What I’ve Learned About Trademark Registration
You may not have thought much about legal protection for your church logo or other “brands” you’ve developed as part of your church’s ministry initiatives. But understanding the implications of copyright and trademark protection so that you can make an informed decision is an important part of church communication management.
Given a few of our church’s more externally-focused initiatives, we’ve taken the extra step of registering some of our trademarks with the US Patent and Trademark Office (USPTO). A quick disclaimer: the information in this post is certainly not meant to be taken as legal advice but rather to share what I’ve learned through this process. Please consult an attorney for thorough legal counsel on this subject.
First, it’s important to understand the difference between the terms “copyright” and “trademark.” Copyright refers to works of authorship, such as literary, dramatic, and musical works, as well as artistic works such as poetry, novels, songs, computer software, and architecture. In order to be copyrighted, these works have to be “tangibly expressed,” or “published.” A trademark, on the other hand, is a brand name. It may be expressed in a word, phrase, symbol, and/or design that identifies and distinguishes it from another source that may provide similar goods or services.
Second, it’s important to understand that an original work, whether in the category of a copyright or trademark, is protected as soon as it is created and/or used. There is no requirement for a creative work to be publicly declared or registered with the government in order for it to be protected as the creator’s intellectual property. This is what’s referred to as “common law” protection. Once the work has been “tangibly expressed,” in most cases through some sort of printing or electronic publishing, the author is free to place the copyright symbol (©) on the work, followed by the year of publication and the name of the copyright owner.
For trademarked works, the creator can (and should) place the symbol ™ adjacent to the design as soon as it’s created. Note that only when a trademarked work has been registered with the USPTO can the symbol ®, for “registered trademark” be applied.
Third, it’s helpful to know that the United States Copyright Office, a division of the Library of Congress, handles copyright registrations while the United States Patent and Trademark Office handles trademark registrations.
But why would you need to register a copyrighted work or a trademark? The simple answer is, to enhance your rights as the owner of the work.
I’m going to focus my remaining comments on trademark registration since this is the experience I’ve recently had in our church. We’ve chosen to federally register three of our church’s brands over the past two years, and we’re in the process of registering a fourth.
Registering your trademark provides additional protections such as legally claiming exclusive right to use your mark nationwide with the listed goods and services associated with your mark, legal presumption of ownership, and public notice that you are the owner of the mark. It also lists it in the USPTO database so that others who may try to start using a conflicting mark will be prevented from doing so.
Now, each of these protections is not without the possibility of challenge. Despite taking these steps, someone who had created and used the same mark (or a “confusingly similar mark”) before you started using yours could still claim ownership and force you to stop using it, even if they are not registered. But the chances are much less for a conflict once you’ve taken the steps to go through the registration process, in part because the process involves a search of the registry database.
So, with this hopefully not-too-confusing background, here are a few things I’ve learned about the process of registering a trademark:
1. It’s not necessary to register every brand.
Unless you see a need to protect your primary church logo, perhaps because you have or want to have a national presence, and you don’t want another church with the same name to use a similar logo, you probably don’t need to register it.
But maybe your church is planning to develop a publishing division to share your original resources with other churches. As part of that initiative, you’ve created a publishing brand. You may want to be sure that brand is protected from other churches or organizations that might be doing the same thing. For most churches who publish material, the reach is likely national, so there would be a greater need to maintain your unique identity in those efforts.
We have done so with our resources web site, www.equippedchurch.es. We registered the “EC” logo with the USPTO. We’ve also registered the logo for our discipleship strategy, JourneyOn, as this strategy and associated resources have been packaged by our church and made available to “network member” churches.
2. It’s expensive.
Although you can handle the registering of your trademarks yourself, hiring an intellectual property attorney to do the work for you is beneficial. They have experience dealing with the inspectors at the USPTO, and they will no doubt be more successful at getting the necessary approvals. But this makes the process expensive. You can expect each trademark registration to cost in the thousands of dollars once the process is complete.
3. It takes a long time.
Since the registration process includes your proving examples of usage of the mark, extensive database searches, pubic notices of your application, time for the public to challenge your ownership of the mark, and a lot of back-and-forth with the USPTO inspectors, it’s a months-long process from beginning to end.
4. It’s complicated.
I alluded to this in the previous point, but it’s helpful to know that once you decide to register your mark, it must be done so in one or more “categories” of goods and/or services. And there are literally hundreds of categories in which your registration can be listed, depending on how it’s being used. These include such designations as “publications,” “educational services,” evangelistic and ministerial services,” “online ministerial services,” and “promotional materials,” with a laundry list of sub-categories or descriptions of the things that may be included in each of these categories. Like I said, use an attorney.
5. It’s worth it.
As I write this, I’m realizing this information might cause you to question the value of the time, effort, and cost of trademark registration and whether it’s worth it in the end. Time will tell for us; but I think it’s certainly part of creating a professional standard and to have the credibility and posture your church needs for broad impact of the initiative. And should there ever be the unfortunate circumstance of a lawsuit based on ownership rights, it’s a necessary step of good stewardship.