Regard the LOGO
I probably should have made the point more clear early on. I assumed the logo was more complex than simple since you needed a graphic designer.
I do not know what your logo looks like but please note that not all Logos can be protected by copyright.
In general, "works of art" or "pictorial, graphic or sculptural work" must embody some creative authorship.
Courts have held that if one seeks to register the logo (item) as a "work of art" or "pictorial, graphic or sculptural work, then the work must embody some creative authorship in its delineation or form." (John Muller v. New York Arrows)
But may logos qualify for both trademark and copyright protection. The key factor is whether or not your logo embodies the minimal level of creative authorship in its delineation or form.
For example: the Nike "Swoosh" would not qualify for copyright protection.
The more creative authorship (i.e. complex) embodied in the logo the better.
A logo that uses various elements in the public domain that are "selected, coordinated, and arranged in such a way as to render the work original" is one example where a LOGO is eligible for copyright protection (see Bouchat v Baltimore Ravens, Inc., 241 F.3d 350 (4th Cir 2001).
Examples: The "Starbucks Coffee" Logo, "Hot Wheels" Logo, and "Power Rangers" Logo are copyrighted.
Note that the Starbucks LOGO has the words "Starbucks Coffee" incorporated in the LOGO but copyright would not prevent another from using the words "Starbuck Coffee" - Trademark would be used to protect the words "Starbuck Coffee" (or more likely just "Starbuck").
Original logos, the associated art work, photographs ON product LABELS (with or without text) may be protected by copyright also. If your dog biscuits packing has a nice design that uses your logo you might want to register the copyright in such label design as well.
And, in some cases, the textual material in a LABEL may be protected by copyright.
But if you wish to protect the "text" of your LOGO, use trademark if possible.
It is likely the text part of the LOGO is not protected by copyright (almost a certainty). And you have no trademark in the text (at this point).
Further, the text may not even be eligible for trademark protection.
For example: you would not be able to get a trademark on the term: "Dog Biscuits" for a dog food product; Too descriptive.
If your LOGO is a circular image, for example, with a picture of a dog's head in the middle, the dog looks happy with mouth wide open and tongue hanging out, and the text: "World's Best Dog Biscuits" is written along the outer perimeter of the logo. (Just making this up I have no idea what your logo looks like).
The logo would likely be eligible for copyright protection but the text would not be.
Further, the text would not be protectable by Trademark - too descriptive.
If, however, the text were: "Happy Puppies" around the outside of the LOGO, that text would still not be eligible for copyright but one could get a trademark (as
long as someone else has not beat you to the name).
- You ask:
- The LLC and logo/trademark do share a name, so what is it exactly that I need to be concerned about here? Is it simply that he may continue using the name in the logo and parade as the legitimate company?
Well, yes, such could be a little problem, but the extent of the problem, if any, depends several factors.
If you used the logo before the LLC was formed, and the text of the logo is eligible for trademark, then you are in good shape. You could make him stop using the name if he became a problem.
If the LLC, with the "name" was formed before you used the LOGO with the "name" in interstate commerce, then you can still register the "name" but you would not be able to make him stop using the name (for his company name); although you may be able to limit his market and use of the mark. Very fact dependent.
- You state:
- On the advice of another of your colleagues on this website, I amended to remove myself from the original LLC and started my own LLC in a different state with a similar name to the logo (and thus a similar name to the original LLC). Is that a problem? I
Well, such is not necessarily a problem. The best case would be for the LLC to dissolve and go away but I suspect it takes all members of the LLC to dissolve the LLC and if Mr. X would not agree to the dissolution that option may have not been available.
The next best thing is to do exactly what you have done.
- You State
- feel very confident about a) the designer's rights to the image/logo and b) the partner's lack of capacity to actually get the company up and running on his own. At this point, beyond protecting the logo, I want to know that I am within my rights to be independent and start another similar company elsewhere (by myself in a new state).
OK, based on the facts above you can do the following:
(1) There are no written agreements between the parties you have mentioned and certainly no non-compete type of agreements. Thus, you can clearly end all involvement with the previous LLC and start your own LLC; No problem here.
(2) You can obtain a complete ASSIGNMENT for the IP in the logo from the graphic designer and then register for copyright protection for the LOGO (if it qualifies);
(3) You can file a trademark application to protect the text ("name") on the logo if
such text is eligible for trademark protection. One can always file a trademark application and try, but the USPTO will not approve a trademark for a term such as "dog biscuit" for products such as dog food or dog biscuits, for example.
(4) Once you have your trademark and registered copyrights, take a wait and see approach for a little while. See if Mr. X makes a go of the business and see if your business makes it. I sure hope it does but one never knows. The issues could resolve themselves. If both you and Mr. X make it and Mr. X becomes a problem, then you start more aggressively protecting your IP.
- You State:
- I have registered a PO Box and a new LLC in the state of MD (the original was in FL) with a similar name to the original, and will be conducting all of my business under this new LLC. Will this be a problem?
- You State
- The other thing that Mr. X seems to think is that he will be entitled to a portion of my profits in the future, even though I've served him with ample notification of my leaving the LLC and starting an independent company. Am I safe in the future? Is my new company safe from him?
Mr. X is making an absurd proposition if he contends he has rights in your new company or future profits. Based on what you have told me I cannot even image a legal principle that would give Mr. X rights to a portion of your profits derived from your new company.
- You state:
- And is it a problem that the new LLC has a similar name to the old one?
Lots of small companies have similar names. Since the original company was a startup with no customers, and you are clearly not opening the new LLC to defraud people (who would you defraud? the LLC had no creditor or customers) and there was little to no good will in the original LLC name, I see no problem.