Tuesday, May 3, 2011

Art and Text Combinations: Copyright or Trademark?

Dear Rich: I have come up with several different art works and slogans that go along with the art work. This art work and slogans are directed towards a certain group of people that enjoy participating in a certain type of sport. After doing some reading, it appears to me that both the art work and slogan would be protected under a trademark. I know art work can be protected under a copyright but I don’t think that includes a slogan that goes along with the art work. So my questions are as follows: (1) Does a trademark protect both art work and slogans? (2) Can I submit 2 or 3 different art works and slogans under one trademark if they are all directed towards the same clientele and sport? (3) And if my applications are denied, do I get my money back? We're in a backwards kind of mood so we'll answer your questions in reverse order.
(3) No, you don't get your money back. The USPTO will not refund your $300+ application fee if your trademark application is rejected. That's why the Dear Rich Staff urges applicants to make sure that their trademarks avoid the three most common reasons for rejection: the mark is descriptive and lacks secondary meaning; the mark is the generic term for the goods and services; or the mark (or something substantially similar) is already being used in commerce by a 'senior user' for those goods and services. (We explain all three standards here.)
(2) No, you can't include more than one mark per application. The application and fee are "per mark," so you can't compile a bunch of marks and register them in one application.
(1) Yes, trademark will protect artwork combined with a slogan (and so will copyright). Let's start by talking about copyright. The art world, as well as the publishing, and advertising industries have long relied on copyright protection for art and text combinations. However, because copyright does not protect short phrases, the copyright for an art+text work usually doesn't extend to the text, by itself. So if someone were to copy just the slogan from the works, you couldn't stop that person (with some rare exceptions). Registering the combination as a trademark will only work if you plan to use the art+text as a trademark -- that is, as a signifier for specific goods and services. This can pose some tricky issues. For example, if you use your art+text combo on a t-shirt, the USPTO might reject your application because the mark is being used in a decorative manner. That is, people are buying and appreciating the t-shirt for the art+text. Even if you can claim it as a trademark for apparel, for example, you would still need to register it in each class of goods for which you seek protection ... an expensive proposition. May we recommend that you rely on copyright until one of your works enjoys exceptional success, then you can consider trademark registration.

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