A reader asked this question in the comment thread of an old post:

“I have a client with a food product and they asked me to copy the logo of a well known brand. When I mentioned trademark infringement the client said they researched the issue, ‘We made sure their trademark is only for alcohol products.’

“I still think the client will get sued because they want their customers to recognise the brand, and they’ll use the design to help push sales.

“What’s your take?”

Registered trademark symbol

Trademarks are registered within various categories, with each category covering different goods and services, so similar designs can still be trademarked if the companies aren’t competitors. But I’m no expert on IP law, so it’s best to get advice from a trademark lawyer.

Registration aside, you don’t become a designer to copy other people’s work.

You’re better than that.

And if someone asks you to copy something, there’s really no need for a designer.

Here are a few trademark resources:

From the archives: Trademark symbols, what’s the point?

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February 11, 2014

Comments

A logo is usually not just protected as a registered trademark, the artwork itself is subject to copyright. Here in Europe you do not even have to register artwork, it is copyright protected the moment it is created.

So in this case, while it might not be a trademark problem, copying the logo would be a blatant copyright infringement. Statutory damages for that go up to $150 000 in the US if the copyright holder decides to sue.

However, if the original company had bought their logo on a stock agency website (it does happen, I think the Twitter logo was originally bought on iStock for instance if I remember correctly), you could just license the same image for your own company. If there is no trademark protection on the logo in your category, it would probably not be a problem. But I’m no expert, so if you plan on doing something like that, make sure to consult an IP lawyer.

Copying anything in its entirety should be off-limits, whether it’s design, writing, or any form of intellectual property. I’d say to focus on creating original work.

And, you want to protect yourself from lawsuits, or associating with clients who could potentially be sued. You could research it yourself, rather than rely on someone else who said they did it, which probably means they found a blog that said it’s ok. Even if there’s no law against it, the fact that you copied work would be embarrassing, unethical, and could hurt you professionally.

Firstly, as David says, you don’t become a designer to copy other people’s work.

It’s been a while since I left law school, so my knowledge of IP law is a bit rusty, but I don’t think a few fundamentals have changed. The company could be sued for infringement if the design and products are sufficiently similar and the mark is registered. Something a designer needs to be aware of is that such an action could lead to vicarious liability, which isn’t a position you want to find yourself in.

As Miles says, there is also the option to pursue an action in civil law through the tort of passing off, designed to protect business reputation.

The bottom line is: don’t copy.

Take a look at http://www.logothief.com. There you will find countless examples of designers who felt that borrowing or taking another mark was a-ok. This website brings great light into a dark secret of many hack designers or companies that don’t understand what it means to be original from the start.

The short answer: don’t ever copy.

Even if it’s not a direct infringement, a company can still sue for diluting their brand. They don’t even have to win the suit. If they’re better established in size and finances, they can still bankrupt you and your client in the process.

That compounded with your integrity as designer should be incentive enough to not copy.

One of my biggest clients is a food importing & distributing co in California. They often ask me to “copy” a pack/label/logo design when a new product is put on the market, and this is a very common strategy to get consumer attention. But,”copy” in those cases means “make something similar” and NEVER COPY IDENTICAL. There you have to be a sharp designer to maybe use colors, shapes, and at the same time keep your own identity. Also, there are laws that protect a logo: the T means “tradermark registered”, this is the name, and the R means “name and logo registered”, so tell your client that they can’t go against the law.

To build on what others have said already, in the UK and EU, if a name or logo is registered as a trade mark, the owner will have protection against someone else using the same or similar name/logo, in relation to the same or similar goods and services that the registration covers. So in this example, food products and alcohol may be sufficiently similar for there to be a problem, particularly if the marks in question (i.e. the names/logos) are very close. There’s a kind of sliding scale – the more similar the marks are, the less similar the goods/services have to be, and vice versa. The key question is whether consumers are likely to be confused between the origin of goods sold under one trade and those of the other. Some brands (e.g. own-label brands) seel both alcohol and food products, so there’s a chance that they might be confused.

