Naming issue

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Tobias Kvant's picture
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Joined: 15 Feb 2004 - 3:49am
Naming issue
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Can a font have the same name as another registered typeface, if a vendor abbreviation or something like that, is applied to the name?

James Montalbano's picture
Joined: 18 Jun 2003 - 11:00am
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If the typeface in question has had its name registered as a Trademark, tha answer to your question is No. A vendor abbreviation will not make it unique enough to be different.

*

Tobias Kvant's picture
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Joined: 15 Feb 2004 - 3:49am
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Thought so.. thanks!
By the way, what´s the legal difference between a Trademark (™) and a registered Trademark (®) typeface name? Can the former be used by others?

Jason Pagura's picture
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Joined: 10 Sep 2006 - 6:19pm
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From USPTO.gov:

What is a trademark or service mark?

* A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
* A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service marks.

Do Trademarks, Copyrights and Patents protect the same things?

No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention. For copyright information, go to http://lcweb.loc.gov/copyright/. For patent information, go to http://www.uspto.gov/main/patents.htm.

Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,

* constructive notice to the public of the registrant's claim of ownership of the mark;
* a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
* the ability to bring an action concerning the mark in federal court;
* the use of the U.S registration as a basis to obtain registration in foreign countries; and
* the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Tobias Kvant's picture
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Joined: 15 Feb 2004 - 3:49am
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Thanks Cuttlefish, seems that two typefaces can have the same name if they´re not registered then

Jason Pagura's picture
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Joined: 10 Sep 2006 - 6:19pm
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They "can" have the same names if the trademark is unregistered as far as it being legally permissible, but it is still not advisable.

James Montalbano's picture
Joined: 18 Jun 2003 - 11:00am
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TM is a legally meaningless mark. Only the circle R has any legal significance. And it can only be used in conjunction with a registered trademark.

Tobias Kvant's picture
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Joined: 15 Feb 2004 - 3:49am
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thanks, good to know!

David Yoon's picture
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Joined: 17 Apr 2006 - 7:58pm
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The TM mark isn't legally meaningless; it's the trademark law equivalent of p*ssing on a fire hydrant. It amounts to a generalized statement to the world that you are claiming the name as a trademark. If there is a dispute, a registered mark is simpler to defend, but both kinds are in principle legally protected.

Tobias Kvant's picture
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Joined: 15 Feb 2004 - 3:49am
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Hm, seems to be different opinions on this matter..
It also seem to matter whether the unregistered trademark has been used a lot by the holder, so that it´s been "worked in". And it´s up to the holder to proove it in court.

Jason Pagura's picture
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Joined: 10 Sep 2006 - 6:19pm
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Yes, trademarks are maintained by the "use it or lose it" model, especially when unregistered, or when left unprotected to become part of common parlance. Trademark abandonment is something that comes up often in disputes.

Village's picture
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Joined: 25 Jun 2006 - 8:52pm
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Toby, if you have done your due dilligence and found an existing typeface using the name you fancy, you should probably "do the right thing" and pick another name. BUT... If the typeface name in question exists as some kind of dafont.com rip-off, you're probably safe to use it for your "real" typeface.

In all things, the golden rule is the best one to follow: Do unto others as you would like others to do unto you. So. Would you like someone else to come along and use your typeface names for their typefaces?

My 2 cents.

Nick Shinn's picture
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Joined: 8 Jul 2003 - 11:00am
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The question of how much diligence is due is moot.

I had been planning to name a typeface "Austin", after the 19th century type designer.
I have discovered by chance (typecentric surfing serendipity) that Christian Schwartz has already named a face Austin, but he has not released it, or, AFAIK, publicized it other than on a single web page, and you won't find it by Googling. Also, Berthold has the name Austin registered, although they have not released anything by that name.

So I thought, maybe I can call it Shinn Austin, in the manner of Adobe Garamond, Stempel Garamond, ITC Garamond etc.

However, to avoid hassle, I'll probably steer clear of Austin.

Village's picture
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Joined: 25 Jun 2006 - 8:52pm
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Actually, Nick, the Austin typeface you refer to was designed by your fellow Brit Paul Barnes. Some information about the type is at:
http://www.christianschwartz.com/austin.shtml

Paul is an immensely talented and prodigious type designer, but the bulk of his work has been created bespoke for British clients, including many magazines. Paul has recently been working with the equally-talented and -prodigious Christian Schwartz, including type systems for The Guardian (England), Público (Portugal), and another set of British historical type, "Brunel", which was commissioned by Condé-Nast's just-launched Portfolio magazine. This collaborative work has been more widely covered in both the mainstream and design press, for good reason.

Nick Shinn's picture
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Joined: 8 Jul 2003 - 11:00am
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Sorry chester, I remembered seeing it at Christian's site, but apparently not the fine print!

Choz Cunningham's picture
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Joined: 27 Jun 2006 - 1:30pm
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The real answer is ask your foundry's lawyer.

Barring that, a cost-effective way to get safe results is to change the name. Sorry. Same is true with games, movies, and other creative mass media. Faces may or may not be considered c.m.m., but when it comes to naming them, things are similar enough.

Simon Daniels's picture
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Joined: 11 Apr 2002 - 6:37pm
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>However, to avoid hassle, I’ll probably steer clear of Austin.

To be safe I'd avoid Texas completely.

Tobias Kvant's picture
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Joined: 15 Feb 2004 - 3:49am
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James Montalbano: If the typeface in question has had its name registered as a Trademark, tha answer to your question is No. A vendor abbreviation will not make it unique enough to be different.

and

Nick Shinn: So I thought, maybe I can call it Shinn Austin, in the manner of Adobe Garamond, Stempel Garamond, ITC Garamond etc

What´s up with this? There´s lots of major foundry faces sharing names, only differentiated by the foundry name..

Simon Daniels's picture
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Joined: 11 Apr 2002 - 6:37pm
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>What´s up with this? There´s lots of major foundry faces sharing names, only differentiated by the foundry name..

Garamond is a good example of a name that's in the public domain. It's also a name that has a fairly well understood meaning with respect to font appearance and style. So naming your font "Garamond Toby" would be fine, but "Helvetica Toby" or "Interstate Toby" would not.

Jess Latham's picture
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Joined: 23 Jan 2004 - 6:11pm
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"Also, Berthold has the name Austin registered, although they have not released anything by that name."

I thought the name could only be registered after using the tm symbol for a certain amount of time with no opposition.

Jess Latham
www.bvfonts.com

Jason Pagura's picture
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Joined: 10 Sep 2006 - 6:19pm
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It's not so much that you must use the "™" for a given period of time, but rather that you can use the "™" to stake your claim to a trademark until your registration is approved, and only then are you allowed use the "®". The length of time depends on however long it takes for the USPTO to process and approve the trademark registration application.

Russ McMullin's picture
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Joined: 12 Apr 2007 - 11:02pm
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Let's say for example, you do a Google search and can't find a particular name used for a font. How can you tell if someone is already using it, and has it registered? Also, how can you tell if the name is in the public domain?

Jason Pagura's picture
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Joined: 10 Sep 2006 - 6:19pm
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How can you tell if someone is already using it, and has it registered? Also, how can you tell if the name is in the public domain?

Search it at the USPTO on TESS (for United States pending, registered and dead federal trademarks)

http://tess2.uspto.gov/bin/gate.exe?f=tess&state=rj48fh.1.1

For example, "Helvetica" turns up four distinct registrations, including a pending one for financial services.

Google isn't especially good for this kind of search