We are often asked do I need a trademark for my slogan? Can I patent my idea? How can I protect my website from copying by others? Here’s a quick rundown of the various protections every business should be aware of in protecting their intellectual property.
Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. It can be your company’s name (e.g., NIKE) or its main advertising slogan (e.g., JUST DO IT). No matter what you wish to use as a source identifier of your goods or services it should be Registered, if possible, with the U.S. Patent and Trademark Office (“USPTO”) to maximize the protection available under The Trademark Act of 1946. Trademarks can last forever so long as they are Renewed as required by the USPTO.
Patents
A patent is a grant of property rights by the U.S. Government through the USPTO. The patent grant excludes others from making, using, or selling an invention in the United States that receives patent protection (e.g., a new and innovative design for a tooth brush, mechanical part, or otherwise). Patents, unlike trademarks, are subject to limits lives. For instance, a utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant.
Copyrights
Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. Copyrightable works include the following categories:
1. Literary Works (e.g., books, articles)
2. Musical Works, including any accompanying words (e.g., music, lyrics)
3. Dramatic Works, including any accompanying music (e.g., plays, screen
plays,scripts)
4. Pantomimes and Choreographic Works (e.g., dance routines)
5. Pictorial, Graphic, and Sculptural Works (e.g., works of art, statutes, AND
web sites)
6. Motion Pictures and other Audiovisual Works (e.g., movies, television
broadcasts)
7. Sound Recordings (e.g., albums, CDs, etc.)
8. Architectural Works (e.g., building designs and plans)
As always, if you have any questions about these or any other matters just Contact Us or post your questions or comments right here on our blog.
The Trademark Company
Thursday, February 25, 2010
Monday, February 22, 2010
Tips from the Trademark Insider: Beware of the Perils of Self-Enforcement
In our business we are often presented with situations where we are brought in to clean up someone else’s proverbial mess. One of the most frequent messes is caused by the perils of self-enforcement of trademark rights.
Did you know that, as a general rule, everything you say to another individual or company attempting to enforce your rights can be used against you if what you say, in the end, actually hurts your case rather than helps it?
Let’s say that you think someone is infringing on your mark. You send them an email demanding they stop. The only problem – they were using the mark before you were. Congratulations, you have just admitted that you believe the marks are likely to cause confusion with one another, a fact that is sure to come up in trial when the other party sues YOU for infringement of the mark they were using first!
Of note, well-crafted letters from attorneys are generally protected by Federal Rule of Evidence 408 which precludes “settlement discussions” from being used against their clients in a court of law. Moreover, skilled practitioners always conduct due diligence to make sure that their clients are in the right before sending the demand letter in the first place.
Of course balanced against this risk is the cost of enforcement that often can be a significant expense. So how do you cost-effectively Enforce Your Trademark Rights? Many firms now have affordable Standard Enforcement Packages which can enforce your rights for a fraction of the cost of traditional Litigation.
Of course Litigation is often required. But in our experience true infringers often run upon the mere notice that you intend to enforce your rights. But in your zeal to protect your mark always keep in mind the age-old admonition of law: He who represents himself has a fool for a client.
The Trademark Company
Did you know that, as a general rule, everything you say to another individual or company attempting to enforce your rights can be used against you if what you say, in the end, actually hurts your case rather than helps it?
Let’s say that you think someone is infringing on your mark. You send them an email demanding they stop. The only problem – they were using the mark before you were. Congratulations, you have just admitted that you believe the marks are likely to cause confusion with one another, a fact that is sure to come up in trial when the other party sues YOU for infringement of the mark they were using first!
Of note, well-crafted letters from attorneys are generally protected by Federal Rule of Evidence 408 which precludes “settlement discussions” from being used against their clients in a court of law. Moreover, skilled practitioners always conduct due diligence to make sure that their clients are in the right before sending the demand letter in the first place.
Of course balanced against this risk is the cost of enforcement that often can be a significant expense. So how do you cost-effectively Enforce Your Trademark Rights? Many firms now have affordable Standard Enforcement Packages which can enforce your rights for a fraction of the cost of traditional Litigation.
Of course Litigation is often required. But in our experience true infringers often run upon the mere notice that you intend to enforce your rights. But in your zeal to protect your mark always keep in mind the age-old admonition of law: He who represents himself has a fool for a client.
The Trademark Company
Saturday, February 20, 2010
Tips from the Trademark Insider: Register Your Copyrights!
Although we here at The Trademark Company hate to admit it, it's not always all about the trademarks.
