College athletes are finally able to profit from the commercial use of their own name, image, and likeness (NIL). Accordingly, many college athletes have had the opportunity to start businesses, sell merchandise, and run sports camps and clinics. These business ventures have led many college athletes to create brands and logos to represent those businesses. Creating a logo is an essential part of any business' effort in branding. Branding is one of the greatest opportunities that college athletes have this new NIL era. Therefore, it is essential that college athletes understand the necessary steps to be taken to protect their brands.
It is also important that college athletes take the necessary steps to protect their brands. When seeking to create a logo, there are a few things that college athletes need to know. The first thing that college athletes need to know is that logos are eligible for both trademark and copyright protection. The second thing is that there are several steps that must be taken to ensure that a logo receives proper trademark and copyright protection.
1. Logos May be Eligible for Both Trademark and Copyright Protection
Logos are unique business assets that can qualify for protection from the United States Patent and Trademark Office (USPTO). Business owners who have logos should seek to obtain federal trademark protection by submitting an application to the USPTO. Trademarks are any word, name, symbol, device, slogan package design, or combination of these that identifies a specific product and distinguishes it from others in the marketplace. College athletes have created logos to do just that, distinguish their products and services from others in the marketplace. There are many benefits to having your logo registered as a federal trademark. Accordingly, there are many reasons to apply for federal trademark protection.
However, prior to submitting an application there are important steps that must be taken. One of those steps is to conduct a thorough trademark search for the logo in an effort to decrease the likelihood that the trademark application will be denied. One of the most common reasons that the USPTO denies trademark applications is because they pose a likelihood of confusion with a previously registered trademark. Conducting a thorough trademark search can help eliminate this risk. Therefore, prior to submitting a trademark application it is imperative to conduct a thorough trademark search.
While it is not required, it is advisable to seek the assistance of a trademark attorney to assist with the trademark search and application process. An attorney can assist with ensuring that the trademark search is broad and thorough. An attorney can also explain the trademark application and the application process. For example, an attorney can explain that seeking to register a logo in color instead of black and white will only provide trademark protection for the logo in the specified colors. Another area where an attorney can assist when applying for a trademark is by explaining the different classes of goods and services one can apply for a trademark in. Accordingly, it is advisable to seek the assistance of an attorney.
In addition to being eligible for trademark protection, logos are also afforded copyright protection. Copyright protection is afforded to original works of authorship that are fixed in a tangible medium of expression. This means that copyright protection is afforded to original works that are placed in a medium where it can be perceived. Unlike trademark protection, copyright protection is granted automatically. Once the work is created, it is automatically afforded copyright protection without the need to apply for protection with the United States Copyright Office. While there are many benefits to registering a work with the United States Copyright Office, it is not necessary to receive copyright protection.
The rights afforded with copyright protection are held by the author of the work. Therefore, if a college athlete has a logo designer create a logo for them the designer will be the owner of the logo unless there is an agreement transferring the rights over to the athlete. There are two common ways transfer copyright rights to another person. The first is by executing a work made-for-hire agreement and the second is by executing a copyright assignment agreement.
2. Effectively Transferring Copyright Rights
Work Made For Hire
A copyrightable work is made-for-hire in two situations. The first is when the work is created by an employee as part of the employee's regular duties. The second is when a certain type of work is created as a result of an express written agreement between the creator (independent contractor) and the party specially ordering or commissioning the work. To qualify as a work-made-for-hire in the second category, the specially commissioned work must be for use that fits into one of the following categories: a contribution to a collective work, as part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instruction text, as a test, as answer material for a test, or as an atlas. When a work is created as a work made-for-hire, the hiring or commissioning party is the copyright owner, not the person who did the work.
A copyright assignment agreement allows the creator/author of the work to transfer their legal ownership in the work over to the person who solicited the work. With a copyright assignment, the creator of the work does own the copyright to the work and then transfers those ownership rights via the copyright transfer assignment agreement. Accordingly, if a college athlete hires someone to create their logo the athletes should be sure to execute a copyright assignment. Moreover, it is important for the athlete to ensure that they are the copyright owner. It is important to do this even before seeking federal trademark protection.
For more information on trademarks for college athletes purchase my "A College Athlete's Guide to Trademarks." Also, for more on college athletes' name, image, and likeness rights follow me on Twitter @esquire_coach and on Instagram and TikTok @the_esquirecoach. To receive updates from The Esquire Coach Blog directly to your email please subscribe below.