Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Dear Rich #1: I have had a business installing and maintaining equipment for a number of years. I now want to register my trademark, but I do not know if I meet the "in commerce" requirement. I am in a first state and have a number of customers located in a second state, but the work I do for them is all on customer property located in the first state. Am I "in commerce"? I also do some work on  American Indian land. Is this work in commerce?

Dear Rich: I am a long-time artist, but never serious until now. I took up clay with lost wax in mind, and am now at the point of contacting a foundry to begin the process. What do I need to do and/or know prior to actually sending them any photos? I'm so glad you asked. The short answer to your question is "That depends..." The Dear Rich staff presumes you're concerned about either (1) the foundry ripping off your work, or (2) that the foundry will make some claim of co-authorship. As for being ripped off, as our Dear Rich readers know, you have a copyright in the photos (and any resulting sculpture) without doing anything. You can file a copyright application if you like (we recommend the new Form CO) and that will provide additional rights in the event of an infringement. You could also have the foundry sign an agreement (PDF) not to disclose or reproduce your work. That agreement could also deal with your second issue by having the foundry acknowledge that it acquires no rights in the resulting sculpture (and any rights it does acquire are assigned to you). (This site has helpful information about dealing with foundries.) Our guess is that the foundry is used to artists raising such issues and may even have such an agreement available. If they don't (and the agreement cited above doesn't work), you can put together an informal agreement yourself, or get one from one of Nolo's independent contractor books. All of these suggestions are based on the assumption the foundry is in the U.S. If it's in a foreign nation, you'll have a harder time enforcing agreements and copyright.

Dear Rich: What is the rule about using the name of one city for products made in another city. Can we call our beer 'Kansas City,' even if it's not made in Kansas City? I'm so glad you asked. The short answer is, "Probably not." If the USPTO thinks your brand is geographically misdescriptive, you won't be able to register it. When a trademark identifies a place other than the place from which the goods or services originate, and if consumers are likely to believe that the goods originate from that place, it is geographically misdescriptive and unprotectible. For example, Maid in Paris was considered misdescriptive of a perfume that is not from Paris. Durango was considered misdescriptive of chewing tobacco since it was not from Durango, the city in Mexico that produces tobacco products.

To our readers: This is the first day of our celebrity-free week, during which we will not be answering any questions about whether you can copy celebrity pictures, names, life stories, odors, hairstyles, or DNA. (And in our daily life, we will attempt to think celebrity-free thoughts.) We are not anti-celebrity, but in our continuing quest for personal authenticity, we urge you (and our fellow bloggers) to achieve some perspective on the issue by taking the one-week celebrity-celibacy vow. Okay, back to our regularly scheduled programming...

Dear Rich: I offer software development services through my website. I applied  for a federal trademark registration for my service mark and I uploaded a specimen which was an image of the trademark taken from my homepage that included the words "custom software design and support services." The trademark examiner said it wasn't acceptable because it "does not show the applied-for mark in actual use in commerce in the sale or advertising of the services." What did I do wrong and how can I fix this? I'm so glad you asked. A specimen for a service mark must identify the applicant's services -- which you did -- and it must indicate their source -- which you apparently failed to do. The Dear Rich staff reviewed your specimen (a screen capture) and noted that it lacked evidence that it was from your website.You should submit a substitute specimen showing the mark in the context of the webpage, preferably with the URL and a displayed method of contacting you -- for example, a "contact us" button.  In addition, you must file a declaration that states: "The substitute specimen was in use in commerce at least as early as the filing date of the application." By the way, as a service mark owner, you can submit a non-website specimen instead -- for example, you can submit letterhead, an invoice, or a business card -- provided it displays the mark, describes the services, and demonstrates a method of contacting you. The USPTO offers more information about service mark specimens. And speaking of services, Nolo now offers online assistance for those who wish to apply for federal trademark registration. 

Dear Rich: I have a question. I am an illustrator. Is it true that the government is setting up a database of visual arts works? And is it true that any works that you don't place on this register will become "orphan works" that anybody can use without your permission? I'm so glad you asked. The answers to your questions are "maybe," and "not exactly." An orphan work is one that is owned by a hard-to-find copyright owner. For example, in 1975, a child sends a drawing to Elvis Presley. In 2008, a biographer wants to include the drawing in a Presley biography. The problem is that the artist can't be found and the publisher doesn't want to reproduce the image without permission. Two bills have been proposed in Congress that address this issue. The proposed bills would allow the publisher -- after performing a diligent search -- to reproduce the image. If the artist later appears, the publisher would have to pay a reasonable fee for the use. An unlikely crew of special interests favor the House version of the bill, including librarians, free-speech types, copylefties, academics, writers, photographers, and big industry groups like the RIAA (and, of course, Google). Under the House bill, anyone who wants to use a work must (1) document their "good faith" search for the owner, (2) file a "Notice of Use" with the Copyright Office before using the work, (3) provide attribution if they know the name of the creator, and (4) include a special "orphan works" symbol when the work is published.

Illustrators and artists are concerned about the bill because it would establish a registry of visual arts works. They're worried that if a piece of artwork doesn't show up on a registry search, all rights to that artwork may be lost. First, keep in mind that orphan or not, copyright is always preserved in the work. Second, there's nothing in the law that says that a failure to appear in the registry automatically creates an orphan. For example, even if the drawing of Suda (above) did not appear in a registry, I would still have a hard time claiming it was an orphan ... since the artist and his work are easy to locate on the web (Steve, please don't sue).

Dear Rich: I have a question. I've tried filing a provisional patent application electronically at the patent office but the USPTO refuses to validate my application cover sheet (a PDF form). It's driving me nuts because I can't figure out the problem. I'm so glad you asked. Chances are you're using the wrong version of Adobe Acrobat. Although many people are using Acrobat 8.0 (and higher), the USPTO EFS system currently only accepts forms prepared with Acrobat 7.0.8 which you can obtain using the links on this USPTO page. (You can get all the EFS requirements here.) And of course, if you're interested in the other kind of acrobat...

Dear Rich: I have a question. Last week, you talked about trademark logos. How do you search the USPTO database to find conflicting design logos? I'm so glad you asked. You can search design logos as follows:

1. go to the USPTO website


2. under Trademarks (on the left), click "Search TM Database"


3. then click "Free Form Search (Advanced)"


4. enter a word or words in the search box that signify what you're looking for followed by [DE] (which stands for "design element").

So, for example, if you were looking for design logos that included a meerkat (no not this meerkat) you would type: meerkat[DE]. Cute, huh?

For more on trademarks, check out Attorney Stephen Elias' book Trademark: Legal Care for Your Business & Product Name (Nolo), now in its 8th edition.

Dear Rich: I have a question. How long does it take to get a certificate of registration after using the Copyright Office's new electronic filing system? I'm so glad you asked, because on December 31, 2007, I received a certificate of registration for a work that I filed on September 27, 2007. So the turnaround is approximately three months. And don't expect the traditional double-sided certificate with the red seal and examiner's initials. The Copyright Office is unveiling some new formats for the certificate including a just-the-facts form and a more detailed, Web 2.0-style form. You can read the whole story on the new forms at the Copyright Office.

Grand total spent on electronic filing: 15 minutes to file; 90 days for receipt of certificate of registration.

To learn more about the process of protecting your works from copycats, pick up a copy of The Copyright Handbook: What Every Writer Needs to Know, by Attorney Stephen Fishman (Nolo).