Trademark Abandonment and Copyrighted Images: What You Need to Know

The intersection of trademark and copyright law can be complex, especially when a trademark is abandoned but remains under copyright protection. This article will explore the nuances of this legal scenario and provide actionable advice for business owners facing such challenges.

Understanding Copyright and Trademark Protection

Copyright and trademark protection serve different purposes. Copyright protects literary and artistic works, such as images, music, and writings, while trademarks protect distinctive signs or symbols that identify the source of goods or services. The key difference is that copyright protection springs into effect the moment an original work is created, whereas trademark protection requires explicit registration with the relevant authorities.

When Can a Mark Be Copyrighted?

Numbers, letters, words, phrases, logos, images, and shapes can be trademarked. However, only literary and artistic works can be copyrighted. This means that while a logo or image can be copyrighted, a word or phrase on its own typically cannot.

When a trademark is converted into a protectable image, it can gain additional copyright protection. For instance, a logo that is unique and complex enough can be copyrighted. However, simple geometric shapes and common text or numerical combinations are not generally protectable under copyright law.

Abandoned Trademarks

An abandoned trademark is one that has not been actively used for at least three years. According to USPTO guidelines, such trademarks can be legally challenged and removed from the registry. However, this process is not automatic and requires proactive legal action by the rightful owner.

Moreover, abandoned trademarks can be re-applied for only after they have been officially removed from the Trade Mark Registry. This means that businesses cannot simply assume they can use an abandoned mark without due diligence, including verification through legal channels.

Can You Use an Abandoned Trademark with Copyrighted Image?

The crux of the matter is whether the mark in question is protected by copyright. If the image or mark in question is copyrighted, you cannot use it without the copyright owner's permission, even if the mark has been abandoned as a trademark.

Here’s a scenario: Suppose you own an image that is both trademarked and copyrighted. If you abandon the trademark, others could potentially try to use the mark. However, if the image is still copyrighted, reproducing or using the image without permission would still constitute copyright infringement.

Legal Considerations and Professional Advice

While the aforementioned guidelines provide a good framework, the legal landscape is often nuanced and subject to interpretation. For instance, if a former trademark owner has abandoned the mark but has retained the image's copyright, you might face legal challenges if someone uses the image without proper authorization.

To navigate these complex waters, it is advisable to consult a lawyer with expertise in both trademark and copyright law. They can provide the necessary clarity and guidance to ensure you are not infringing on existing rights.

Conclusion

When dealing with a situation where a trademark is abandoned but the same mark is still under copyright, it is crucial to understand the differences in legal protections. Without the appropriate authorization, you could still be held liable for copyright infringement. Always seek professional legal advice to ensure your actions are compliant and within the bounds of the law.