Submission Date:
Question:
A member collaborating on a conference asked for some general legal advice to keep in mind when selecting a name for the event (“branding”).
Answer:
Branding and trademark questions are some of my favorite “Ask the Lawyer” submissions. Since GLAM institutions[1] attract innovators and creative professionals, new products and services emerge from them at an impressive rate. And because the people driving the development tend to have degrees in esoteric areas of the humanities, you get a lot of cool logos and names.
There are a lot of resources out there on how create strong trademark[2], but what most of those resources don’t consider is people developing marks in an inter-institutional, collaborative environment. So, I’ll take this opportunity to set out a few general questions for you cooperative trailblazers to keep in mind when co-branding your next collection, conference, or information management tool.
#1. Whose mark is it, anyway?
Any development of a brand (which usually includes some or all of the following: developing a name, generating a logo, registering a domain name, creating a #hashtag and other hallmarks of a social media existence, determining a promotional strategy, and maybe even creating a new corporate entity) should only happen after the parties agree on who will own it. This agreement should be in writing.
[Pro tip: if you are at a larger institution, you might want to check with the PR/marketing department before formally taking ownership, or even partial ownership, of a new brand. Think of it as helping them properly accession something into their collection.]
#2. How will we (the collaborators) use it?
It is critical that the collaborators on a brand share a general understanding as to how the mark will be used (this is what I refer to above as the “promotional strategy”).
Every collaborative venture will handle this differently, but the important questions are:
- What is the purpose of the mark?
- What good or services is it associated with?
- To what uses is this mark restricted? Or…is the mark deliberately unrestricted?
- Who is in charge of the mark on social media?
- Can a collaborator use it in the context of their own venture?
- What media will the mark be used in?
- How, if ever, will the mark be retired?
#3. How do we protect our mark?
Once the group know who owns it, and how it will be used, it’s important that the underlying copyright supports that strategy.
- Who owns the copyright to the logo design (if it is sufficiently original)?
- Will we register our mark with the U.S. Patent & Trademark Office (“USPTO”)?
- Who maintains the mark?
- Who monitors the mark?
- Who is in charge if a use departs from the promotional strategy?
- Are there any grant funding terms that effect ownership of the mark?
#Always. Does the mark we’ve picked infringe?
The question of infringement should not drive the creative process, but it should be at the forefront of every branding initiative.
Trademark infringement is established when a plaintiff demonstrates that it owns a protectable mark[3], AND the defendant’s use of that mark is "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." Grady v. Nelson, 2014 U.S. Dist. LEXIS 172759, at *17 (D. Colo. Dec. 15, 2014).
Just like copyright infringement, trademark infringement is not excused by educational or not-for-profit use. So, at every stage (picking the words, picking a logo, registering the domain, etc.) care to check that your new mark isn’t stepping on an old one is absolutely critical.
In a collaborative venture, where it is easy to assume that someone else is handling something, proof of this step being taken, in a timely manner, should be clear and well-documented (and preferably reviewed and confirmed by a lawyer with malpractice insurance).
Brand on.
[1] A saucy bit of branding I recently observed, meaning “Galleries, Libraries, Archives, Museums.”
[2] And I mean a LOT. Most intellectual property-focused firms or lawyers have a FAQ or helpful article on their website/blog on “how to build a strong brand.” To be fair to all of them, the link I have provided is to the same type of material, hosted by the American Bar Association.
[3] Not all “protectable trademarks” are registered. If a mark has been routinely used in commerce, the owners may have “common law” rights.
