Setchell’s lawyer sent a cease and desist letter, and the company changed the logo within 30 days. He originally heard about the infringement from Kickcharge Creative, formerly Graphic D-Signs Inc. in Washington, New Jersey — the advertising agency he hired to create his company’s brand.

And, as it turns out, he’s not the only Kickcharge client who has experienced copyright infringement.

Matt Mauzy, president, Mauzy Heating, Air & Solar, San Diego, discovered his company’s truck wrap design being used by a contractor in Pennsylvania.

“Somebody that used to work for Kickcharge was driving down the road, saw the truck, and said, ‘Wait a minute, that’s a Mauzy wrap on another company’s truck,’” Mauzy said. “They informed me, and I made a phone call to the guy and told him to take a look at our website. He removed it and even sent me pictures of it being removed. He blamed his sign guy. I guess he had asked a sign shop to come up with a design for him. The guy showed him a design, and he said he loved it, not realizing the guy had ripped it off from us.”

Both Setchell and Mauzy said these two instances were the worst cases of trademark infringement to happen to their companies. However, Mauzy said there are constantly people who try to copy his business because of the type of marketing he does.

MISUNDERSTANDING TRADEMARK

Dan Antonelli, president, Kickcharge Creative, can’t really explain why HVAC businesses are infringing upon trademark protected brands but thinks people don’t understand the implications of what they are doing.

“I don’t know if they don’t care or if they think they just won’t get caught — I can’t put my finger on it,” he said. “It’s certainly frustrating, especially for our clients because they’ve invested a significant amount of money in something unique that’s only theirs and then somebody comes around and takes it.”

What happens, according to Antonelli, is people will call to get design work done, but when they receive the quote, they think it’s unreasonable or too expensive and go on a crowdsourcing website. While having a logo contest through crowdsourcing sounds like a good idea in theory, there are risks involved.

“Many of the designers on sites like those are overseas,” he said. “They’re working out of Russia or India. There’s nothing wrong with those countries, but, if you have a problem, such as if they created artwork that infringes on something somebody owns, you’re responsible. The companies that participate in these logo contests have no liability — you’re on your own.”

Antonelli said he usually becomes privy to cases of trademark infringement because people who know his work snap photos and email them to him or even tag him on social media posts.

“It’s really amusing because we’ll get tagged on stuff, and, suddenly, the post is gone,” he said. “You can’t hide from it like you could in the past. One client in Florida had their logo taken by a company in Australia. They wrapped their trucks and posted it on Facebook. People tagged us, and within 10 minutes, the company in Australia was on the phone with us and explaining what had happened — which apparently, their in-house designer had stolen the logo, and they didn’t know. Now they had to go back to their client, who already had a few trucks wrapped, and say they couldn’t use this logo. That was kind of a crazy, global case.”

Trademark infringement is an emotionally fraught issue, noted Ed Cerier, marketing manager, Nexstar Network.

“Every time it comes up, there’s so much anxiety and stress,” he said.

Cerier said he doesn’t run into the situation very often, thankfully — only a handful of times in his 12 years with Nexstar.

“The types of things that cross my desk are infringements upon Nexstar’s work,” he explained. “We create plug-and-play advertisements for members, all of which are trademarked. We have a whole library of ads, door hangers, stickers, and magnets — all the way up to TV commercials. Every once in a while, a member will send us something saying, ‘a competitor in my market is using this.’

“In one instance I can recall, it was a sentence we had trademarked,” Cerier continued. “We owned the words, not just the design. Usually, with copyright law, you have to prove somebody actually stole it, but when they use the exact words you wrote, that’s a pretty clear case. In this case, the phrase was, ‘Don’t forget to tune-up the fur-fur-furnace.’ There’s a picture of a dog bundled-up in a scarf and hat, and he’s theoretically shivering. That was a line we wrote that felt important. Our attorney agreed that it was a line that was protectable.”

Cerier said when issues like this arise, he sends the work to Nexstar’s attorney to ask his opinion. If the attorney thinks a line has been crossed, he will send a cease and desist.

