Naming Legalities + Serif/Sans Naming Divergence

hrant's picture

I'm wondering about using a name for a font that's already taken.
Twice! Once by Image Club, and then by Solotype. Just the fact that
there are in fact two of them already is encouraging (I mean legally)
and I know that even H&FJ have used names that were already out
there, but I'm wondering: what are the probable legal ramifications?
Practically speaking, is it only Berthold that one must avoid tangling
with like the plague?

And I'd like to bundle another question in here: What are your thoughts
concerning serif/sans font systems where each has a different name?

hhp

dan_reynolds's picture

If no one else has trademarked the name, you could use it. It would strengthen yor hand if you would try to trademark the name for yourself then, too. If you name your font after a name someone else had alrady trademarked, they could sue you for the earnings you make using their registered trademark. How's that?

hrant's picture

I thought they could mostly get me to stop using it, not
sue me for the money I've made from it up to that point! :-(
That's no good. So I assume people like Solotype and H&FJ
had checked the trademarks. How do I do that myself?

More questions:
1) If the previous one does not have a trademark, isn't
there something equivalent to "previous art" in copyright
whereby it's no longer possible to obtain a trademark on it?
2) When do trademarks expire?
3) If I do trademark it, what can I do about the pre-existing one?

hhp

dan_reynolds's picture

I am not a lawyer! My answers may not be acurate. Above and below is just what I think is correct…

>I thought they could mostly get me to stop using it, not
>sue me for the money I’ve made from it up to that point! :-(

Like every lawsuit, that would be up to a judge (and jury?) to decide. But they could try, and if they try, it might cost you. The trademark holder probably won't care about your font, just that you are generating income with their property.

>That’s no good. So I assume people like Solotype and H&FJ
>had checked the trademarks. How do I do that myself?

How do you know that? I don't know that. The best thing to do is ask. If you want to register a trademark, you should have a lawyer do research for you to see if the name is in fact trademark-able.

>More questions:
>1) If the previous one does not have a trademark, isn’t
>there something equivalent to “previous art” in copyright
>whereby it’s no longer possible to obtain a trademark on it?

Don't know. If no one has a trademark on the name, you can apply for one. If the others don't want you to have it, it is up to them to file an objection with the authorities during a certain application period.

In terms of copyright and design patents, those are not names, and are not things that fall under trademarks, which is waht I thought you were asking about. Protection for design copyrights and or patents differs depending on where you are. If I were you, I would ask the other other designers, rather than ask for legal advice. Solotype and H&FJ are just a phone call away, right?

>2) When do trademarks expire?

Never? ;-)
Copyright is good for life of the author (or company), plus 70 years. At least in the US, I believe. Whether TMs another matter are?

>3) If I do trademark it, what can I do about the pre-existing one?

See what I wrote above. Your trademark application can be contested for a certain period of time.

kegler's picture

many questions. never assume.
a few articles from one authority.
http://www.martinezgroup.com/articles.html

Scott D's picture

Sounds like this is a conversation you might want to have with an intellectual property lawyer. It's not something you want to get wrong. I've worked on a few logos and trademarks that required extensive research before publication, and unfortunately this can be expensive (think tens of thousands).

The name you have in mind would have to be pretty damned spectacular. It's often easier to simply come up with a new name. Hey, how about a typophile Name That Font contest? Winner gets a license?

As for sans/serif families with different names, I think that can work well. Would you consider FB's Stainless and Dispatch such an example?

hrant's picture

Dan, Richard, thanks.

> It’s often easier to simply come up with a new name.

I'm getting the feeling you're right. Especially since I've
collected dozens over the years that I consider great.

But then I wonder about Solotype and H&FJ...

> Would you consider FB’s Stainless and Dispatch such an example?

Tiffany, are you here? You like/use those a lot - what do you think?

hhp

aluminum's picture

How much do you pay your lawyer? Usually that's the only variable that's important when it comes to IP law. ;o)

Choz Cunningham's picture

I know a few of these, not a lawyer, yada yada, but I've been researching this a long time...

First, DA has the most correct answer.

Trademarks don't expire. But they only last as long as someone is using them, and trying to protect them. They may become genericized, and then anyone can use them, like "aspirin" in the U.S.

The basic concept of a trademark isn't at all like a copyright. A copy write says you made (or acquired) something creative and have the final say on reproduction. A trademark claims only that you have a product with a label and it is so intrinsically entwined with the product's value that others using that name might benefit from your reputation, via that label.

Keep in mind neither you, Solo or Image have to have registered the Trademark to get benefits from it, that just makes things easier in litigation.

