User rights and Trademarking???

[hothousegraphix]

I've run into a situation that I've not had experience with before. I've done some logo design work (spec) for a small company. After
seeing the work they've decided that they would like to possibly register a particular image as their TRADEMARK. All fine and good. Where my questions lie are with user rights. My contract with them only grants them "limited use" of this image; standard for any spec work I do, not that I do a whole lot.

What I’d like to know is if their desire to TRADEMARK this image requires them to have an "unlimited use" license to move forward with that process.

[MG315]

i believe so. if they trademark it, that means they fully own the rights to the logo, meaning you lose them. you would need to sell over your rights to the image before they could trademark it (thats what i think, but i'm no lawyer)

[hothousegraphix]

I've been of this impression also. I just wanted to see if someone else had another take on this situation. I've actually never encountered a situation like this. Most of the time when I do spec work it goes nowhere. When dealing with paying clients the cost of an "unlimited use" license is built into the total job cost.

Thanks for the input.

[Napalm]

As a designer the work you produce is normally the property of the client (as soon as they pay). You do however retain the right to use it as part of you portfolio, but you're not allowed to use it commercially.

Limited use contracts normally pertains to the use of photographs, where the client would buy the right to use a image in a specific format (print, web etc) for a period of time. This normally, however, excludes a corporate identity.

[hothousegraphix]

Napalm, thanks for responding.

My understanding of the US copyright law is that the designer holds the rights to the work created for the client, and that yes, at point of payment the designer transfers those rights to the client, but, that this transaction is not simply assumed; i.e. that the transfer of rights needs to be documented.

I suppose that my description of a "limited use" license in my situation is incorrect. To clarify, when I do work on spec (no money upfront), I always work with a document, as part of my contract with the client that specifies that the work being created for them cannot
be used for anything other than a discussion point until/if the client chooses to move forward and that then financial terms are negotiated. Probably the wrong description for my situation.

I'm not at all sure that this is a common practice, but, I've found it
to be very helpful.