Can a logo using licensed fonts be trademarked?

Question

I made a logo using fonts with a free license for commercial use, my clients wants to trademark the logo. Can he do it? My concern is that even with the license, the creator of the font still own the copyright, and I am not sure if you can trademark a graphic that includes a copyrighted item. He asked me to sign a document call "assignment" where it states that is all my original artwork (which is BUT the fonts) and I want to make sure everything is clear and legal.

Answer 1

Depends

Trademarks, design patents and copyrights

There are three types of protection that can be afforded to typefaces and fonts in addition to basic license agreements: trademark, design patent and copyright. These are intended to keep non-licensees from copying the fonts in some way and passing them off as original material. They each have implications for the computer support person.

The Trademark system is the weakest form of protection, allowing only the font name itself to be protected. Hermann Zapf's popular typeface PalatinoTM is arguably the most copied typeface in the world. Many companies made their own identical versions of it (including the Book Antiqua distributed in the past by Microsoft), but had to change the name. This means that no one is allowed to use a currently existing typeface name for a new font, even if the fonts are completely unrelated.

The Design Patent system is the strongest, but most uncommon type of protection. The designation is relatively rare because of the cost and effort involved, but is powerful. It is the only US legal precedent that protects the actual design - the individual shapes of the letters in a font. The Lucida font family (designed by Bigelow and Holmes) were some of the first digital fonts to be given a patent. If a designer were to copy them, even by redrawing them from scratch using pencil and paper, he would be in serious legal trouble.

The Copyright system is the most commonly used type of protection, but has also been the most vague and difficult to enforce. There is no explicit protection for fonts or typeface designs in US copyright law. Hence, fonts have, until recently, fallen between the cracks in the justice system.

http://scripts.sil.org/cms/scripts/page.php?site_id=nrsi&id=UNESCO_Font_Lic

I grabbed the following from this lawsuit:

The names of particular fonts may be protected by a trademark. This is the weakest form of protection because only the font name itself is being protected. For example, the letters that make up the trademarked font Palatino can be copied but the name must be changed.

URW++ was involved in a 1995 lawsuit with Monotype Corporation for cloning their fonts and naming them with a name starting with the same three letters. As typeface shapes themselves cannot be copyrighted in the United States, the lawsuit centered on trademark infringement. A US court decided that Monotype's trademarks were "fanciful" and did not have descriptive value of the actual products. However it also decided that URW was confusing the public deliberately because "the purloining of the first part of a well-known trademark and the appending of it to a worthless suffix is a method of trademark poaching long condemned by the courts." The court issued an injunction preventing URW from using their chosen names.

and one more example from the same source

In 21 January 2016,[17] Font Brothers filed a lawsuit against Hasbro, claiming that Hasbro used the “Generation B” font for its My Little Pony product without permission. Font Brothers claimed that Hasbro had refused to comply with their licensing request. They are also claiming substantial damages, from loss of revenue for this misuse, and requesting a jury trial to resolve this matter.[18] https://en.wikipedia.org/wiki/Intellectual_property_protection_of_typefaces#Trademarks

Sorry in advance for wikipedia