Is it a good idea to use a stock image in my trademark?

In a word, no. Stock images are easy to find on the internet, and they’re an easy way to get a professional-looking illustration to spiff up your website. But they don’t make good trademarks.

For one thing, the whole point of a trademark is that it’s “distinctive” of your particular goods and services. A stock image can’t be.

A trademark is supposed to distinguish your goods and services from everybody else’s. It’s meant to give your customers a way to identify which goods and services come from you and not your competitors. Stock images, on the other hand, are sold to more than one party. For all you know, the supplier of the stock image you choose for your website might have sold the very same image to your competitors too. That’s how they make their money.

For another thing, when you pay for a stock image, it’s not really yours. All you’re paying for is the right to use the image, usually in a very specific, limited way – one that usually does not include trademarks.

For example, the licence agreement for one major supplier of stock images says, “We hereby grant to you a perpetual, non-exclusive, non-transferable worldwide license to use the Content for the Permitted Uses (as defined below). Unless the activity or use is a Permitted Use, you cannot do it.” There are only four of these “Permitted Uses”: advertising and promotional projects, entertainment applications, on-line publications, and prints, posters and reproductions. Trademarks are not among them. In fact, trademarks are among the 14 specifically “Prohibited Uses” in the agreement, along with design marks, corporate logos, trade names, and business names, and along with using the image in design templates, t-shirts, electronic greeting cards, coffee mugs, or anything else that’s for sale. You can’t even display the image in a way that allows other people to download it.

So how do I get a design that I can have registered as a trademark?

The old fashioned way – it’s best to hire a professional designer. Even then, you still need to be vigilant. You can’t just assume the designer is producing original work. For instance, some designers sub-contract their work. They may or may not be routinely checking that the sub-contractor’s work is original. If stock images end up in your trademark, even if it was without your knowledge or consent, you may be responsible. You could end up with a nasty surprise in the form of an invoice for the image or even a legal action. Your best protection is to make sure you have a written agreement with the designer, and make sure it specifies that all artwork will be original. It should also specify that they show you their work in progress so you can see for yourself that it is original, and that it’s the designer’s responsibility to handle any copyright or licensing issues. It’s also a good idea to do your own internet searches for similar images. (This is not the same as the design searches we do – our searches are of the trademarks database only.)

These steps may not guarantee original images but they do give you some measure of protection.

Previous: Registered Trademark Agents

Next: