Trademark a logo using a font

Adam Ladd

I've seen two stances in EULA's that either allow for logos to be designed using the font (more specifically, the font is used for the wordmark portion of the logo) and then trademarking that logo... and those EULA's that do not allow a trademark to be pursued.

I'm wondering what the pros/cons of both stances are, and what might be the limitations. Particularly, those EULA's that do not allow this (some perhaps not even allowing the use of a font in a logo design, even if it won't be potentially trademarked). Are there problems for allowing this? Does the foundry lose some leverage or the ability to hold onto certain rights to the font?

JoyceKetterer

My understanding is that the reason has to do with the prominent use and an idea that it should cost more.  If I'm right means it has nothing to do with any legal concerns. Of course, I'm no attorney and this is the sort of thing it's likely different legal minds might disagree on the interpretation of.  

We decided to permit logo at no additional cost.  There's our standard logic that we want to permit as many static uses as possible in order to keep the licensing terms easy to understand.  But also because, as a business matter, we like any use which further commits the customer to our font - it can lead to more sales.  In that way one could argue that logo use functions as a bit of a loss leader for us. 

Adam Ladd

Appreciate your insight and sharing of your practice, Joyce. Maximizing the usage and commitment on the customer end makes sense.

Yes, on the legal side, my hope is that there would be minimal to no negative, unforeseen consequences or limitations put on the foundry or font if someone did get a logo trademark using the font (I don't know how that would occur, but considering worst case scenarios). Thanks!

JoyceKetterer

@Adam Ladd I think it's very reasonable to determine the worst case scenario and then make a risk assessment.  That can't really be done here with us.  You need to find a legal expert you trust and go through that process with them.

However, I would note that most foundries do permit logo use - it's just add on licensing.  That implies that there's no downside to permitting it per se.  The question is one of assessed value.  

Thierry Blancpain

Note that not allowing very common uses will also lead to a good bit of extra cost: policing the limitation, supporting questions about this issue, crafting extra agreements, sending out invoices, dealing with payments, etc.

As @JoyceKetterer alluded to, your EULA is also a philosophical document on how you want to run your foundry business.

Adam Ladd

@JoyceKetterer @Thierry Blancpain Agreed. Thank you both for expanding further on this with you insights and more context. I do appreciate it. If needing to dig deeper into the legal side, consulting a legal expert seems best course of action, but this was indeed helpful to clear some initial concerns.

Johannes Neumeier

In addition to practical draw backs pointed out by @Thierry Blancpain, it will also alienate a good portion of your clients who might read and even abide to EULAs.

JoyceKetterer

@Johannes Neumeier I want so much to agree with you.  Perhaps having a bad EULA does alienate people... but I can tell you for certain that the people who tell me they love our EULA are almost never big spenders. 

This is true even when it's a license compliance expert at a design firm.  You'd think that someone like that would be able to drive sales our way if they think our license is so much better than others but, alas, the data proves otherwise.  

A good EULA needs to be it's own reward.  Literally.  Though it doesn't sell fonts it does lead easier license enforcement and less customer service.

Robin Mientjes

Gotta say I agree with @JoyceKetterer, I think the market would look quite different if the EULA had a (noticeable) competitive advantage, but it doesn’t. It just helps you codify your standards of business and, let’s be honest, it gives a good night’s sleep to know that you understand your license. After-purchase license enforcement is, for most of us, not a common concern but an exceptional situation.

JoyceKetterer

@Robin Mientjes I do think there's another reason to have a robust and well written EULA (which includes both legal vetting and general clarity for lay people).  It means that you can be tougher with attorneys who want to edit your EULA. 

This is a common thing with large license purchases. Big companies often think they should be able to recraft your EULA in their own image.  Some of it is about granting themselves more rights and some of it is just frivolous redrafting because it makes that attorney more comfortable.  That process is both costly and not the results are likely not in your best interest. 

If your EULA has any drafting errors or point of confusion its much harder to push back on redrafting.  If you have a strong and clear EULA it's easier to stand firm.

What we do is take the two issue separately.  Any requests for additional rights we quote a price which also covers our anticipated legal costs for the contract. 

Any requests that do not grant rights we require them to reimburse our legal fees.  The argument is that they have already been quoted a licensing cost which anticipates the standard document will be used.  And to be clear, we don't promise we will make the change.  They are agreeing to pay for our lawyer's time to consider it.  Quite frequently what she does is explain to the other attorney why she thinks the edit isn't needed.

Additionally, we never permit editing inside our EULA.  We always produce an addendum for any changes.  That's for me later because that way the changed terms are clearly called out and easy to find.

Robin Mientjes

@JoyceKetterer Thanks, that makes a lot of sense, and I’ll be honest: the name of my foundry is also reflective of the scale of business I do. This hasn’t been an issue for me, so I simply didn’t consider it. I appreciate the depth and clarity of your comments, here and on other threads. They’ve been very helpful.

JoyceKetterer

@Robin Mientjes may you go a long time before you encounter it!  It is possible to have big clients and not have them try to rewrite your EULA.  It's just a random thing.  

Thomas Phinney

JoyceKetterer said:

Additionally, we never permit editing inside our EULA.  We always produce an addendum for any changes.  That's for me later because that way the changed terms are clearly called out and easy to find.

This is incredibly sane. Totally.

JoyceKetterer

@Thomas Phinney that's the best compliment anyone could give me.  May I one day earn the right to put "incredibly sane" on my grave stone.

A process note :  we do have a word version of our eula (and standard addenda) that the client's attorney can work in.  The first thing we produce is a redline against the public documents.  Once those edits are agreed on we use that to create  a "'miscellaneous addendum" which edits all the relevant standard documents.  

This is the stuff I intended to cover in the panel I proposed to atypi on managing the client.  The idea was that since I didn't really think this paperwork stuff rose to an entire topic I invited someone to talk about scoping and another person to talk about getting useful feedback in review.  The three topics together felt very useful to me.  But I guess it was too dry for this year's committee because we were not invited to do it.  

Thomas Phinney

It almost never comes up for FontLab with our app EULA(s), but next time it does, if I need to make an exception, that is how I will do it.

(Hmmm, I think the plural of EULA should be EULAE. It sounds like it could be Latin, so....)

George Thomas

...plural of EULA should be EULAE...

For an acronym? No.

Thomas Phinney

(That was intended as a joke, George.)

Personally, I would love to hear Joyce do a 20-minute solo talk on EULA stuff, or be part of a panel discussion.

André G. Isaak

If a laser can contain a lasing element, I see no reason why Eula can't be pluralized as Eulae. Though one might instead argue that it should be singularized as Eulum.

JoyceKetterer

A 20 minute solo talk not on the "sexy" intellectual eulae content stuff?  20 minutes on how to use the documents to manage the client in the process of negotiations and completion of a project?  Stuff like how to diplomatically discouraging them from editing the eula and using a miscellaneous addendum if you must?   

@Thomas Phinney,  I think I'd have an audience of one.  

But I was excited to hear what @Bruno Maag would say about scoping and @Jean-Baptiste Levée about getting useful feedback in review.  Client management is a crucial part of being a successful service provider and something so few people teach.  I'm sad that the reviewers didn't think it was an engaging topic.  Maybe it was just a bias against panels... They can be awful.  

Thomas Phinney

FWIW, I was one of the reviewers, and I liked the proposal. But I think something like about 1/3 of the proposals I reviewed made the cut, which is about the same as the rest of the conference... somewhere around 1/4 or 1/3 of proposals make it. So it is quite possible to have a proposal rated above average and still not get selected. 

notdef

EULÆ, as in antennæ.