Trademark a logo?

Question

Hi everyone,

I recently had a friend of mine design a logo for me in my real estate business.  I like the logo alot and would like to use it in business cards, marketing letters and contracts as well.

My questions is, do you think it's necessary to trademark my logo legally or not bother with that now.  I am just starting out so It could change in the future, and also it might be pricey to do that as well.

Take care and thanks for reading.

Ned Carey · Answer

The design is copyright the moment it is created. Who holds that copyright depends on the agreement with your friend.

When you use a trademark in business it becomes your trademark. However registering it provides additional security.  Personally I use certain designs as my trademark. Some day I may go to the trouble to actually register them.

My understanding of the law is you can call it your trademark and even put fine print ads claiming it as your trademark. You cannot claim it as a "registered" trademark until such time as you actually register it.

I am not an attorney and this is not intended to be legal advice for your specific situation

Jynell Berkshire · Answer

Michael,

Legally, unless you have a written agreement wherein your friend releases all rights to the logo, he owns the logo and has legal standing to sue you in the future for infringement, both under common law and case law. You should immediately execute an agreement with your friend so that you own the rights.

As to trademark and copyright law, an individual/company may have common law rights. Registering your trademark with the US Patent/Trademark Office and your copyright with the Copyright Office protects you with statutorily and case law rights. This provides an added protection so that you can sue for damages.

Again, get a written release agreement.

Michael Quarles · Answer

Here is 99 Designs trademark agreement. I would definitely get something signed. Will you ever need it? Probably not but what if you do?

This Agreement relates to the sale and transfer or licence of Intellectual Property Rights in Designs which are created by a Designer for a Customer via 99designs.com.

This Agreement will apply to you in your capacity as either a Customer or Designer in respect of the sale and transfer or licence of a Design.

When a Customer selects a winning Design for their Design Contest, or when a Customer purchases a Design from the Ready-made Design Store, the Customer and the Designer will be deemed to have entered into a legally binding agreement for the provision of that Design from the Designer to the Customer, in each case upon the terms of this Agreement as set out below, unless the Customer and the Designer otherwise separately agree in writing.

Parties

The parties to this Agreement are the Customer and the winning Designer which the Customer selects in respect of a Design Contest hosted by the Customer, or the Designer from whom the Customer purchases a Design on the Ready-made Design Store, as the case may be ("Selling Designer"). If there is more than one Selling Designer, then the Customer will be deemed to enter into a separate agreement on the terms of this document with each Selling Designer.

Date of this agreement

This Agreement is entered into between the Customer and the Selling Designer on the date that the Customer selects the relevant Design ("Transferred Design") as part of a Design Contest or purchases the Transferred Design from the Ready-made Design Store.

99designs services agreement

By using 99designs.com, you have agreed to be bound by our 99designs Terms of Use. A copy of that agreement may be found here.

To the extent that there is any inconsistency between the terms of this Agreement, any other agreement between you and another Customer or Designer, and the Services Agreement, then those documents will be read in the following order of precedence:

a.first, the Services Agreement will take precedence over all other documents; and

b.second, any separate agreement between you and another Customer or Designer will take precedence over this Agreement (apart from clauses 5(c) and 6 of this Agreement which will take precedence over that separate agreement).

Terms

The following terms and conditions will apply to you in both your capacity as a Customer and as a Designer.

1. Definitions

Terms defined in the Services Agreement will have the same meaning in this Agreement.

2. Provision of the design

The Designer hereby agrees to provide and deliver the Transferred Design to the Customer in accordance with the Designer's obligations set out in the Services Agreement.

3. Assignment of the intellectual property rights

a.This clause will apply if a Customer has purchased the Transferred Design:

i.pursuant to a Design Contest; or

ii.from the Ready-made Design Store where the Transferred Design was sold to the Customer for use on an exclusive basis, pursuant to which the Customer was to be assigned the ownership of the Intellectual Property Rights in the Transferred Design.

b.If this clause applies, then upon receipt of payment for the Transferred Design in the form of 99designs Dollar Credits (pursuant to the terms of the Services Agreement), the Designer hereby assigns to the Customer, all Intellectual Property Rights which the Designer has or may in the future have in the Transferred Design.

4. Licence of the intellectual property rights

a.This clause will apply if a Customer has purchased a Design from the Ready-made Design Store where the Design was sold to the Customer for use on a non-exclusive basis, pursuant to which the Customer was to be granted a non-exclusive licence to use the Intellectual Property Rights in the Design.

b.If this clause applies, then upon receipt of payment for the Transferred Design in the form of 99designs Dollar Credits (pursuant to the terms of the Services Agreement), the Designer hereby grants to the Customer a non-exclusive, royalty free, worldwide, irrevocable, perpetual licence to:

i.use, reproduce and distribute the Transferred Design; and

ii.sell, assign and/or transfer the rights licensed to the Customer in the Transferred Design to any person.

c.The licence rights granted in clause 4(b) are personal to the Customer and may not be sub-licensed by the Customer to any person. The Customer is the only person who may use the Transferred Design in accordance with the rights granted under clause 4(b).

d.Apart from the licence rights granted to the Customer with respect to the Transferred Design under clause 4(b), the Designer reserves all other rights in respect of the Transferred Design and the Intellectual Property Rights subsisting in the Transferred Design, including but not limited to, the right use the Transferred Design for any purpose, and the right to license these reserved rights to third parties.

e.Customer acknowledges that and agrees that by purchasing the right to use the Transferred Design on a non-exclusive basis, Customer's rights in and to the Transferred Design are limited. The limitations include, but are not limited to:

i.the inability to prevent 99designs and, the Designer from re-selling the Transferred Design to a third party, or to prevent such third party from using the Transferred Design for any purpose; and

ii.the inability to pursue registration of the Transferred Design as a trademark or service mark with any government authority, or to prevent 99designs, the Designer or any third party from using all or any portion of the Transferred Design for any commercial purpose.

