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Bob Marley is a world-famous musician and people use his image and likeness to sell products every day. In fact, his estate has amassed millions of dollars suing people and companies for using his image and likeness. Thankfully for his estate, Bob Marley’s image is protected by trademark laws.

The Federal Lanham Act aka the Trademark Act of 1946 was passed by Congress and enacted to protect brands and companies across the nation. In Oklahoma, trademark laws can be found in Oklahoma Statute Title 78 beginning at Section 21. “The term ‘trademark’ as used herein means any word, name, symbol, emblem, or device or any combination thereof adopted and used by a person to identify goods made or sold or services rendered by him and to distinguish them from goods made or sold or services rendered by others.” 78 O.S. 21(A).

This statute defines trademark but also tells us what can be trademarked. For example, if your company uses a certain logo or phrase to represent your brand or products, you can trademark it to protect against other companies using it too. The key to this protection is that you must register the trademark to be protected by any of the laws discussed here.

Oklahoma goes on to define how a trademark is used regarding infringement, “a trademark shall be deemed to be "used" in this state (1) when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto and such goods are sold or otherwise distributed in this state, or (2) when it is used in any manner in connection with the sale or advertising of services in this state.” 78 O.S. 21(E).

This statute is important because it sets parameters of use to determine trademark infringement. As you can see from above, simply printing your logo to use as wallpaper in one’s home is not likely to fall within the definition of “use.” In Bob Marley’s case, a company using his image on t-shirts or other products that are sold for profit without proper permission is clearly trademark infringement. The same would be true for someone using your company logo on their packaging.

The statutes go on to define remedies one is entitled to for trademark infringement, such as, “injunctions to restrain such manufacture, use, display or sale…pay to such owner all profits derived from and/or all damages suffered by reason of such wrongful manufacture, use, display or sale; and…that any such counterfeits or imitations in the possession or under the control of any defendant in such case be delivered to an officer of the court, or to the complainant, to be destroyed.” 78 O.S. 32. At the end of the day, you must register your trademark and be on the lookout for others using your trademark. Just because you have a trademark for your logo doesn’t mean that others won’t use it. You must take action!

For questions or more information email: Jade@BICLegal.com