Beware of the Trademark!

I recently had the misfortune of working with a client who briefed us to design a logo incorporating their name and a specific image motif, and then, when challenged for trade-mark infringement by a competitor with an almost identical company name and image motif, tried to accuse us of copying their competitor's logo! The client was terminated immediately and given a full refund.

After almost a quarter century in this business you would imagine that we would know about the rules of trademark and copyright. We most certainly do, but getting into a mess with a client who has no clue about what the law says, is best avoided before you get mired in a messy legal situation. This Plog is a warning of unseen pitfalls, for those who think they may know it all.

Rule #1
Google a new client extensively, check out the industry, similar named companies and their logos.
Our experience : In spite of us doing this and mentioning that there was a similarly named company in another state, the client still said "It was no problem". It turned out to be a HUGE problem. Incredibly, I still don't believe they think it to actually be a problem, as evidenced by their name and logo up on the web today without any regard for their clear infringement on another company's name and logo. I should have used my years of experience in these matters and my better judgment and challenged it there and then. But as things often turn out, you tend to want to trust your client to have done at least some due diligence on their name and logo, especially if they have been using the name and logo design for some time, have a ™ sign on their existing logo and are doing business under this name openly in the marketplace.

Rule #2
Do a trademark check on any new logo that you are working on, before you place it anywhere in the public domain. Go to http://www.uspto.gov/trademarks  Even, as in this case, if the client insists on you placing it on the web at very short notice, and before it was ever finalized. Best to lose the client than misuse another registered trademark.

Rule #3
Rules concerning using the ™ and the ® symbols.
You MAY use the ™ sign on all logos if you want to show the public that you are claiming right to this design and that you may intend to register and retain this image and logo in the future. You do not have to have the logo registered with the USPTO in order to use it anywhere. It is however, recommended that you get a trademark attorney to register it for you, once you have decided that it's what you want to use long term, and you have satisfied yourself that it's not similar to any other logo out there - regardless of the nature of business. What you may NOT do, is use the ® symbol until the trademark is registered and protected with the USPTO. See here for the rules of these symbols http://www.uspto.gov/trademarks/basics/register.jsp

Rule #4
Get all instructions from a client IN WRITING, before, during and subsequent to the design process.
Clients often call you up and give you instructions on the phone. If this is impossible to avoid, send them an email confirming what they just instructed you to do and get them to acknowledge it immediately. We all work to stringent deadlines, and this discipline can sometimes get lost in the business of getting the job done. Taking instructions from a client to do something that may implicate you later is best to have in writing!

Rule #5
Have all clients sign a contract for all work upfront, before work commences.
In our case, we did have a signed contract with this client , but it always helps to have extra work not covered by the initial contract, added to it as you proceed, as extra work may become necessary during the project, that is not specifically mentioned in the initial contract.

Rule #6
If possible, do a business and personal credit check on new clients.
Alternatively, ask for some business references. Clients who speak and act like tycoons and say they are "running a multi- million $ company" sometimes aren't!

Rule #7
Do not give clients credit unless they have a long and sound relationship with you.
Get them to pay upfront for all work - a minimum of 50% deposit to get the work started. Especially if they are unknown and new to you. And even more so, if they are in a different city.

Rule # 8
Protect the copyright of all work you do - until it's paid for by the client.
No formal registration with the Copyright Office or other action is required to secure a copyright. Copyright is secured automatically when a work is fixed in a copy for the first time.
For works published on or after March 1, 1989, inclusion of a copyright notice is optional. Use of notice is recommended, however, because if the work is infringed, the defendant will not be able to claim that he is an "innocent infringer."  The copyright notice has three parts: the word "Copyright," or the letter C in a circle or the abbreviation "Copr."; the year of the first publication; and the name of the copyright owner. This copyright notice will ordinarily protect the work for a specified period of time.

The copyright owner cannot collect damages for copyright infringement merely because she placed a copyright notice on a work. Copyright registration is a prerequisite to bringing a lawsuit in federal court to protect owners' rights. Registering the work with the Copyright Office also makes it easier for people to find out who owns the work and where they can reach the owner to obtain permission to use it.

Hopefully this hands-on advice may protect you from falling prey to a clients' activities and instructions, who just doesn't share your sense of business responsibility or adherence to the law, as you do.