There’s added risks too if the original name/logo is famous or has a reputation, as then the degree of protection given by their trade mark registration is broadened to cover things that are not similar, provided they can demonstrate dilution, tarnishment or free-riding of their own brand.

Plus, as Miles rightly says, there is passing off/unregistered trade mark protection to consider, plus other quasi-trade mark rights, such unfair competition and comparative advertising provisions to bear in mind.

So it can be a bit of a minefield. Surely much better for a designer to flex his or her creative muscles and come up with something original?

P.s. in the UK, TM means that a name or logo is considered as someone’s trademark but is not necessarily registered, whereas (R) denotes a registered trade mark, but practice regarding these trade mark markings varies from country to country.

“There’s a kind of sliding scale – the more similar the marks are, the less similar the goods/services have to be, and vice versa.”

That’s something I wondered about, Andy. Cheers.

Thanks for the links, Miles and Stephen — I saw LogoThief on the DuetsBlog, too (a nice resource for trademark articles).

Were you a lawyer, Richard? Sorry if you’ve mentioned that. (I like your website update, by the way.)

Cheers, David.

I wasn’t a lawyer, but my bachelor’s and master’s degrees are in law and taught it for a short time before moving to Japan (mainly public international law, but also a bit of IP law).

In university they teach us never to copy even a single line from someone else’s artwork. I kind of disagree because copying is exactly what can make a great artist. A lot of great artists have started their carriers copying someone else.

Sometimes it is inevitable and clients want their logo to be a copy of a well known brand. Your job as a designer is to kindly explain to the client that this is not how it works. If the client continues to insist, you have to explain to him that you can create something with a similar look and feel, then just copy the whole thing because he’ll be sued by law.

Hi guys.
What I was hoping to get information on was how do other Designers add in the trademark search into their logo design process. After you have finalised concepts do you then conduct your search on the Trademark registration sites? How long does it usually take? And how do you bill the client for this?

Throughout my undergrad and MA in graphic design this was not something that was covered, the design, client relationship and all processes involved.

I had a similar question just yesterday, perhaps you will find this story about “stealing” a woolly mammoth logo helpful.

http://howconceptual.com/how-does-my-logo-need-to-differ-from-existing-stylized-trademark/

Do you know the quote: “Great artists don’t copy. They steal.” ?? Well, I think that is alway great advice, even though it is not legal advice.

In addition to “passing off” there may be other potential trademark problems, for example, dilution (if the mark is famous). There could be other state law problems, like, interference with business relationships.

If you are a designer, you should probably refer the client to their own lawyer, rather than providing advice directly. If the client wants you to do something that you question. You could for a copy of the opinion from the lawyer that clears your work. Also, you could ask for contactual indemnification. Additionally, you or your client may have insurance coverage that may help in your defense. The various things that could apply to your situation are quiet numerous.

I hope that helps.

Best Regards,
Andrew Lahser, Patent Attorney
Fountain Hills, AZ

PS: My answer should not be taken as legal advice for your situation.

I’m in a situation (in the US) where I’ve designed a completely original logo, but there are a few existing logos that are a bit similar — that I was unaware of at the time — though none in an industry even remotely similar to the client’s. However, the client has international reach, and therefore more potential trademark conflicts, and has asked us to remove all trademark indemnification language (protecting us) from our contract, and has asked my company to assure them they will have no trademark infringement problems with the design if they go forward with it. We’re on an extremely tight deadline set by the client, where the logo needs to be rolled out in a few weeks at a trade show.

We’ve acted in good faith, designing from scratch, and making our best efforts to be original in our design. This is the first time this has come up with any client. We don’t want to alienate our client, or leave them liable to any trademark problems, but we think that getting the design approved by a patent lawyer ought to be the client’s responsibility, especially given the extremely short deadline. Is it reasonable for a client to expect a design agency to totally indemnify them from potential trademark issues? What can we reasonably do to protect ourselves and our client and not miss our deadline?

