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Matthew D Asbell

Matthew Asbell’s Answers

3 total

  • Can I and is it worth it to copyright a metal jewelry design?

    I am creating a line of jewelry that has a similar symbol on it produced in various sizes on different pieces of jewelry. Is it possible to copyright the symbol so that it cannot be reproduced by others on jewelry or anything else for that matter....

    Matthew’s Answer

    Jewelry is a product that can encompass multiple types of intellectual property rights, but these rights may vary depending on the particular countries in which protection is sought. In the U.S., jewelry or portions thereof may be entitled to copyright, trademark, trade dress, and design patent protection.

    Copyright may protect the expressive/artistic component of the jewelry. But in the U.S., one does not need to register a copyright to be entitled to copyright protection. Registration entitles the owner to certain added benefits like possibly avoiding the need to show that the owner suffered financial losses as a result of another's unauthorized copying and being able to require the infringer to pay the owner's attorney's fees. It is relatively simple and inexpensive to obtain a copyright registration. See www.copyright.gov. The symbol, apart from its use on jewelry, may also be protectable under copyright as well.

    As my colleague advised, it may be possible to obtain a trademark registration for the two or three dimensional symbol used on the jewelry because the symbol may be a way for consumers to identify the designer/owner as the source of the product. If one intends to use the symbol on other types of products, such as clothing, it may serve as a "source identifier" for those goods as well. In the U.S., one can acquire trademark rights through a federal registration, a state registration, and/or just using the symbol as a trademark for goods/services. A single federal trademark application can cover multiple types/classes of goods.

    Also, the entire piece of jewelry or portions thereof may be protectable as trade dress (as a three-dimensional trademark) and/or via a design patent. In the same way that a brand name or logo may help consumers to distinguish the products from those of other manufacturers, the product or a portion thereof may itself be distinctive and protectable as a three dimensional mark. A design patent protects a novel, non-obvious ornamental design, and once obtained may also support registration as a three-dimensional trademark.

    The above is intended purely as legal information and not as legal advice, and does not necessarily represent the views of the firm at which I work.

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  • Does a trademark include variations of the trademark?

    Let's say a person has the trademark "got Computers?", does that imply that the person has the right to the phrase "got Computer Programmers?" or similar variations? Would that mean that me selling an item with that phrase "got Computer Programmer...

    Matthew’s Answer

    I agree with my colleagues, but wish to add that you should inquire with your IP attorney about whether you are actually using the phrase as a trademark. Simply putting something on the front of a t-shirt may not always be considered sufficient to serve as a source-identifier for consumers.

    Disclaimer: The above statement is not intended as legal advice and is not the basis of an attorney-client relationship.

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  • If I get a trademark only in South Africa does this mean anyone else can register it in a different country?

    I want to have a trademark primarily in South Africa, but also in the UK, USA, CA and AU. Can I just register it in South Africa and still be covered or at least stake a claim in UK, USA, AU and CA?

    Matthew’s Answer

    While I do not disagree with the other answers posted thus far, what you should do may depend on the reasons you feel you need to be covered in the other countries you listed. If you're only interested in the ability to stake a claim, you may be able to do so without trying to obtain trademark registrations (in some common law jurisdictions, you get some limited rights based on your commercial use of the mark even in the absence of a registration). If you don't expect to actually use the mark in those other countries in the short term, you may want to seek registration based on your application/registration in South Africa, if that is where your business is located. The International Registration process available under the Madrid System can save some money in the short run, but has some limitations. So, the lawyerly answer as usual is "it depends".

    Disclaimer: This answer is not intended as legal advice and no attorney-client relationship is created by this communication.

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