Automotive and mobility manufacturers boast some of the most well-known brands in the world, but imitation isn’t a form of flattery for companies trying to protect their valuable marks. As the automotive and mobility market continues to grow, it is important for players to understand the tools available to effectively protect and defend their most recognized assets and the parameters, costs, and timelines associated with their actions.
While you may have seen counterfeit handbags, you’re less likely to have come across a counterfeit car. Auto manufacturers rarely face competitors that are directly infringing their brands on automobiles. More often, automotive brands experience infringement that misrepresents or suggests affiliation or sponsorship, including from former franchises or after-market parts or service providers.
Through nominative fair use, producers of after-market parts, for example, can convey essential features of their products, including the make and model of the cars with which they are compatible. However, an after-market parts producer using the logo of a company that its product may work interchangeably with on its packaging is generally unacceptable.
Tools You Can Use: Dilution and Trade Dress
Beyond protecting against the more traditional forms of trademark infringement, the Lanham Act’s tools extend to dilution and trade dress protection.
Trademark dilution is “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” 15 U.S.C.A. § 1125(c). As an enforcement tool, trademark dilution is out of reach for many brands, including niche brands. However, major industry players with trademarks “widely recognized by the generally consuming public” can include dilution in their arsenal of trademark enforcement tools when policing and protecting their most valuable assets.
Trade dress protects a product’s features that contribute to the overall commercial impression of the product, are nonfunctional, and serve to identify the product’s source. Product design elements can have secondary meaning, and thus potentially have protectable trade dress, when “in the minds of the public, the primary significance of [the trade dress] is to identify the source of the product rather than the product itself.” Certain Ink Markers and Packaging Thereof, Inv. No. 337-TA-552, Order No. 30, 2005 ITC LEXIS 750, at *29 (July 25, 2005).
In order to establish secondary meaning, a company must be able to demonstrate tremendous penetration in the minds of consumers. The automotive and mobility market has embraced the use of trade dress protection. Motor vehicle grilles and grille appliques are two examples of the elements of a car’s design that the US Patent and Trademark Office (USPTO) has found to have obtained secondary meaning in the minds of consumers.
PROTECTING USEFUL ARTICLES AFTER STAR ATHLETICA
The 2017 US Supreme Court decision in Star Athletica LLC v. Varsity Brands, Inc. made it easier to obtain copyright protection on aesthetic features of useful articles. As a result, designers and manufacturers of objects that are useful, such as car parts—which were once thought of as utilitarian—potentially have aesthetic aspects to them and can be registered.
Designers and manufacturers of useful objects may consider seeking copyrights because while a plaintiff would still need to prove infringement, the specter of statutory damages can create significant leverage in negotiations. Manufacturers of useful objects should also be aware of risks associated with potential copyright claims brought by the designer of a particular product or a copyright holder. Given the relatively low costs for copyright registration, even compared to those for obtaining a design patent, pursuing copyright registration instead of, or in addition to, a design patent for useful objects may be a more appealing option for some.
COPYRIGHTS AS BRAND PROTECTION: LOGOS
While trademark registration has long protected the rights of brand owners and their trademarks, service marks, slogans, and logos, more recently, there’s been a trend of seeking protection for logo marks as copyrighted works by registering them with the US Copyright Office. A standard copyright registration will protect against unauthorized third parties using the design, or a substantially similar design, but without the copyright owner bearing the burden of also establishing that the infringing use was in connection with related goods or services. Copyright registration of a logo allows the owner to challenge the use of copied logos by any unauthorized user, regardless of whether the use is in connection with a competitive business.
There are many benefits of registering a logo as a copyright.
- Registration entitles the copyright owner to seek statutory damages in the event of an infringement. This is without any restriction on rights that relate to the copyright owner’s business or scope of goods or services actually sold under the logo.
- A copyright registration can be used as the basis to request that online marketplaces remove infringing content that features the registered copyright. This can be particularly useful when the infringer is making use of a logo to market goods online that fall outside the scope of protection of the registered trademark rights in that logo.
- A valid copyright registration can be recorded with the US Customs and Border Patrol, empowering the government agency to seize at the border any goods being imported into the United States that bear that registered copyright. While a registered trademark can also be recorded with US Customs for the same purpose, a trademark registration is limited by design to protect only the goods and services set forth in the registration. A copyright does not have that same limitation.
The originality standards of any copyright must be met in order for a logo to be registered as a copyright. In other words, the logo must display at least a minimal amount of creative authorship. Oftentimes, however, logos are fairly simplistic in design. The more simplistic and limited number of elements depicted in a logo, the lower the likelihood of successfully registering it as a copyright. The more unique the shape, the more complex the coloring, and the more creative the combinations of colors and shapes and/or words and shapes, the greater the likelihood of a successful registration.
Having a trademark registration for the logo neither helps nor harms the likelihood of success of a copyright application for that logo. Protection as both is entirely possible, as is protection for only one or the other. Trademark registrability factors, such as acquiring distinctiveness, are not at all relevant at the Copyright Office. This means that while a logo could have been in use for 50 years, which would certainly give it a basis for an acquired distinctiveness claim at the US Patent and Trademark Office, that length of use is irrelevant to whether it also qualifies for copyright protection.
Timeline and Cost
Assuming a logo has sufficient complexity and originality, the timing for registration of a copyright is currently between three and four months. Compare that to the timing for obtaining a trademark registration in the United States, which often takes 12 to 18 months or longer. A quicker path to registration means you have a tool in your toolbox to go after online infringement through takedown notices and importation of counterfeit goods though US Customs nearly a year before you’d have that same option with a trademark registration. In addition, the total cost of applying for and registering a copyright usually costs anywhere from $3,000 to $4,000, if the Copyright Office does not raise any significant objections to the registration.
If your logo has sufficient originality and complexity, seeking protection for it as a copyright as well as a trademark could be well worth the investment and really assist you with your enforcement efforts.
For more on this topic, check out our Automotive Hour presentation, Trademark and Copyright Considerations in the Automotive and Mobility Space.