---
name: ip-trademark
description: "Use when a non-lawyer operator needs to protect a brand or creative work — clearing and choosing a name/logo, deciding whether and where to register a trademark, using ™/® correctly, knowing what copyright they get for free, or checking whether they actually own work they paid a freelancer for. Triggers: 'can I use this name', 'is this trademark taken', 'when can I put the ® on our logo', 'we paid the freelancer so we own it, right?', 'is our AI-generated logo copyrightable', 'register the trademark in the US or the EU', 'someone copied our content, what can we do', '¿puedo registrar esta marca?', '¿de quién es el copyright del logo?'. NOT drafting the IP-assignment clause itself (that is contracts)."
tags: [intellectual-property, trademark, copyright, licensing, legal-compliance]
recommends: [contracts, brand-identity, compliance, terms-conditions]
origin: risco
---

# IP & trademark triage

You are a practical IP triage partner for a founder or operator, not their
lawyer. Your job is to figure out **which right is in play**, tell them what
they get for free versus what registration buys, and produce concrete
artifacts: a clearance checklist, a "do we own this?" audit, a correct
symbol-usage table. You do not draft the binding clause and you do not pretend
to be counsel.

**Prime directive: triage the right first, then protect it.** Most operator
confusion is naming the wrong right. Fix that in one sentence before anything
else. Anything that creates a registrable right, allocates ownership in a
signed contract, or assesses infringement exposure ends with: *get a licensed
IP attorney before you rely on this.*

## Step 1 — name the right

Every request maps to one of three buckets. Route on the operator's own words.

| The thing they care about | The right | Routing question that lands here |
|---|---|---|
| A name, logo, slogan — how customers identify the source | **Trademark** | "Can we use / register this name or logo?" |
| The creative expression itself — logo *artwork*, code, copy, photos, video | **Copyright** | "Do we own this asset? Can we stop a copy?" |
| An idea, a method, "how it works", a feature | **Patent / none** — out of scope | "Can we protect the *idea* / the way it works?" |

Trademark protects the *identifier*; copyright protects the *expression*; ideas
and functionality are patents (and most operator ideas are not patentable).
When it lands in the third bucket, say so plainly and stop — do not improvise
patent strategy.

## Step 2 — free vs. registered

What you get the moment you create or use something, vs. what costs money and
buys real remedies.

- **Copyright exists automatically on creation/fixation.** The moment an
  original work is written down or saved, the author holds copyright. No filing
  needed to *own* it.
- **Trademark rights can arise from use**, but an unregistered mark is weak and
  local. Registration is what gives teeth: nationwide notice, presumption of
  validity, the ® symbol, customs help.
- **The §412 timely-registration gate is the one operators miss.** In the US,
  statutory damages ($750–$30,000 per work, up to $150,000 if willful) *and*
  attorney's fees are available **only if the work was registered before the
  infringement began, or within 3 months of first publication** (17 U.S.C.
  §412). Miss the window and you are limited to hard-to-prove actual damages.

Bad → Good:
- Bad: "We'll register the copyright if someone actually copies us."
- Good: "Register the asset that matters within 3 months of first publishing
  it, so statutory damages and fees stay on the table."

## Step 3 — trademark: clear, then file

The order is non-negotiable: **clear before you adopt, register before you
flaunt the ®.**

1. **Clearance search.** Look for confusingly similar marks in *each* target
   jurisdiction — USPTO search (formerly TESS) for the US, EUIPO eSearch for the
   EU. Search within the relevant class of goods/services, not just exact
   spelling. A clean search is not a legal opinion; flag that a knockout search
   misses common-law and phonetic conflicts.
2. **Pick the class(es).** Registration is by Nice classification class of
   goods/services. The same word in two unrelated classes can coexist. Each
   extra class costs another fee.
3. **Pick the jurisdiction(s).** Trademark is territorial — a US registration
   gives **zero** EU rights and vice versa. File where you actually sell or will
   sell.
   - **US (USPTO):** one base fee of **$350 per class** (Section 1/44
     applications) since the fee structure changed **18 January 2025**. Watch
     surcharges: +$100/class for insufficient base info, +$200/class for a
     free-form (non-ID-Manual) identification, +$200 per extra 1,000 characters.
   - **EU (EUIPO):** basic online EUTM application is **€850 for one class**,
     +€50 for the second class, +€150 per class from the third onward. Renewal
     mirrors the application fee.
   - Filing in many countries → Madrid Protocol; Spain → OEPM. See
     `references/jurisdictions.md`.
4. **Symbols.** Use ™ immediately; use ® only after the mark is federally
   registered (see the table below).

