Schools are increasingly recognizing the need for brand protection. Misuse and misappropriation of names, seals, logos, mascots, and other identifiers can lead to reputational harm and lost revenue.
But there are ways for schools to protect those proprietary assets.
Trademark protection
Branding
The process of maximizing your trademark is often called “branding.” A brand is merely a trademark or a combination of trademarks that, through promotion and use, has acquired significance in distinguishing the source or origin of the goods or services from those offered by others in the marketplace. Trademarks can take a variety of forms including words, logos, numbers, designs, stylized lettering, colors, sounds, smells, or any various combination thereof. A brand is intellectual property and part of the assets of “goodwill” of a company that can be bought or sold like any other asset.
Trademark registrations
A trademark owner can register a trademark with the appropriate U.S. state entity, often the state’s corporate bureau, in any or all of the 50 States and/or with the U. S. Patent and Trademark Office (USPTO).
Registration with a state trademark registry is often easier, less expensive, and less time-consuming than registration with the USPTO. Schools, particularly local public schools, seemingly have limited geographic reach which makes state registration appear attractive despite the limited protection provided. Today’s online world minimizes geographic boundaries and emphasizes the need for stronger enforcement options afforded by a federal registration.
We believe a federal trademark registration is almost always the better option and recommend this approach, if the trademark is registerable with the USPTO.
Before pursuing any registration, confirm that logos or other marks are not owned by someone else. This situation most frequently arises when a school adopts a mascot or logo that is the trademark of another entity. Some organizations aggressively protect their trademarks and have forced schools either to change their mascots or face a trademark infringement lawsuit.
Classes of goods and services
The federal process classifies goods and services into one or more of 45 classifications. Many states, including Pennsylvania, rely on the federal classification system. Classes commonly related to school activities include a services classification for educational services and related activity generally associated with schools and a goods classification for clothing such as spirit wear.
Benefits of federal registration
Federal trademark with the USPTO under the Federal Lanham Act gives a registrant several important advantages over others in the marketplace:
- Provides notice to the world of your trademark rights
- Constitutes prima facie evidence of the validity and ownership of the mark
- Prevents other confusingly similar trademarks from being registered
- Can prevent the importation of counterfeit goods or goods bearing confusingly similar trademarks
- Provides the right to sue an infringer or counterfeiter in federal court
- Preempts certain state law claims
- Permits the recovery of enhanced damages and attorneys’ fees in certain “exceptional cases”
Notices (TM and ®)
Anyone who claims rights in any trademark or a service mark may use the TM (trademark) designation with the mark to alert the public to their claim to rights. It is not necessary to have a registration, or even a pending application, to use the TM designation. The registration symbol “R” in a circle (®), however, may only be used when the mark is registered with the USPTO.
If you have a federally registered trademark, it is very important to always use the ® symbol with every use of your registered trademarks. The best practice is to place the ® at end of mark in small font. If your mark is not federally registered, the best practice is to use the TM designation with the mark to alert the public of your trademark claim.
Licensing & enforcement
Regardless of registration status, branding protection requires self-enforcement. School districts must monitor and control the use of trademarks or risk losing those rights. Control should include conducting regular, periodic online searches and keeping a watchful eye on the community for unauthorized use. Unauthorized users may be approached with the choice either to cease and desist the use or to enter into a license agreement controlling the use. Searches should also ensure that authorized users continue to use trademarks appropriately in unadulterated and high-quality formats in accordance with the licensed conditions.
Copyright protections
Copyright rights exist as of the moment an original work is fixed in a tangible form. Copyright registration is not required to establish or protect copyright rights. However, registration of a copyright-claimed work is required to file suit against an alleged infringer and provides additional benefits such as notice, statutory damages, and attorneys’ fees.
Copyright registration is simple, inexpensive, and does not require a lawyer. The copyright office provides several guides and tutorials online.
If you have questions about how your school can protect its brands, please contact Andrew Mead or Andrew Oltmans.