Hi Tracy

I am a UK-based trade mark lawyer and I have to suggest that you take advice from a US trademark attorney about this issue.

There seems to be both specific US trademark and US contract law issues to consider, and you won’t be able to get ‘proper’ legal advice that you can rely upon on a forum like this. An attorney should be able to respond pretty quickly, at least with some brief initial comments.

And, if necessary, trademark clearance searches (i.e. searches to check that a design/logo/name etc. is safe for your client to use) can be turned around in a handful of days, though at a cost premium.

Andy

Thanks for your response, Andy. I realize I can’t get actual legal advice here. I was wondering what people on this forum might have by way of similar experience. The dilemma with the deadline is that if an attorney warns against the design, we will lose too much time to be able to have materials ready for the trade show. I suppose there is no help for it but to hope it gets approved.

We’re waiting on a response from our corporate lawyer on how to proceed, but we’re unsure whether it ought to be our responsibility or the client’s to hire a trademark lawyer to research it and give approval (or not). Maybe it wouldn’t hurt to have both our lawyers look into it, though more expensive of course.

Cheers,
Tracy

I agree with Andy King. Your specific situation is likely beyond general legal principles or industry customs.

As I read your comments, it could also be true that you have (already) alienated your client somehow. Perhaps the client was aware of one or more of the existing logos, even though you were not. If the client believes you are copying; then the client’s actions may make more sense.

Andrew

Hi Andrew,

I don’t think we’ve alienated them, at least so far, since we’ve had a good working relationship, and there hasn’t been any actual friction. They certainly haven’t implied they think we copied anything. I think they’d simply prefer to keep all liability with the vendor (us), and are being risk-averse. I’m fairly new to working with such a large client, so I’m not aware of whether their approach is typical or not.

Tracy

Hi Tracy, I’ve never had a client ask for the terms to be changed after work has started. If they did I’d politely say that it’s against studio policy. You can see my terms here in case they help, and there’s a bit about indemnity toward the bottom.

Thanks for the replies, Andrew, Andy.

David, thank you, we may find ourselves having to do so. I’ll sign off here and wait to see what my lawyer says. Thanks so much Andrew and Andy as well.

Regardless of the trademark issue, copying a logo have implications that goes way beyond the area of the market in which an specific brand operates, especially if this is well known and fully recognisable.
Some people mistakenly believe that this is the shortest way to top of mind awareness for their brand. A misconception that is as unethical and ignorant as the request to copy a logo.
As designers we always come across with ignorant clients who make this kind of requests not only disrespecting us as professionals but also themselves and their company or “brand” to be.

Stay away from ignorant clients like this ones and if you can’t afford to dismiss the client you should still make a stand for your professionalism and ethics.

In every design contract it should be a policy that states that in case of a request of “copy” or “plagiarism” from the client the project in question will have an increment of 100% or 200% over the agreed fee and the design will not be credited to the designer but to the client.

Tracy:

Don’t ever let a client pressure you into eliminating trademark indemnification language from your contract. It’s simply not a wise business practice. All legal searches are the clients responsibility, not the designers.

I assume that you are self-employed. If so, I hope that you are incorporated. That will give you another layer of legal protection. It’s well worth the extra expense, and paperwork.

Hope I have helped you. Take care.

Norm

I have a question. I have a concept idea. The trademark I am considering has similar ones already in use but I think mine is:

a) in a different main use category to others
b) has no direct competitor in Europe
c) has same trademark as one in the United States, but the logo and use are totally different
d) concept is for the ‘common good’ of the general public
e) logo is unique compared to any of the similar word trademarks

On this basis do you think I can get my own trademark in the UK? Also, will my solicitor need to write to any ‘competing’ trademark owners?

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