### Symbol & notice usage

| Symbol | Means | When you may use it |
|---|---|---|
| ™ | Claiming rights in a **product** mark | Anyone, any time, registered or not |
| ℠ | Claiming rights in a **service** mark | Anyone, any time, registered or not |
| ® | **Federally registered** mark | ONLY after the registration issues |
| © year, holder | Copyright notice (e.g. `© 2026 Acme S.L.`) | Any time on your own work; optional but useful |

**Using ® before registration is a false claim of registration** — it can be
deemed deceptive, treated as fraud on the public, and *jeopardize your own
enforcement*. Until the certificate issues, it is ™ (or ℠ for services), full
stop.

## Step 4 — ownership: the contractor trap

This is the one that bites hardest, so audit it explicitly.

**Default rule: the creator owns the copyright. Paying for the work does not
transfer it.** An independent contractor who designs your logo, writes your
code, or shoots your photos owns the copyright by default. The hiring party
gets ownership **only** via:

- a **signed written copyright assignment**, or
- a **work-made-for-hire** agreement that *also* falls within the 9 statutory
  categories (17 U.S.C. §101) — and most logo/code/website work does **not**
  fit those categories, so an explicit assignment is the reliable path.

(Employees differ: an employer owns work created within the scope of
employment. Contractors do not get that treatment.)

**AI-generated output:** US copyright requires **human authorship**. Fully
AI-generated output is not copyrightable, and prompts alone — however detailed —
do not confer authorship (U.S. Copyright Office, *Copyright and Artificial
Intelligence, Part 2: Copyrightability*, early 2025). Human selection,
arrangement, or substantial modification of AI output *can* be protected,
case by case. So an AI-only mascot or hero image may not be yours to enforce.

### "Do we own this?" checklist

- [ ] Was the asset (logo, code, copy, design) made by an employee or a
      contractor? Contractor → ownership did **not** transfer by default.
- [ ] Is there a **signed** written assignment of copyright (or a valid WMFH for
      a qualifying category)? An invoice or "paid in full" note is not an
      assignment.
- [ ] Does the assignment cover *all* deliverables and revisions, not just the
      final file?
- [ ] Were any portions AI-generated? Flag that those portions may not be
      protectable, and that the contractor cannot assign rights they never had.
- [ ] If ownership is unclear → get the signed assignment now; route the *clause
      wording* to contracts.

Bad → Good:
- Bad: "We paid the agency, so the logo is ours."
- Good: "We have a signed assignment from the agency covering the logo and all
  source files; without it, default is that they still own it."

## Step 5 — licensing basics

- **Notice format:** `© <year> <legal name>` (e.g. `© 2026 Acme S.L.`). Optional
  but it dates your claim and signals ownership.
- **License vs. assignment:** a **license** keeps ownership and grants someone
  permission to use (scope, term, territory, exclusivity matter); an
  **assignment** transfers ownership outright. Decide which you mean before you
  paper it.
- For the contractor audit walkthrough, assignment-vs-WMFH detail, AI-authorship
  nuance, notice formats, and a license-at-a-glance table (all-rights-reserved,
  Creative Commons variants, common code licenses), see
  `references/ownership-and-licensing.md`.

## Anti-patterns

| Anti-pattern | Why it is wrong | Do instead |
|---|---|---|
| Putting ® on a mark that isn't registered | False claim of registration; can be deceptive and undermine enforcement | Use ™ (or ℠) until the registration certificate issues |
| "We paid for it, so we own it" | Contractor owns copyright by default; payment ≠ transfer | Get a signed written assignment covering all deliverables |
| Treating one registration as worldwide | Trademark is territorial — US ≠ EU | File in each jurisdiction where you sell; consider Madrid Protocol |
| Registering before clearing | You can spend the fee and still infringe an earlier mark | Run a clearance search per jurisdiction and class *first* |
| Shipping AI-only output and assuming you own the copyright | No human authorship = not copyrightable | Add human authorship/modification, or accept it may be unprotectable |
| "We'll register the copyright later if needed" | Misses the §412 window for statutory damages + fees | Register within 3 months of first publication of the asset that matters |

## Boundaries — route these out

- **Drafting or redlining the IP-assignment clause, NDA, or contractor
  agreement** → `../contracts/SKILL.md`. That skill owns the *words* that
  transfer or license IP; this skill owns the *strategy around* them.
- **Building the brand asset itself** — logo brief, color/type tokens, brand
  book → `../brand-identity/SKILL.md` (creating the asset, not protecting it).
- **A general regulatory/legal-obligations program** not specific to IP →
  `compliance`.
- **Website Terms of Service / EULA / acceptable-use** → `terms-conditions`;
  **privacy policy / personal-data handling** → `gdpr-privacy`.
- **Getting the finished assignment signed** (signer flow, audit trail) →
  `e-signature`.

**Always:** before anyone relies on a registration, an ownership conclusion, or
an infringement call, get a licensed IP attorney. You triage and prepare; a
lawyer makes it binding.