Remember to register your Web site, publications and all other important, original, creative works (that are fixed in any print, electronic, audio-visual, or other tangible medium) with the U.S. Copyright Office.
While such registration is not required to obtain and maintain a copyright in a work, it is a prerequisite to filing a lawsuit to enforce your rights and confers other valuable benefits. Copyright registration is a very simple and inexpensive process which assists in the overall protection of your intellectual property rights.
The Trademark Company
Remember to register your Web site, publications and all other important, original, creative works (that are fixed in any print, electronic, audio-visual, or other tangible medium) with the U.S. Copyright Office.
While such registration is not required to obtain and maintain a copyright in a work, it is a prerequisite to filing a lawsuit to enforce your rights and confers other valuable benefits. Copyright registration is a very simple and inexpensive process which assists in the overall protection of your intellectual property rights.
The Trademark Company
Thursday, February 18, 2010
Tips from the Trademark Insider: Cost Effective Ways to Protect Your Trademarks
How many start-up businesses can afford $200,000 to file an infringement lawsuit against a competitor who is stealing their trademarks? From our experience, not many. But there are alternative means of enforcing your mark which won't break the bank.
For instance, if you have a Registered Trademark and need to preclude people from importing infringing goods into the U.S. why not File Your Registered Trademarks with the Customs & Border Patrol to prevent infringing goods from ever entering the country. It is a very cost-effective way of stopping the bad guys from knocking of your marks.
But what if your primary store front is online? What if someone registers a domain name similar to your trademark to steal your business away? We recommend filing a Domain Name Dispute against them. Although it does not shut down their business per se. It does take away the infringing domain name leaving them without the ability to knock off your brand online.
As always, for these and other cost-saving ways to protect your trademarks and brand identity visit us online at The Trademark Company.
For instance, if you have a Registered Trademark and need to preclude people from importing infringing goods into the U.S. why not File Your Registered Trademarks with the Customs & Border Patrol to prevent infringing goods from ever entering the country. It is a very cost-effective way of stopping the bad guys from knocking of your marks.
But what if your primary store front is online? What if someone registers a domain name similar to your trademark to steal your business away? We recommend filing a Domain Name Dispute against them. Although it does not shut down their business per se. It does take away the infringing domain name leaving them without the ability to knock off your brand online.
As always, for these and other cost-saving ways to protect your trademarks and brand identity visit us online at The Trademark Company.
Tuesday, February 16, 2010
Tips from The Trademark Insider: Google's Dirty Little Trademark Secret.
Want to know a quick and easy way to get a search monopoly on the world’s most powerful search engine? It’s easier than you think. In short, register your registered trademarks with Google and the other major search engines and they won’t let anyone else bid on your registered trademarks in their pay-per-click advertising services EXCEPT YOU!
Not only does this prevent competitors from using your trademarks against you in advertising, it provides you with a simple and cost-effective way to use pay-per-click advertising to your advantage by being the only person who can bid on your trademark as a keyword. In short, instant page one access on Google for just about 10 cents per click. Not too shabby.
Note, this strategy only works for those with registered trademarks. So if you need one, we can help. If you have one, we can get it filed with Google et al.
The Trademark Company
Not only does this prevent competitors from using your trademarks against you in advertising, it provides you with a simple and cost-effective way to use pay-per-click advertising to your advantage by being the only person who can bid on your trademark as a keyword. In short, instant page one access on Google for just about 10 cents per click. Not too shabby.
Note, this strategy only works for those with registered trademarks. So if you need one, we can help. If you have one, we can get it filed with Google et al.
The Trademark Company
Monday, February 15, 2010
Tips from the Trademark Insider: Keep Your Trade Secrets Secret.
Today as we welcome several new employees to our company we are reminded of the need to keep confidential trade secret materials confidential and secret. It may sound simple, but it is often overlooked in the protection of one’s intellectual property assets.
Beyond trademarks, your proprietary business systems, manuals, and other plans that make your business uniquely yours should be kept just that – as a trade secret divulged to new employees only once they acknowledge and promise to keep the same exclusively your business’s. Make sure you have policies in place that ensure that all employees, new and old, acknowledge and understand that your proprietary business systems are just that – proprietary.
Failure to do so may leave your company with little or no recourse to prevent unrestricted use of this most valuable information by those who obtain a copy of it.
