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Registering a Photography Business Trademark: What Can it Actually Cover?

Trademarks are a great way to protect your brand by name, logo and slogan.  

Registering a trademark can provide intellectual property protection for these brand items so let us walk through what the protections you receive cover.

 

The first question you need to ask: Is the mark “trademarkable”?

There are a few general categories of distinctiveness when choosing a mark to be trademarked (strongest to weakest):

  • Fanciful or coined (made up, have no meaning; XEROX, ZYNGA)
  • Arbitrary (have a common meaning but not in relation to the goods/services; APPLE, GAP)
  • Suggestive (suggests something about the goods/services but doesn’t describe them; MICROSOFT, AIRBUS)
  • Descriptive (see below)
  • Generic (not able to be trademarked)

If you can, try to pick something in the first or second category. If not, try a suggestive mark. In the photography world it’s very popular to use your own name for your business, which is great from a business perspective, but can make it difficult to register the mark if it’s only your last name. Using your whole name avoids the surname issue below.

Most state registration authorities and the USPTO won’t allow registration of a mark if:

(1) when used on or in connection with the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them, or

(2) when used on or in connection with the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, or

(3) is primarily merely a surname.

UNLESS the mark has become distinctive of the applicant’s goods or services for at least 5 years before you are claiming such distinctiveness.

What does this mean in plain English? It’s harder to get a registered mark if the mark is descriptive or deceptively misdescriptive, e.g., BED & BREAKFAST REGISTRY for lodging reservation services (merely descriptive), or WOOLRICH for clothing not made out of wool (deceptively misdescriptive). This is also the case for geographically descriptive (e.g. THE SACRAMENTO SHUTTERBUG for a photographer in Sacramento) or deceptively misdescriptive (e.g. HOLLYWOOD PICTURES for a photographer in NYC), or for marks that are just a surname (e.g. SMITH PHOTOGRAPHY). Note that this is not an issue if you use your first and last name, just your last name (surname). In order for your registration not to be refused outright you need to have “acquired secondary meaning”, which means you need to have used the mark for at least 5 years before filing your registration application.

 

The next question to ask: Is anyone else using the mark?

How can you find out if someone else is using your mark? You can hire an attorney to do a preliminary search, or you can do one yourself. Places to look are on the USPTO database (http://tess2.uspto.gov/), state trademark databases (http://www.uspto.gov/trademarks-getting-started/process-overview/state-trademark-information-links), and Google/Bing/Facebook/Twitter/etc. There are a few specialized databases that can be searched, but they’re probably not applicable when talking about photography services.

What do you do if you find someone else using your mark or a similar mark? My best advice is: if they were using it before you, pick another mark! Don’t be the person that thinks “that’s ok, how would they ever know?” and then gets the cease and desist letter or gets sued and has to change their business name midstream. Of course, this advice works better at the beginning stage of choosing a name. What do you do if you’ve been in business for a while and then find out someone else is also using that name? You hope you started using it first! But see the post on infringement for more information about those scenarios.

 

Last question: What should you trademark?

Trademarks come in two kinds: word mark or design mark.

A word mark is simply that, just the words. You’ll often see it written all capitalized like APPLE or FISHER PRICE so that you’re aware that it’s a word mark and capitalization/font/color doesn’t matter.

A design mark is either a specific font/color version of a mark or a logo; it can have words or just be a picture. So the Nike swoosh symbol is a design mark, as is the little red Nabisco corner logo, as is the purple/blue Facebook “f”.

Phrases can be registered either as word marks or design marks but the usual recommendation is to trademark a tag line or phrase as a word mark since then you have more protection against others using it in a different format. (As a note, even very famous phrases like JUST DO IT are typically word marks, not design marks.)

 

There are three possible things you can apply to register:

(1) your actual business name (word or design mark);

(2) your logo (design mark), note that this can be just the graphic logo or the logo with words;

(3) your tag line(s) or phrase(s) (word or design mark but as noted above recommended as a word mark).

If funds are limited, I typically recommend that a client apply for registrations in this priority: word mark (name) first, design mark (logo) next, then tagline last. Why? Because it gets you the most bang for your buck. If you have the funds then by all means register the word mark and the design mark, or even all three, but remember you’ll also have maintenance fees for all three marks. If you use an attorney who charges a flat fee, ask if they offer a discount for multiple registrations. And remember, you do have common law trademark rights without a registration as long as you are using the mark. So don’t feel bad if you can only afford one registration fee!

 

Summary Checklist

  • Is the mark trademarkable?
  • Is anyone else using the mark?
  • What do you want to register? (Name/logo/phrase)

 

Registering a Photography Business Trademark: What Can it Actually Cover?

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