Trademark Issues in Services Agreements

If you do logos, naming, and tag lines as part of your branding work, there are a few trademark issues you should address in your services agreement. This post outlines how to avoid some of the major pitfalls surrounding this type of creative work.

Logos, naming, and tag lines (we’ll call them “Marks” for this  post) are unique in that they can become trademarks – identifiers of the source and quality of goods or services. Trademarks are different than other types of design in that they can be innocently infringed. This means that if you create a Mark similar to someone else, even if you’ve never seen the other mark, using it may still constitute infringement.

Because of this, when you create Marks for clients, it is important that the client understand what they are and are not getting from you as a designer. Here are some things to keep in mind.

  • Ideally, your services agreement should state that you have no duty to investigate whether your work infringes the intellectual property rights of anyone else. You are a designer, not a clearance officer.
  • The next step is to state that you are not performing any trademark clearance services. This fits best in the SOW list of “excluded deliverables”. You aren’t a trademark lawyer so don’t let your Client believe they are getting trademark clearance searches from you.
  • Even if you do a Google search or a word search of the trademark office databases, we recommend that you do NOT include that in your list of services and deliverables. Stating this just creates misunderstood expectations with your Client. And in any case, these types of searches are not the same as a proper trademark clearance search.
  • When you present concepts for Marks to a client (before one is selected for development into the final), this is the time when the Client should take those Marks to its trademark lawyer to complete a trademark search.
  • When your Client signs off on the concept it wants developed into the final, consider having the sign-off documentation acknowledge that the selection is made with the understanding that trademark clearance is their responsibility.
  • If a client asks for a representation or warranty that your work does not infringe intellectual property rights, you should either exclude trademark from this representation or qualify it based on your knowledge without investigation. To do otherwise essentially makes.

Keep these tips in mind the next time you’ll be creating Marks as part of your project. Find more posts about issues in your services agreement in our ongoing series Anatomy of a Services Agreement.