have intellectual property (IP) and you need to protect it.

What can/should you trademark and what can/should you copyright? Are any of the items mentioned not protectable by either trademark or copyright? Let’s first define these two forms of IP, consider the rights each protects, and then point out their differences. This discussion is necessary because many people confuse the two concepts and improperly use them interchangeably, even some non-IP lawyers.

A trademark can be a single word, a short phrase, a design, a symbol, a logo, a sound, a shape, a color, or even a fragrance that identifies or distinguishes the source of the goods or services of one company from the goods or services of another company. A trademark is a vital tool to protect a company’s brand image. It conveys to the purchasing public that a product or service bearing the trademark is produced by the same source, and the trademark can be relied upon by consumers as a quick indicator of the product’s or service’s quality. If it is sufficiently strong, your trademark will cause a psychological response in consumers when they see, hear, or even smell your mark. If a company selling products or services in the same or a related market as another company uses the latter’s trademark (or some colorable imitation of the trademark) in a manner that confuses consumers, there is infringement, which the trademark owner can stop. A trademark primarily develops its strength and validity through use and distinctiveness, and if properly maintained, can last forever.

Items such as songs, poems, books, articles, and other writings (printed or digital), creative phrases, drawings, paintings, printed images, digital photos, websites, and similar things are copyrightable subject matter, as long as they are original and fixed in a tangible medium of expression. “Original” simply means that the author created the subject matter herself and did not copy it from someone else. “Fixed in a tangible medium of expression” is just IP lawyer-speak for saying that the original work is able to be perceived, reproduced, or otherwise communicated, in contrast to being an abstract idea. A copyright arises automatically at the time of creation, and, generally speaking, lasts for the life of the creator plus seventy (70) years.

A short-hand way to understand the difference between a trademark and a copyright is that trademarks protect commercial branding, predominately for the protection of consumers; copyrights protect creativity, mainly for the protection of the creator.

Small businesses need to recognize the differences between trademarks and copyrights for a number of reasons, including so they can know how to appropriately use these different forms of IP for themselves as well as vis-à-vis others. For instance, if you allow competitors and others to sell their wares using your trademark for some period of time without demanding that they stop, your trademark can become invalid as no longer capable of distinguishing a single source; or, at the least, its strength can become substantially diluted. With copyrights, on the other hand, someone may copy your protected, original work of authorship, and although they would be wrong and liable to you for damages, you don’t run any risk of losing any legal rights (although you might lose money from the infringement). Another reason you as a small business owner should know the difference between a trademark and a copyright is that one form of protection will permit you to exclude some types of commercial activities by your competitor, while the other form of protection will not allow such exclusion because the activities would be shielded by certain defenses.

Now, back to our snazzy and industrious fraternity brothers with the on-line fashion design business. First, immediately on creation, they should have their copyright notice placed on their website to give notice to the public of their intention to exclude others from copying their website. Registration of the website with the Copyright Office is not mandatory because there is a low risk that anybody will copy the website and require that you file a lawsuit against them, for which registration is a prerequisite. Then, after having a trademark lawyer conduct a thorough search to make sure there are no impediments, the brothers will want to prominently publish their LLC name and logo on their website, which permits them to establish use of those branding insignia as trademarks before filing for registrations. Although use is not absolutely necessary before filing for a trademark registration, it can accelerate the process of obtaining the registration. As they publish their newsletters on the website to help in the promotion of their business, the brothers should strongly consider filing for copyright registrations on their newsletters, because copying by viewers of different articles and other contents of the newsletters is highly possible.

I purposely saved for the latter part of this discussion the fraternity brothers’ two other activities mentioned above, because they deserve greater explanation. First, the clothing designs. Clothing designs may be registrable and protectable as copyrights and trademarks and they should be. The law recognizes the creativity involved in certain non-functional facets of the fashion designs as copyrightable subject matter. If agreed upon by the brothers, each individual designer will need to assign the copyrights protecting his respective designs to the LLC, because the copyrights originally will be the property of the individual creator/designer. Likewise, if the brothers are successful in creating a certain signature look in their clothing designs that is both recognizable and articulable, and that the buying public can use as a visual “symbol” to know that the clothing designs are produced by these brothers, then the non-functional aspects of those clothing designs may be trademark protectable. Copyright protection of the clothing designs will prevent others from stealing the creative aspects of the brothers’ designs; trademark protection will prevent others from deceiving consumers as to the source of the products, while simultaneously protecting the good will the brothers have developed through their signature design styles.

Finally, the written pattern instructions associated with the clothing designs will not be protectable by either copyright or trademarks. This is because the pattern instructions are a description of a procedure, process or method of operation for making something, which the law considers to be functional in nature. As such, the pattern instructions may be protected by a utility patent, which is beyond the scope of this article.

As with all of the Law Offices’ blog posts, this discussion is not intended as legal advice, but anyone interested in a further discussion of these issues to help strengthen (or help to establish) their business should call us for legal advice – (312) 208-9537

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