Guest Blogger: Kim Minichiello- Trademarks, how do they affect artists

"Anticipation" original watercolor by Carrie Waller

Today I have a guest blogger Kim Minichiello.  Kim came to my rescue and explained trademark issues to me after I had a situation occur with a local organization.  I found the information to be so important that I asked her to do a series of blog posts about trademarks and copyrights.  

To see Kim's work visit her blog and website

Recently Carrie had a situation with an organization not accepting a painting of hers into their show because the subject matter was Ball canning jars, and they were concerned about an infringement of trademark.  I can fully understand an art organization, and we as artists, wanting to protect our rights be it with trademarks or copyrights. The decision not to accept Carrie’s painting was based on having incorrect knowledge of trademark infringement.  I posted a comment on Carrie’s blog and we have been conversing about this issue on Facebook in the past few days. Carrie asked me if I would do a guest post regarding trademark and copyright, and I told her I would be happy to!

I’m not an attorney, I’m an artist, and I don’t profess to be an expert on trademarks and copyrights, but I do have some experience and knowledge on the subject matter.  I co- founded a company a few years ago creating digital art for the art licensing market.  Some of the designs that I created were to be mass-produced, utilizing vintage images so, I wanted to be sure that by using them I wouldn’t be infringing on anyone’s trademark or copyright.  At that time, I had an Intellectual Property Attorney, and the information I will be passing on is from my own research that was validated by my attorney and information she passed on to me.  There is also information on the US Government’s Trademark and Patent web site. http://www.uspto.gov and the United States Copyright Office web site, http://www.copyright.gov.

What is a trademark?

A “trademark” is any word, name, or symbol (logo), used by a manufacturer or merchant to identify goods or services, to distinguish them form those of others, and indicate their source.  Trademarks include the “brand” names of the goods, for example, BallTM canning jars, CokeTM and AppleTM.  The reason a company would want to trademark their name is to distinguish their goods and services from others.  The value of the trademark depends on the degree of recognition and goodwill associated with the mark by the buying public.  You would want your customers to recognize your name and mark to identify with what you sell, or a service you provide, as opposed to the goods and services of others, your competitors. 

Trademark law is the branch of law of unfair competition.  It would be unfair for someone else to pass off the same goods or services your company provides, in which you have spent time and money building up your brand to be recognized by the general public.  If a competitor that provides the same goods or service you do is using a similar name or logo, or even if the name sounds the same, there would be confusion between the two brands.  An example of this would be when the Beatles had a problem with Apple (computers) using the Apple name and logo to sell music.  The Beatles had previously trademarked Apple Corp. Ltd. and Apple Records and used an apple as a logo to sell music.  Therefore, they were claiming that Apple had infringed on their mark by using the name “Apple” and using an image of an apple to sell the same goods, music. (I’m happy they worked out an agreement, this was the reason the Beatles’ music wasn’t available on iTunes for a while.)

If a company doesn’t register their mark with the United States Government Patent and Trademark Office your mark can only be protected in the particular geographic region in which you do business, and you would have the burden of proving the extent of that area.  A mark with Federal Registration would extend your area of coverage to the whole country.  If you were to do business countrywide and want to establish your brand to sell certain goods, then it would be wise to Federally Register your mark.   Incidentally, when you see a “TM” next to a name or logo, the company is indicating that that name is trademarked, whether it’s registered with the United States Patent and Trademark Office or not.    If they follow through and Federally Register the mark, they can then use the “R” with the circle, ®, after the company name or logo.

How do trademarks affect me as an artist?  

Most artists use their names as their brand or logo.  Should an artist trademark their name?  This really isn’t necessary, unless you plan on being the next Andy Warhol.  If you are then it may be worth your time. (There are nine current trademark registrations for him for a wide variety of products.)  Also, if you were to pursue many licensing opportunities to have your art appear on a wide variety of products, like artists Mary Engelbreit, Laurel Burch, or Thomas Kinkade, then yes you should register your name.

Where it affected Carrie is when the organization she submitted her work to, to be juried in their show, thought they might be infringing on the Ball company’s trademark by displaying the work, or that Carrie had infringed on the mark by using the Ball jars in her artwork.  Neither case is an infringement of the mark.  Carrie would only be infringing on the Ball’s trademark, if she were to produce canning jars and use the same or very similar logo on the same or similar product as they manufacture.  The Ball trademark in Carrie’s piece is on the jar in her art.  There would be no confusion within the general public that Carrie is selling Ball jars.  She is selling her art with images of Ball Jars.  If the Ball Jar company wanted to use Carrie’s art to help sell their product, then they could license her image to do so, but that’s a whole other topic!

As an artist using a product like the Ball jar in your work, or in Chris Beck’s art, Peeps candy, they are using what is called “fair use” which allows an artist to use a trademarked company’s product in your own art which you can sell. Andy Warhol didn’t violate the Campbell Soup trademark or the Brillo Pad mark in his work either.  This isn’t an issue because Campbell makes and sells food, and Brillo makes soap pads, not original art or art prints.  When a company applies for a trademark they have to list the goods and or services they will be providing with that mark. The Ball Company does not list art or art prints in their goods and services with their registered mark. Therefore, there is no confusion amongst consumers and no infringement.

There is a situation where this could get a little gray.  Say the Ball company listed “mugs” as part of their goods and services registered under their mark, and Carrie were to mass produce and sell mugs with her image of the Ball jars on the mug.  The Ball Company at that point may have an issue with that, but it is still unlikely, there still would be no confusion between Carrie’s brand and what she sells and the Ball Company’s brand and what they sell.  Carrie would have to make and sell a lot of mugs and be making a substantial amount of money for it to be an issue.  If it did become an issue with Ball then they would simply ask Carrie to “cease and desist” selling mugs. 

The bottom line is Carrie is not infringing on Ball’s mark by painting their jars, and the art association would not be infringing on their trademark by accepting and displaying her work in their show. 

Between trademarks and copyrights, it is a copyright that affects artists more.  The next article I will do for Carrie will cover copyright. Stay tuned!