5. Incorporation of intellectual property rights owned by a third party

a.The Designer warrants that prior to supplying the Transferred Design to the Customer, the Designer has disclosed to the Customer any Intellectual Property Rights in the Transferred Design which may be held by a third party.

b.If the Design incorporates the Intellectual Property Rights of a third party, then:

i.the Designer warrants that it has obtained a licence from the relevant third party to incorporate the Intellectual Property Rights of that third party in the Design ("Third Party Licence");

ii.if the Third Party Licence is capable of assignment to the Customer, then the Designer hereby assigns and transfers to the Customer, and the Customer hereby agrees to take an assignment and transfer of, the Third Party Licence and all of the rights and obligations of the Designer under the Third Party Licence;

iii.if the Third Party Licence is not capable of assignment to the Customer, then:

1.the Designer must disclose this fact to the Customer prior to providing the Customer with the Transferred Design and prior to the conclusion of the relevant Design Contest (if any);

2.the Designer warrants that the Customer may obtain a Third Party Licence to the Transferred Design in its own name; and

3.prior to the conclusion of the Design Contest (if any) or the supply of the Transferred Design to the Customer, the Designer must provide the Customer with details of where to obtain the Third Party Licence to the Transferred Design in its own name and the cost of doing so.

iv.the Designer warrants that unless expressly stated to the contrary by the Designer prior to providing the Customer with the Transferred Design and prior to the conclusion of the Design Contest (if any), the Third Party Licence provides the Customer with a worldwide, royalty free, perpetual right to display, distribute and reproduce (in any form) the Intellectual Property Rights of the third party contained in the Transferred Design.

c.The Designer hereby indemnifies and keeps indemnified the Customer, 99designs and 99designs' third party providers ("Indemnified Parties") against any loss, cost, expense or damage (including legal costs on a full indemnity basis) which the Indemnified Parties may suffer or incur as a result of a breach by the Designer of any of the provisions of clauses 3, 4 and 5.

6. Liability of 99designs and its third party providers

a.You acknowledge and agree:

i.99designs and its third party providers are not parties to this Agreement; and

ii.99designs and its third party providers shall each not be liable or responsible for any breach of this Agreement by any party to this Agreement.

b.Notwithstanding clause 6(a), you agree that 99designs and its third party providers may rely on and benefit from the indemnity provisions set out in clause 5(c).

7. Miscellaneous

a.Any notice given under this Agreement must be in writing and must be signed by the party or its agent giving the notice. A notice is taken to be received:

i.in the case of a notice delivered by hand, when so delivered;

ii.in the case of a notice sent by pre paid post, on the third day after the date of posting;

iii.in the case of a notice sent by facsimile, upon the receipt by the sender of a transmission report from the dispatching facsimile machine which confirms that the facsimile has been successfully sent; or

iv.in the case of a notice sent by email, upon the receipt by the sender of a confirmation from the recipient or the recipient's email server that the email has been received by the recipient.

b.If any provision of this Agreement is judged invalid or unenforceable for any reason whatsoever by a court of competent jurisdiction, such invalidity or unenforceability (unless deletion of such provision would materially adversely affect one of the parties) will not affect the operation or interpretation of any other provision of this Agreement to the intent that the invalid or unenforceable provision will be treated as severed from this Agreement.

c.This agreement is governed by, and must be construed in accordance with, the laws of the State of Victoria, Australia and the parties irrevocably submit to the exclusive jurisdiction of the courts of the State of Victoria, Australia and their Courts of Appeal.

J Scott · Answer

Agreed that you should get a release whether you intend to register it or not.  If you do intend to register it, you need to decide what you'll try to register -- the logo itself, the logo plus the business name (in a specific font/design) and/or the business name itself.

Registering costs between $275-375 for each mark and category, and perhaps additional costs if you haven't actually started using the mark in commerce at the time the mark is granted.  Also, if the mark is declined or challenged, there's additional work if you want to keep on fighting for it.  The entire process can take 12-36 months.

If you decide to move forward, you may want to look into working with a trademark attorney.  Mine charges $625 for a typical straightforward search and application.

Ned Carey · Answer

Again I am not an attorney but I have researched this subject.

From a practical matter if he created it for you he is not likely to ever raise and issue. However If you expect to grow and use this artwork in a significant fashion then it might be worth writing up and agreement giving you all the rights.

Michael Gee · Answer

Thanks @Michael Quarles  I could definitely use this in the future!

Katie P. · Answer

@J Scott Mind my asking who your trademark attorney is? Could you PM me?

Michael Gee · Answer

Thank you @jscott and @Jynell Berkshire  for the input!

Michael Gee · Answer

Thanks @Ned Carey

So if I never see this "friend" again, does that mean he would have some stake in the business?  In other words, would they be able to have legal action against me for using their designed product?  I don't see that happening but just hypothetically speaking and plus you never know :)  Thanks