The Trademark Company
Beyond trademarks, your proprietary business systems, manuals, and other plans that make your business uniquely yours should be kept just that – as a trade secret divulged to new employees only once they acknowledge and promise to keep the same exclusively your business’s. Make sure you have policies in place that ensure that all employees, new and old, acknowledge and understand that your proprietary business systems are just that – proprietary.
Failure to do so may leave your company with little or no recourse to prevent unrestricted use of this most valuable information by those who obtain a copy of it.
The Trademark Company
Saturday, February 13, 2010
Tips from the Trademark Insider: Keep Records of Key Information Concerning Your Trademarks.
Keep records of relevant information relating to your trademarks. If your mark is ever challenged, it will be helpful to have evidence of use and records relating to the first use date for each of the associated goods/services. “First use” has a legal definition.
With respect to goods, “first use” means the date when the goods bearing the mark are actually sold or transported in commerce. “First use” with respect to services means the date the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce.
The Trademark Company
With respect to goods, “first use” means the date when the goods bearing the mark are actually sold or transported in commerce. “First use” with respect to services means the date the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce.
The Trademark Company
Thursday, February 11, 2010
Tips from the Trademark Insider: Selecting a Great Trademark Part 2: Getting Started.
As we know, a great name is the beginning of a great brand. It should be memorable and create a certain feeling when heard. Here are some suggestions as to how to get started:
1. Brainstorm. Think about how you want people to feel when they hear the name. Write down the words on paper and then categorize them by primary meaning.
2. Relate. Think about related words and phrases that evoke the feelings you want. Hit the thesaurus and find all the synonyms for your words and phrases.
3. Relate more. Find out the Greek and Latin translations of your words. Figure out what colors, gemstones, plants, animals, etc., relate to your words.
4. Experiment. Start playing with combinations of your various words and partial words. Don't be judgmental now - just make a list.
5. Reflect. Review your list and just give some thought to each name. How does it make you feel when you hear it?
6. Communicate. Go over the list with someone you trust. Have them tell you how each name makes them feel, and how memorable they think it is.
7. Prioritize. Throw out any that just don't fit and make a prioritized list of the rest.
8. Check trademarks. Make sure no one is using that name in your line of business. You may be able to use the name in a completely different business, but be aware that it may create confusion for both you and them.
9. Check domain names. You want to make sure that an appropriate domain name is available. You want YourCompanyName.com, of course. If that's not available, you may want to reconsider.
10. Search the internet. Even if someone doesn't have the domain, you still want to see what else is out there that has the same name. That doesn't mean you don't use it if you find something, but you need to know.
11. Check company names. If you're planning to incorporate, check with the Secretary of State (or other appropriate office outside the U.S.) of the state you're planning to incorporate in.
12. Check assumed names. For sole proprietors, check for local assumed names (also known as DBA). In the U.S., you check this with the County Clerk.
13. Stake your claim! Register your assumed name or file your incorporation papers right away. Also, start using either TM (trademark) or SM (service mark). You do NOT have to register them to use them.
14. Get the domain(s). Find an inexpensive registrar and register your domain and any obvious variations on it. You shouldn't be paying more than $10 a year for each, and at that, it pays to prevent poachers.
15. Protect your brand. A U.S. trademark or service mark is affordable and a valuable business investment. It's a drop in the bucket compared to trying to defend it later.
The Trademark Company
1. Brainstorm. Think about how you want people to feel when they hear the name. Write down the words on paper and then categorize them by primary meaning.
2. Relate. Think about related words and phrases that evoke the feelings you want. Hit the thesaurus and find all the synonyms for your words and phrases.
3. Relate more. Find out the Greek and Latin translations of your words. Figure out what colors, gemstones, plants, animals, etc., relate to your words.
4. Experiment. Start playing with combinations of your various words and partial words. Don't be judgmental now - just make a list.
5. Reflect. Review your list and just give some thought to each name. How does it make you feel when you hear it?
6. Communicate. Go over the list with someone you trust. Have them tell you how each name makes them feel, and how memorable they think it is.
7. Prioritize. Throw out any that just don't fit and make a prioritized list of the rest.
8. Check trademarks. Make sure no one is using that name in your line of business. You may be able to use the name in a completely different business, but be aware that it may create confusion for both you and them.
9. Check domain names. You want to make sure that an appropriate domain name is available. You want YourCompanyName.com, of course. If that's not available, you may want to reconsider.
10. Search the internet. Even if someone doesn't have the domain, you still want to see what else is out there that has the same name. That doesn't mean you don't use it if you find something, but you need to know.
