Ask just about any photographer what area of law protects his or her business, and the answer you’re likely to hear is “copyright.” However, copyright law only protects a photographer’s work product and doesn’t prevent a competing business from attempting to capitalize on the goodwill that the photographer has built with his or her customers. Trademarks are the key to protecting a business’ goodwill and to preventing unfair competition.
Most people don’t realize the impact that trademarks have on our daily life, much less the way that trademarks subconsciously guide consumer-buying decisions. When you purchase soda or fast food, or even over-the-counter pharmaceuticals at the local drugstore, you’re making decisions typically based upon the power that good trademarks inherently possess: You select a brand or product based upon its trademark (e.g., Coca-Cola, Tylenol, etc.), expecting that the product will be consistent with your prior experiences with it. The same holds true for services; if you’ve used an image-archiving service (e.g., PhotoShelter) in the past, it’s reasonable to assume that you’ll receive at least the same level of service when you use it in the future. That’s the real power of trademarks: They embody the goodwill associated with a business and permit customers to make purchasing decisions based upon that goodwill.
Photographers are just as likely to use trademarks as any other type of business. As people become familiar with the quality of a studio’s photographic work and its reputation grows, the goodwill that the studio builds with its customers will be associated with any trademarks the studio has used (regardless of whether the studio or its employees have consciously used the trademark). It may be as simple as people associating the name of the studio or some phrase that the studio has used in advertising, or even simply that its customers have come to associate some trademark with consistent, high-quality, creative photographic work. When this happens, the trademarks used by the studio become tremendously valuable business assets.
A Rose By Any Other Name?
The immortal Bard wrote, “A rose by any other name would smell as sweet.” However, as anyone who has spent the time, money and effort to promote a business knows, name recognition can be critical to the success of a business. That’s where trademarks and trademark law become important, even for photographers.
When Arlington, Virginia-based photographer Liz Vance started using the phrase “Oh Baby Photography” in 2002 in connection with her maternity- and infant-photography business, she understood the importance of branding. However, Vance had an eye-opening experience when another photographer started operating a business using the same mark and nearly identical Internet domain name. According to Vance, “It was the first time I felt I had something to protect.”
A mark—trademarks and service marks are often referred to as “marks” because, from a legal perspective, they’re more or less the same—can be any word, name, slogan, symbol, color or combination of elements that’s used to identify the source or origin of goods or services. In fact, almost anything capable of identifying a source can be a trademark. The key, however, is that the selected mark is capable of identifying a single source.
Unlike copyrights, which protect expression of ideas, or even patents, which protect useful ideas and inventions, trademarks and service marks protect something far more ephemeral and intangible: goodwill. Goodwill assures a consumer that products or services they select based upon a mark will be of a certain quality and consistency.
To better understand trademarks, it’s perhaps helpful to understand what can’t be a mark. Titles of single creative works generally aren’t capable of being a trademark. Certain types of national symbols and insignias also aren’t capable of being trademarks. For a relatively brief period of time, Internet domain names could be registered as trademarks; now, however, a top-level domain name (e.g., .com) is generally considered to be generic, although there still are certain rare instances where an Internet domain name could be a mark.
If you’re just starting your business or developing a new brand identity for your business, try to resist the urge to adopt a descriptive trademark. Often, business owners will feel the need to include terms in trademarks that describe what the business does. While this tendency is understandable, it’s also shortsighted because it will limit your ability to prevent competitors from using similar marks.
There’s a common misconception that trademarks are trade names—essentially, business names—or vice versa. This misconception arises, in part, because some businesses are identified more readily by their trademarks than by their corporate name. The appropriate way to think of a trademark is an adjective—hence, describing the source of something, e.g., a Walden’s Photography portrait—while trade names or business names are used as nouns, e.g., “this week at Walden’s Photography….”
Selecting A Trademark
The best time to research and select a trademark is when you’re creating a marketing identity for your business. In many cases, this is right at the beginning when you’re preparing or starting your business.
When considering a potential trademark, there are certain key concepts that must be kept in mind. In addition to thinking of trademarks as adjectives, it’s also important to evaluate the level of creativity associated with a potential trademark. One of the most fundamental concepts in trademark law instructs that the more creative the trademark is, the greater the protection that will be afforded. The converse rules also applies: The more descriptive a trademark is, the less likely it is to identify a particular source, and therefore, less protectable. Marks that are considered to be merely descriptive generally won’t be entitled to protection, and generic terms—which are incapable of describing anything more than the goods themselves—aren’t entitled to any protection (trademarks can even cease to be trademarks through a process referred to as genericide; when a trademark is used as a noun rather than an adjective—as happened with aspirin—the trademarks can become generic and cease to function as marks).
When these concepts are applied to photography-related business, it’s easy to see why the purely descriptive term like “Portrait Studio” wouldn’t be entitled to trademark protection. However, this also highlights a natural tension associated with selecting a trademark: the desire to include some term in a trademark that describes the services associated with the trademark.
While the terms “Portrait Studio” or “Photo Studio” may not be protectable by themselves, adding some additional terms might result in a protectable trademark. For example, Walgreen Co. filed an application to register “W Photo Studio.” The pitfall associated with this approach—adding some term or element to help distinguish an otherwise descriptive mark or generic term—is that the applicant almost certainly will be required to disclaim any interest in the descriptive or generic terms. In Walgreen’s case, the company was required to disclaim any rights in the term “Photo Studio” except when those terms appeared together with the “W” prefix. Similarly, Vance encountered this pitfall when registering her trademark, “Oh Baby Photography. Bellies. Babies. Beautiful.” To obtain a federal trademark registration, Vance was required to disclaim any interest in the descriptive terms “baby photography” apart from her complete trademark.
