In the last issue, we began a discussion of intellectual property issues, and the need for event planners to protect their copyrights and trademarks. The discussion continues here.
In the U.S., trademark rights arise when someone begins using a mark in commerce in connection with particular goods or services. Simply by being the first to use a particular trademark or service mark, one becomes the owner of the mark, entitled to certain common law rights, including the right to stop others from using a confusingly similar mark.
Registering a trademark may provide additional benefits. For example, registering a mark entitles the owner to seek statutory damages, including the infringer's profits and the costs of the suit, in an infringement action. Registration also (1) creates a presumption of ownership and exclusive right to use the mark; (2) creates a presumption of nationwide use; and (3) may lead to a determination that the registration is incontestable as evidence of the trademark applicant's exclusive right to use the mark.
Registering a trademark takes more time and money than registering copyright in a work, and typically requires experienced legal counsel. The filing fee is $245 per application and, even in the best circumstances, certificates of registration usually are not issued for nine months to a year.
As with copyright, placing a notice near the mark and registering the mark with the U.S. Patent and Trademark Office are not required to obtain protection. Notice of unregistered and registered marks is still important, however. Using the symbols "TM" or "SM" beside an unregistered mark serves as a warning that the organization is serious about claiming trademark rights. More important, after the mark is registered, the organization should use the "(r)" symbol--or "Registered in the U.S. Patent & Trademark Office." If not used, the owner may lose the ability to recover profits and damages.
Implications and Recommendations Protecting intellectual property means clarifying who owns what. When an organization's employee creates a work during the course of employment--for example, a conference brochure--the copyright automatically belongs to the employer. When an outside contractor creates something on behalf of an organization--say, a unique design for a new logo--the copyright belongs to the contractor. In that case, the organization needs a written agreement to transfer the copyright. Purchasing the design does not automatically transfer the copyright.
Protecting intellectual property also means deciding to pursue registration with the Copyright Office or Patent and Trademark Office. Copyright registration is easy, inexpensive, and usually worth pursuing (see TM, July/August 1998). With trademarks and service marks, the decision is more complicated. If, say, a conference logo is developed, the organization must decide whether it is worth the time and expense--and whether the registration will be effective in time to do any good. For a one-time-only conference, it is probably not worth pursuing registration. Instead, use the "TM" or "SM" symbol next to your mark. If an organization plans to use the new logo for several upcoming events, then it is probably worth applying to register the mark.