11. Check company names. If you're planning to incorporate, check with the Secretary of State (or other appropriate office outside the U.S.) of the state you're planning to incorporate in.
12. Check assumed names. For sole proprietors, check for local assumed names (also known as DBA). In the U.S., you check this with the County Clerk.
13. Stake your claim! Register your assumed name or file your incorporation papers right away. Also, start using either TM (trademark) or SM (service mark). You do NOT have to register them to use them.
14. Get the domain(s). Find an inexpensive registrar and register your domain and any obvious variations on it. You shouldn't be paying more than $10 a year for each, and at that, it pays to prevent poachers.
15. Protect your brand. A U.S. trademark or service mark is affordable and a valuable business investment. It's a drop in the bucket compared to trying to defend it later.
The Trademark Company
Wednesday, February 10, 2010
Tips from the Trademark Insider: Selecting a Great Trademark
Our clients often ask us for suggestions in selecting a Trademark for their products or services. Our response is always the same – it depends...
On one hand, do they want to create a completely coined name (i.e., something no one has ever heard of like eBay or Google) or use an arbitrary mark (i.e., a term we have heard of but that’s use is arbitrary in connection with the goods or services provided such as AMAZON for online retail store services or APPLE for computers).
On the other, do they want a mark that creates instant interest in the product or service because it is suggestive or describes of trait thereof (e.g., ORANGE CRUSH for orange-flavored soft drinks or COPPERTONE for suntan oil).
No matter what they decide a great name should be catchy and memorable, should create interest in the product or service, and most importantly be registerable as a trademark - that is capable of registration on the principal register maintained by the United States Patent and Trademark Office ("USPTO").
A common problem in selecting a trademark that would create instant interest is the temptation to use descriptive or generic terms - marks that directly convey characteristics of the goods (e.g., RED SHOES for shoes that are red).
Unfortunately, descriptive terms are not registerable as trademarks, absent proof of a secondary meaning (i.e., you have been using it for five years or you have spent millions in advertising of the mark).
So what is the best way to select a trademark for your products or services?
Coin or use arbitrary terms if you intend on building the brand from scratch. Note, this will take more effort and resources as consumers will need to be educated via advertising and otherwise as to your product or services provided in connection with that mark.
In the alternative, if you want that instant buzz which comes with suggestive marks, be cautious and avoid generic, descriptive, and non- inherently distinctive marks as they will not be registerable before the USPTO nor protected from infringement by others. Make sure that the terms you use in your trademark do not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of your products or services. Rather, select a trademark that requires some bit of imagination, thought or perception to reach a conclusion as to the nature of your products.
The Trademark Company
On one hand, do they want to create a completely coined name (i.e., something no one has ever heard of like eBay or Google) or use an arbitrary mark (i.e., a term we have heard of but that’s use is arbitrary in connection with the goods or services provided such as AMAZON for online retail store services or APPLE for computers).
On the other, do they want a mark that creates instant interest in the product or service because it is suggestive or describes of trait thereof (e.g., ORANGE CRUSH for orange-flavored soft drinks or COPPERTONE for suntan oil).
No matter what they decide a great name should be catchy and memorable, should create interest in the product or service, and most importantly be registerable as a trademark - that is capable of registration on the principal register maintained by the United States Patent and Trademark Office ("USPTO").
A common problem in selecting a trademark that would create instant interest is the temptation to use descriptive or generic terms - marks that directly convey characteristics of the goods (e.g., RED SHOES for shoes that are red).
Unfortunately, descriptive terms are not registerable as trademarks, absent proof of a secondary meaning (i.e., you have been using it for five years or you have spent millions in advertising of the mark).
So what is the best way to select a trademark for your products or services?
Coin or use arbitrary terms if you intend on building the brand from scratch. Note, this will take more effort and resources as consumers will need to be educated via advertising and otherwise as to your product or services provided in connection with that mark.
In the alternative, if you want that instant buzz which comes with suggestive marks, be cautious and avoid generic, descriptive, and non- inherently distinctive marks as they will not be registerable before the USPTO nor protected from infringement by others. Make sure that the terms you use in your trademark do not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of your products or services. Rather, select a trademark that requires some bit of imagination, thought or perception to reach a conclusion as to the nature of your products.
The Trademark Company
Tuesday, February 9, 2010
Tips from the Trademark Insider: Web Design & Trademark Use.
There is nothing inherently wrong with the identification of other party's products on a web page by using their trademarks. Nonetheless, some parties have made inappropriate claims of trademark infringement every time they see one of their marks on another party's page. Sometimes, however, a web site does violate the trademarks of another. Web page designers should avoid trademark usage that might cause confusion among viewers as to the source or sponsorship of the web page. Such use might well constitute trademark infringement.