The problem with disclaiming parts of a trademark is that it limits the rights the trademark owner can exercise and effectively opens the door for others to use the same terms. While this sort of limitation isn’t readily apparent when you’re trying to obt
ain a trademark registration, save for the requirement of disclaiming descriptive terms, it can have a tremendous impact once you’ve obtained a trademark registration. The rights associated with a trademark are broader than merely preventing people from using the same mark, and owners are generally permitted to preclude others from using any mark that’s confusingly similar (e.g., that’s likely to cause consumer confusion). However, when an owner disclaims portions of a trademark, it limits the scope of what may be protected, and thus, the scope of what may be considered when attempting to determine if a competitor’s trademark is confusingly similar.
In light of the pitfalls associated with disclaiming portions of a trademark, it should become apparent that the better approach to finding a good trademark is to select a mark that has no relationship to the products or services with which it’s associated (e.g., Apple for computers). Such marks, often referred to as arbitrary or fanciful, are considered to be inherently distinctive and entitled to the greatest protection. Alternatively, you can select a suggestive term combining photography-related terms. For example, a California-based motorcycle-racing photographer registered the suggestive trademark “Automotophoto.” Although the word might be more appropriately described as a portmanteau word, the resulting combination didn’t exist in the English lexicon and was approved for registration. Another example of a suggestive trademark is San Francisco, Calif.-based Mascot Metropolitan’s selection of “Camera On Wheels” as a trademark for a rolling camera bag.
There also are numerous instances of photographers registering trademarks that include their names. Names of people also can serve as a trademark, provided the mark is being used in commerce and provided the person’s consent to use his or her name has been granted.
If you’re just starting your business, or developing a new brand identity for your business, try to resist the urge to adopt a descriptive trademark. Often, business owners will feel the need to include terms in trademarks that describe what the business does. While this tendency is understandable, it’s also shortsighted because it will limit your ability to prevent competitors from using similar marks.
Trademark Clearance
Once you’ve identified or created a potential trademark for your studio or business, you should attempt to “clear” the trademark for use before you start using the trademark.
The process of “clearing” a trademark involves assessing the risk that may be associated with using a given trademark and to help determine whether it’s worth making the investment in that trademark. However, even if a trademark appears “clear,” there’s no guarantee that it will be. Since trademark rights in the United States are acquired through use rather than mere registration, whoever first acquires rights in a trademark—whether registered or not—will have superior rights to anyone who starts using the same trademark later.
After attending several courses emphasizing the importance of branding, Vance selected a mark without first attempting to “clear” the mark. “After I ordered business cards and created letterhead, I found that a big company was already using [the mark I wanted to use].” Having learned her lesson the hard way, the next time around, Vance performed a series of searches—an effort to “clear” a trademark—before she selected “Oh Baby Photography” as a mark.
There are two key steps to “clearing” a trademark for use. The first step involves performing what’s commonly called a “knock-out” search, so called because it can easily knock the trademark that you want to use out of consideration. A knock-out search is performed on the database at the U.S. Patent and Trademark Office (USPTO) website (www.uspto.gov). In the section under Trademarks, you’ll find an option to “Search pending and registered marks (TESS),” which will let you perform a search for registered trademarks, as well as pending trademark applications, that may be identical or similar to the trademark that you want to use for your business.
If, after performing your knock-out search, you find that another business is using the mark you want to use or has already filed an application for the same trademark, don’t despair; it may be possible to use the same mark, provided the current use isn’t likely to be confused with your intended use of the trademark. The fundamental purpose of trademark law is to prevent consumer confusion. However, there’s a risk whenever you use a registered trademark or trademark for which an application has been filed by someone else, and it’s best to assess this risk with your local intellectual-property law attorney, or to go back to the drawing board and try to come up with a different trademark.
Assuming the knock-out search doesn’t reveal an obvious problem, you can proceed to the second step, which is to assess whether any other business is using a similar mark. Trademark rights in the United States are acquired through use (rather than mere registration), and it’s possible that someone else has acquired what are called “common law” rights in the same or similar trademark. Since a knock-out search won’t reveal “common law” usage, the second step involves ordering a comprehensive trademark search. Such a search increases the likelihood that you’ll discover whether someone else has rights in the same or similar mark to the one being cleared. Comprehensive trademark searches may be ordered from companies like Thomson CompuMark (compumark.thomson.com). Unfortunately, the results of this type of search can be daunting even for attorneys who have never seen one. The results, assembled from the database at the USPTO, various states’ corporation databases, databases of Internet domain names and even more readily available sources such as Internet-based searches and even telephone books, can be hundreds (and, depending upon the terms searched, even thousands) of pages.
Ultimately, a comprehensive search serves two purposes. First, it helps ensure that any investment you make in the advertising and marketing of your trademark won’t be wasted because someone has already acquired “common law” rights. I’ve seen more than a few instances where businesses selected a trademark based only on a knock-out search and then found out after starting a major advertising campaign that another business was already using (and had acquired superior rights to) the same trademark. Second, ensuring that no other businesses are using the trademark you want to use can help prevent you from facing a claim that your trademark infringes another business’ trademark.
Once you’ve gone through the process of “clearing” the trademark, the next step is to acquire rights to the trademark. We’ll cover that in the July/August issue of DPP.
Samuel Lewis is a Board-Certified Intellectual Property law specialist and partner at Feldman Gale, P.A., in Miami, Fla., and a professional photographer who has covered sporting events for a quarter century. He can be reached at [email protected] or [email protected].