“If it’s taken down immediately, all is forgiven,” Cerier said. “We have no desire to pursue anything, we just want it to stop. We always get a letter right away from the other party. Usually, they claim innocence, and maybe it’s true. It’s possible they didn’t understand what copyright was all about.”

PROTECTING YOUR BRAND

After experiencing copyright infringement firsthand, Setchell and Mauzy both agree the most important thing for a contracting company to do is to protect itself.

“I almost learned this the hard way,” Setchell said. “Without question, the first thing you do is get the trademark. Going through this process, the first thing I learned was that if I didn’t have a copyright, and they had applied for it first, the odds are they would have owned the trademark to my logo.”

Setchell said the process was very simple — he used an online service called LegalZoom.com to fill out the form. For a fee, they will examine the form and send it out.

“It’s so expensive to get a logo like mine just because of the detail and the ingenuity of the guy who actually designed it,” he added. “It costs tens of thousands of dollars to get a product like that, so some people think it’s easier to just take it from somebody rather than paying for it. You have to protect yourself.”

Mauzy agreed, saying a brand is not protected unless it’s trademarked.

“It’s definitely important to register and trademark your brand because if you don’t, you could spend hundreds of thousands of dollars in marketing, and you may be using somebody else’s stuff and not know it,” he said. “Before you move forward and spend millions of dollars marketing your brand, you better make sure your brand is truly your brand.”

Mauzy said the things he has trademarked include vehicle wraps as well as several different versions of the company logo.

“I just found this out recently — we had our logo with what we call ‘the house’ on top of the name, but, in some cases, we were using it with the house to the left of the name because it was a better fit,” he explained. “And just with that minor change, we had to go back and refile.”

Kickcharge actually refers all of its clients to a trademark attorney after their work is completed, Antonelli noted.

“You should make sure every application of your logo uses the trademark sign,” he said. “Trademark is the first stage — once approved by the patent office, you can replace the trademark with the register mark.”

Copyright is different than a trademark only in the sense that anything original published is copyrighted by its very nature, but it doesn’t afford the same legal protection a registered trademark does.

“The patent office will look for first use of commerce, so you have to show that logo in use with a screenshot of a website, photo of a truck, or business card,” Antonelli continued. “When we changed our name to Kickcharge, we didn’t want anyone to know what the new name was, but I couldn’t get the trademark on the name until I showed it in use. I had to build a one-page website, so it couldn’t be indexed or found online, but if you typed in kickcharge.com, it would come up. We also have a trademark on the name Kickcharge, meaning that no one can name their company Kickcharge in the same industry as us, and we also have a trademark on the logo, which is the ‘K’ with a lightning bolt.”

Once your brand is trademarked, you’re obligated to defend it, Antonelli explained.

“The other part of the equation is, if you don’t defend your mark, then, at a certain point in time, it almost reroutes itself back to the public domain because it hasn’t been defended,” he said. “You’re almost obligated to pursue infractions. There’s a certain amount of due diligence on your part.”

Cerier noted it’s important for companies to check if a logo or phrase has been trademarked before putting it to use.

“I know there have been times where we’ve been working on something, and somebody in the room has said, ‘You better make sure that it’s not trademarked or copyrighted.’ And then the rest of us, are like, ‘Oh yes, thanks for the reminder,’” he said. “We’ll do a Google search, and depending on the level of importance, we’ll ask the lawyers to get involved.

“Many years ago, I came up with a line I thought was original — ‘If water flows through it, we do it,’” Cerier continued. “I was very excited because it was a great line, and I wanted to start using it with members. Somebody reminded me to make sure nobody already owned it. We did a search, and we did determine that a company in Florida claimed ownership, so we never used it.”

It’s much better to be safe than sorry.

“When we create things at Nexstar, we work very hard to be careful,” Cerier said. “I have no problem calling our attorney — and attorneys are never cheap. But, I’d rather spend the money and be darn sure we’re in the clear.

Publication date: 2/5/2018

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