The Trademark Company
The Trademark Company
Monday, February 8, 2010
Tips From the Trademark Insider: Register Your Registered Trademarks with the Major Search Engines.
Have you ever searched your company’s name or one of its trademarks in a major search engine only to see a competitor’s ads come up in the sponsored results? (e.g., A search for Coca Cola brings up a sponsored ad from Pepsi). If so your competitor may be bidding on your company’s name or trademarks as keywords in its pay per click advertising. In doing so they are willfully diverting your customers to their web site. This form of trademark infringement is known as initial interest confusion.
You can take them to court, spend thousands in attorney fees, and maybe win some money in damages at the end of the case. You can also take the far more cost-effective route of registering your registered trademarks with the major search engines so that your competitors cannot bid on your marks as keywords. In fact, if done properly, you can create a situation where only you or your company can bid on your registered marks allowing for instant first-page placement for your company for de minimus pay-per-click costs.
The Trademark Company
You can take them to court, spend thousands in attorney fees, and maybe win some money in damages at the end of the case. You can also take the far more cost-effective route of registering your registered trademarks with the major search engines so that your competitors cannot bid on your marks as keywords. In fact, if done properly, you can create a situation where only you or your company can bid on your registered marks allowing for instant first-page placement for your company for de minimus pay-per-click costs.
The Trademark Company
Friday, February 5, 2010
Tips from The Trademark Insider: Check to See if Your Mark or Slogan Is Available Before You Use It.
We all come up with the perfect new mark or slogan that we absolutely love. We think – this is IT! This is what is going to propel our business to the top. Nothing can stop us now! We begin use of the mark or the slogan. We spend tons of our time and money building the brand. Then one day we get a letter in the mail stating you are infringing on another’s mark. Does this really happen? The answer – all the time.
A true story for your consideration - once we were searching the U.S. Patent and Trademark Office’s records to see if our client could use a mark which literally looked like a plus sign – two perpendicular lines intersecting. The mark was to be used by a major telecommunications company. We thought, how original - doubt we’ll have any problem with this one. Boy were we wrong. There was already another telecommunications company using this exact mark. Wow! What were the odds?
Surprisingly, greater than you would think. No matter how original an idea may be the problem is the law of large numbers. We now live in a world of 6.8 Billion people. So to paraphrase an old joke, even if your idea is one in a million – that means there could be 6,800 ideas just like yours. Ouch.
So how do you avoid these issues? Once you select your trademark or brand identity, it is highly recommended you have a clearance search performed so that you may insure your mark will not be rejected by the United States Patent and Trademark Office (USPTO) or worse, attract a lawsuit from someone already using a similar mark. A preliminary search can let you know if the mark can be registered and may also protect you from lawsuits initiated by others claiming infringement.
So you can throw caution to the wind and hope that you don’t spend years of your life, your blood, sweat, and tears developing your brand only to find out you are infringing upon another’s. Or you could just get a clearance report and put your mind at ease.
Your choice. Choose wisely.
The Trademark Company
A true story for your consideration - once we were searching the U.S. Patent and Trademark Office’s records to see if our client could use a mark which literally looked like a plus sign – two perpendicular lines intersecting. The mark was to be used by a major telecommunications company. We thought, how original - doubt we’ll have any problem with this one. Boy were we wrong. There was already another telecommunications company using this exact mark. Wow! What were the odds?
Surprisingly, greater than you would think. No matter how original an idea may be the problem is the law of large numbers. We now live in a world of 6.8 Billion people. So to paraphrase an old joke, even if your idea is one in a million – that means there could be 6,800 ideas just like yours. Ouch.
So how do you avoid these issues? Once you select your trademark or brand identity, it is highly recommended you have a clearance search performed so that you may insure your mark will not be rejected by the United States Patent and Trademark Office (USPTO) or worse, attract a lawsuit from someone already using a similar mark. A preliminary search can let you know if the mark can be registered and may also protect you from lawsuits initiated by others claiming infringement.
So you can throw caution to the wind and hope that you don’t spend years of your life, your blood, sweat, and tears developing your brand only to find out you are infringing upon another’s. Or you could just get a clearance report and put your mind at ease.
Your choice. Choose wisely.
The Trademark Company
Thursday, February 4, 2010
Tips from The Trademark Insider: Logo Design & Trademark Protection – Have a Policy Regarding Infringement.