If two parties are using a name to sell two different (unrelated) fonts at the same time, either one would have a poor claim that the name is linked in the markets mind to only their face. Especially if neither is stopping the other. (Unless they are pursuing different markets.) However, the same applies to you, as well, if there are already others using that name, unregistered, good luck getting a judge to give you real trademark power, even if the local PTO had taken your money and given you a certificate. Keep in mind, to maintain that Trademark, you will have to be a hawk on the butt of anyone using it, as well.

Others, feel free to correct this.
----

On the other half of the question, If you want a sans and serif with different names are they at least phonetically or thematically related? I have two projects in the cooker using that idea, a sans/serif pair and a text/display pair.

I also feel that if they are a "close pairing" they should have more similar names. If they share little more than metrics, then a weak link seems right.

Weren't Myriad/Minion were designed to compliment each other? Similar but subtle.

crossgrove's picture

"Weren’t Myriad/Minion were designed to compliment each other? Similar but subtle."

Not really. Myriad came later and was co-designed. I don't think they are that closely related; I would rather use, um, something else with Minion rather than Myriad. Myriad was originally a showpiece for Multiple Master technology, and was highly engineered to give smooth results across a wide range of width and weight. We just don't see many width variations of it any more.

hrant's picture

Choz, extremely helpful, thank you.
(BTW, if you were a lawyer, you wouldn't be helping...)

> They may become genericized

Can a label start out like that? The name in question happens to be the name
of a town in California. Does that preclude treating it as a trademark?

> are they at least phonetically or thematically related?

They both start with "Pa", and end in "a". :-)

The question in my mind is, would I not be notably
hurting sales by not simply using a "Sans" suffix?

To me Myriad and Minion are closely related basically through their blah-ness.

hhp

.00's picture

"How much do you pay your lawyer?"

A lot, and worth every penny.

I don't see how anyone can be in the type business and not have a lawyer advising on all of these matters

Not all names are trademark-able. Family names are difficult, but not impossible.

You can begin your search here... http://tess2.uspto.gov/

crossgrove's picture

"To me Myriad and Minion are closely related basically through their blah-ness."

I think that's accidental; they were designed to be very general and neutral but were not otherwise coordinated or matched together.

Not sure why a particular name is so attractive; do you think it will make a big difference in the sales or perception of the type? The sad fact is that since the digital boom, it's much much harder to get the name you want because so many are taken. You could re-spell the town name or make up a word that includes part of it (rhymes). It's not Paducah is it?

hrant's picture

> http://tess2.uspto.gov/

Great link! Thanks.
Funny mistake here though: http://tess2.uspto.gov/tmdb/dscm/dsc_28.htm#28 _
Huh, I never knew Armenian was actually Arabic... ;-)

> Not sure why a particular name is so attractive

Well, it's becoming less attractive my the minute...

hhp

Choz Cunningham's picture

The name in question happens to be the name
of a town in California. Does that preclude treating it as a trademark?

Nope. In principle, it would have to be a word that is generic to the consumers of the product it labels to never ever be trademarkable. Probably words like Typeface, Font, Alphabet and Letters. However, the way legal systems' gears mesh, the right IP lawyer could probably change even that.

Choz Cunningham's picture

Do they both start with a "Pa"? Otherwise, if I'm sleuthing right, it sounds like they should share a good bit, but not as much as if they both had the same syllable count.

Scott D's picture

Pasadena and Placentia? Hmm, now which one's the serif...

hrant's picture

Placenta?! Euwww, a grunge font for sure.

hhp

Scott D's picture

I can't believe you went there...

Truth is, I've always thought that was beautiful word. The organ is of course less attractive.

HaleyFiege's picture

Why don't you just add a number or something on the end of your font name? Then you aren't stepping on anyones toes, theres no confusion and you don't have to hire a lawyer.

Thomas Phinney's picture

Trademarking the name of a California town as a name for a typeface is certainly possible in some cases - Adobe did it with Montara.

Cheers,

T

hrant's picture

Spooky - mine involves a town about 5 miles from Montara!

hhp

Miss Tiffany's picture

I've only just read my name. What was the question?

Scott D's picture

I asked if FB’s Stainless and Dispatch represent an example of "serif/sans font systems where each has a different name."

Robert Trogman's picture

It seems that a font name if registered can be a trade mark or a service mark. The U.S. Congress considers the alphabet is in the same category as the wheel. The practice of assigning diffetent names to the same font was thoroughly explained by Hermann Zapf when he said that he was giving up after what happened to Palatino and its more than 23 names.
European laws are much better for the type designer and American font lawsuits are few and far between except Monotype vs. Linotype for Times Roman; ATF versus Lanston Monotype ended up with small royalties assessed. Software is protected under U.S. law.

Syndicate content Syndicate content