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(Message started by: RASUN on Nov 27th, 2007, 2:47pm)

Title: TURNING A REGISTERED COPYRIGHT INTO A TRADEMARK
Post by RASUN on Nov 27th, 2007, 2:47pm
Is it possible to have a logo that is already registerd as a copyright registed as a trademark later on if I am the only author or will their be legal problems since the logo is already registered as a copyright? I just thinking of copyrighting the image first until I get the money to do the trademark. ???  

Title: Re: TURNING A REGISTERED COPYRIGHT INTO A TRADEMAR
Post by CriterionD on Nov 27th, 2007, 4:24pm
Copyright law and trademark law do not protect the same things. The only concern you might have is whether the logo, even while possibly functioning as a trademark, would infringe on someone else's copyright. Since you are the only author and I presume you have not copied the logo from someone else's work, that should not a factor here.

Note that copyright and trademark protection are automatic in their own rights - registration is not required, it just has its benefits. You can forego registering for a copyright and your logo will still be protected by copyright law. Also, if you are using the logo in commerce so that it functions as a trademark (trademarks describe goods and services for the purpose of distinctively identifying them and their source), you will have trademark rights even without a registered trademark. Registering the logo as a trademark would simply give the potential to more expand the scope of your trademark protection among other smaller things.

And a last note, if your logo is original there should be no issue in terms of copyright infringement, and you may very likely be clear of trademark infringement if using the logo as a trademark, but in itself that doesn't guarantee that you are clear in terms of trademark infringement. For example, if a competitor was already using a similar logo in commerce as a trademark - you could infringe on that competitor's trademark rights even without infringing on their coyright rights.

Title: Re: TURNING A REGISTERED COPYRIGHT INTO A TRADEMAR
Post by RASUN on Nov 27th, 2007, 4:56pm
thanks for responding. I want to use the image but how do I prove that I'm the original author of the work if someone decides to steal it off the net or by other means. I heard of the poor mans way but was told that way is no good. I'm trying to protect the work before it is registered. Don't know if this is posible.

Title: Re: TURNING A REGISTERED COPYRIGHT INTO A TRADEMAR
Post by DJoshEsq on Nov 27th, 2007, 8:02pm
File it in the U.S. Copyright Office.  If you can't afford that, then it must not be worth protecting whatsoever.

Trademark registration has many more benefits than described above.  It serves as federal constructive notice.  Remember that trademark registration requires actual use in commerce in association with goods or services.  You can, however, file the application as an intent to use trademark, if you haven't used it in commerce yet.

I seem to always give the same advice here but if it is really worth protecting -see a patent/trademark attorney.  

Title: Re: TURNING A REGISTERED COPYRIGHT INTO A TRADEMAR
Post by DJoshEsq on Nov 27th, 2007, 8:03pm
"Registering the logo as a trademark would simply give the potential to more expand the scope of your trademark protection among other smaller things."

THIS IS INCORRECT AND IS HORRIBLE ADVICE.

Title: Re: TURNING A REGISTERED COPYRIGHT INTO A TRADEMAR
Post by Kaitlin on Nov 27th, 2007, 11:16pm

on 11/27/07 at 14:47:28, RASUN wrote:
Is it possible to have a logo that is already registerd as a copyright registed as a trademark later on if I am the only author or will their be legal problems since the logo is already registered as a copyright? I just thinking of copyrighting the image first until I get the money to do the trademark. ???  

Yes.  You can give notice of your exclusive right to make copies as the author of the logo (through copyright notice, with or without registration) and you can give notice of your claimed rights in the logo as an indentifier for your goods or services (trademark rights).

As the others have explained, both these rights exist without registration.  Your ability to enforce those rights, however, is substantially increased by registration.


on 11/27/07 at 16:56:20, RASUN wrote:
I want to use the image but how do I prove that I'm the original author of the work if someone decides to steal it off the net or by other means. I heard of the poor mans way but was told that way is no good. I'm trying to protect the work before it is registered. Don't know if this is posible.

As an interim measure:
1) put a copyright notice ("copyright" or the symbol "(c)", your name, the date of publication) by the logo any time you display it, and "all rights reserved" if you're on the net or otherwise international;
2) put a "TM" next to the logo whenever you use the logo as a trademark, that is, to identify your goods or services as coming from you; and

3) very importantly, KEEP a good SAMPLE of your logo as used as a trademark and KEEP RECORDS of your FIRST USE of the logo as a trademark in commerce and of course records of your first display of the logo to the public, whether or not as a trademark.  If the logo is displayed on a web page, get someone other than yourself whom you are likely going to be able to contact in the future to print out a copy and date and sign it.  That person could then be a witness at least to the fact that you had created the logo as of that date.

These measures will provide some protection.

*Note that your copyright in the logo does not need to be registered to put a copyright notice there, whether using the (c) or spelling it out in words.
Also, note that you can use the "TM" trademark notice without registering your trademark.
But, note that you may NOT use the (R) symbol with your trademark until it has been registered with the USPTO.

Finally, if placement of the copyright notice is awkward next to the logo, it may be referenced with an asterix.  

Title: Re: TURNING A REGISTERED COPYRIGHT INTO A TRADEMAR
Post by CriterionD on Dec 2nd, 2007, 3:05pm

on 11/27/07 at 20:03:13, DJoshEsq wrote:
"Registering the logo as a trademark would simply give the potential to more expand the scope of your trademark protection among other smaller things."

THIS IS INCORRECT AND IS HORRIBLE ADVICE.


Care to expand? Expanding the scope of trademark protection is generally, most certainly desirable. Does trademark registration fail to do so? A trademark registration does serve as constructive notice. Thats part of how it can expand the scope of one's trademark protection.



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