You create it. But what happens if IT infringes on another’s pre-existing brand. Generally speaking, logo design and marketing firms have long looked past this issue. You create the greatest logo or slogan for your new client. The only problem – the folks at NIKE don’t like your client’s new campaign JUST DO IT ALL for use in connection with a line of clothing. NIKE sues. Your client could, in turn, sue you for helping to create the slogan or logo which has made NIKE mad (aka alleged infringement of their JUST DO IT slogan).
What to do?
There are ways to handle this issue from incorporating into your price structure a simple trademark clearance search of your logos, slogans, or branding or by simply adding into your contract for service with your client a small hold-harmless clause for issue such as trademark infringement.
But an ounce of prevention can go a long way in protecting you from an unwanted headache down the road so you can focus on what you do best - Branding and Design!
The Trademark Company
What to do?
There are ways to handle this issue from incorporating into your price structure a simple trademark clearance search of your logos, slogans, or branding or by simply adding into your contract for service with your client a small hold-harmless clause for issue such as trademark infringement.
But an ounce of prevention can go a long way in protecting you from an unwanted headache down the road so you can focus on what you do best - Branding and Design!
The Trademark Company
Wednesday, February 3, 2010
Tips from the Trademark Insider: Use Trademark Notices.
Use trademark notices on all trademarks, service marks, and certification marks owned and used by your association (e.g., TM for non-registered marks and ® for registered marks). While trademark notices are not required, their effective use can significantly enhance your intellectual property rights, including eliminating an "innocent infringement" defense.
The Trademark Company
The Trademark Company
Tuesday, February 2, 2010
Tips from the Trademark Insider: Beware of Fraudulent Domain Name Registrars
Purportedly reputable domain name registrars from Honk Kong and other countries in Asia are using a new scheme to drum up domain name registrations among U.S. Trademark registrants.
How it works. U.S. Trademark registrants receive an email from a domain name registrar reporting that they have received an order to register domain names with various TLDs corresponding to the registrant’s registered U.S. Trademarks.
The registrar then reports to the registrant that in searching the U.S. Patent & Trademark Office’s records they “discovered” that the domain names to be registered are identical or highly similar to the trademark holder’s marks.
The registrar then offers the trademark holder the option to register the domain names before the other party does. Unsuspecting trademark holders take the registrar up and register multiple domain names under this veiled threat often for U.S. $50 to U.S. $100 per domain name per year.
In reality this is, at best, a hard marketing sale. At worst, it is a complete scam.
The genius of the plan is that if due diligence is conducted the alleged company referenced in the domain name registrar’s email as the entity which is about to register the domain names actually exists. So the trademark holder believes that their may be an actual threat to their marks.
However, having now witnessed this hundreds of times this routine is truly just a hard sell and U.S. Trademark holders should be aware of this fact before rushing to register such domain names under such an artificial threat.
The Trademark Company
How it works. U.S. Trademark registrants receive an email from a domain name registrar reporting that they have received an order to register domain names with various TLDs corresponding to the registrant’s registered U.S. Trademarks.
The registrar then reports to the registrant that in searching the U.S. Patent & Trademark Office’s records they “discovered” that the domain names to be registered are identical or highly similar to the trademark holder’s marks.
The registrar then offers the trademark holder the option to register the domain names before the other party does. Unsuspecting trademark holders take the registrar up and register multiple domain names under this veiled threat often for U.S. $50 to U.S. $100 per domain name per year.
In reality this is, at best, a hard marketing sale. At worst, it is a complete scam.
The genius of the plan is that if due diligence is conducted the alleged company referenced in the domain name registrar’s email as the entity which is about to register the domain names actually exists. So the trademark holder believes that their may be an actual threat to their marks.
However, having now witnessed this hundreds of times this routine is truly just a hard sell and U.S. Trademark holders should be aware of this fact before rushing to register such domain names under such an artificial threat.
The Trademark Company
Monday, February 1, 2010
Tips from the Trademark Insider: Check to See If Your Mark is Available
Before committing to applying for trademark protection, it is important to check the availability of the proposed mark by conducting appropriate searches. If you cannot afford a comprehensive research report at a minimum perform a search of the U.S. Patent and Trademark Office’s records using the USPTO.gov’s search system to identify registrations for identical or highly similar marks, and attempting to determine whether these marks may be in use. This will provide you with some level of confidence that the mark you select will not be infringing upon another existing mark.
The Trademark Company
The Trademark Company
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