A Start-Up's Guide to Intellectual Property

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

3 Tips for Online Retailers to Avoid Holiday Infringement of Their Trademarks

We are all aware that from time to time others may infringe upon your trademarks. When this occurs, whether by accident or on purpose, it is incumbent upon the trademark holder to enforce their trademark rights to stop all such infringement.

If you are an online retailer the holidays is an especially busy time for online infringement.

Why should you care? Because certain types of infringement can lead to the direct loss of sales by consumers being directed to other web sites when they are looking for yours.

Here are a few tips to make sure this seasonal holiday infringement does not ruin your sales this season:

1. Google Yourself. First and foremost search for your business name of trademark-protected goods or services in the major search engines - especially Google.

2. Sponsored Results. Pay close attention to the sponsored results - those results typically on the top, bottom, and in right-hand column of the search results. If any competitor comes up in the sponsored results when searching your company's name or trademark then they may be bidding on your company's name or trademark as a keyword in pay-per-click advertising. Provided you retain rights in your company's name or trademarks such tactics creates something known as initial interest confusion among relevant consumers and may be against the law. If you witness such results such activity you should immediately take action to enforce your rights to eliminate this confusion before it impacts your sales.

3. Organic Results. Don't just stop there, however. Make sure to look for your competitors when you search for your company's name or trademarks in the organic results as well. If you see any pull up their web site and then right click your mouse and select "View Page Source". This will pull up much if not all of the html language behind the web site. After you have done this perform a quick CTRL F search of the html code to see if your competitor has embedded your company name or trademarks in their html code. If they have once again this will create a situation, as above, known as initial interest confusion which is against the law by being a relevant result in organic results when others are searching for your company or trademarks. As always, if you witness such activity you should immediately take action to enforce your rights to eliminate this confusion before it impacts your sales.

What action should you take? Of course that will depend upon the results of the search, whether there is any such illegal or suspected illegal activity, and the actual rights you retain in your company name and trademarks. But if you do unearth the same contact us immediately so that we may be able to stop the same at once before the impact is felt on your holiday sales.

The Trademark Company

How to Select a Great Trademark

Our clients often ask us for suggestions in selecting a Trademark for their products or services. Our response to the question "How do I select a great trademark?" 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

4 Things Every Trademark Owner Should Know About Monitoring Use Of Their Trademark(s)

If you are a trademark owner did you know that to maintain rights in your mark you are required to police the use thereof?

Unauthorized use of your mark, also known as infringement, diminishes the distinctiveness of a trademark and, correspondingly, reduces your rights in your trademark by diluting it in the marketplace for relevant consumers.

In short, the more trademarks there are out there that look like your mark, the less likely your trademark will be viewed by consumers as an identifier of the source your goods or services.

Whether you have a Trademark Registration or not here are 4 things every trademark owner should know about Monitoring use others are not infringing thereon:

1. USPTO.gov

The United States Patent and Trademark Office (“USPTO”) maintains a moderately user-friendly web site located at USPTO.gov. There users can search the USPTO’s records of pending and registered trademarks using the Trademark Electronic Search System (“TESS”).

For individuals not trained in the more advanced techniques of searching the USPTO’s databases, use of the “New User Form Search (Basic)” is the most user-friendly. Although it may not bring up all of the results that a “Free Form Search (Advanced)” may (e.g., phonetic equivalents (Coco Cola vs. Koka Kola) or foreign translation equivalents (Red Shoes vs. Zapatos Rojos), it is a nevertheless a great, basic, and cost-effective (i.e., free) manner to monitor filings before the USPTO to make sure others are attempting to register trademarks too similar to yours.

2. Search Engines & Google Alerts

Monitoring your trademark(s) on the USPTO will only pick up a fraction of the trademarks that are actually out there and in use. Many entities and/or individuals never file to register trademarks that they are using with the USPTO. As such, to expand your view of trademarks that are actually in use in commerce you should also examine trademarks in use in cyberspace.

In short, monitoring of your trademarks should include regular checks of the major search engines to make sure others, and in particular your competition, have not adopted or are using trademarks similar to yours. There are far too many search engines out there to mention and repeatedly search them all. However, for the purposes of this article we suggest routine searches of the three biggest in the U.S.: Google (@45% of search traffic in the U.S.); Yahoo! (@21%); and Bing (@12%).

Searching for your trademark(s) using these three search engines may identify others wrongful use of trademarks identical or substantially similar to yours. It is also important to note that monitoring of these search engines should not simply be limited to whether someone else has adopted use of a mark which is identical or similar to yours.

Checks should also be conducted to make sure a search of your trademark(s) do not bring up competitor’s sponsored ads (i.e., pay-per-click advertising) which may indicate that your competitors are bidding on your trademark as a keyword.

Moreover, if a competitor and its dissimilar mark ranks highly in non-sponsored or organic search results when you search for your trademark you should examine their html code for their web site to make sure they have not embedded your mark in their html code so that their site appears in search results when consumers are seeking you out online.

Of note, if you do not wish to spend your days fixated searching the Internet for wrongful use of your marks try Google Alerts. Google Alerts allow you to set alerts, delivered via email as frequently as you choose, for any term or combination of terms when Google’s discovers while performing its routine indexing of pages posted on the Internet. It’s a great low-maintenance tool to monitor use of your mark, or wrongful use thereof, on the Internet. Note, it will not alert you to the pay-per-click or html issues referenced above.

3. RSS Feeds & Twitter

Another way to monitor the use of your trademarks online is to follow RSS feeds of relevant blogs and other information in your industry as well as monitoring the use of your trademarks on social media sites like Twitter.

To do this simply identify the most relevant blogs in your industry and monitor them for use of marks similar to yours by subscribing to RSS feeds for these blogs. Additionally, you can set search terms in Twitter and have the same downloaded to your RSS feed as an extra level of protection.

4. State Trademark and Corporate Databases

One final level of monitoring you may wish to undertake is the monitoring of state trademark and corporate databases for filings of new business names or state trademarks which may infringe upon your rights. The good news is that almost every state has an online portal where you can search for business and state trademark filings for free. The bad news, the state web sites are not linked and to search every state’s databases on a routine basis would be quite time consuming.

There are subscription services which allow for the monitoring of all state databases at once. If that is not feasible for you we suggest periodic searches of those states in which your business maintains its most active presence.

As always, there are companies which offer Trademark Monitoring services. However, if you choose to monitor your marks on your own these tips above will provide you with a great road map to get started.

The Trademark Company

The Relationship Between Trademarks and Domain Names

We are often approached by trademark owners concerned that their competition has registered a domain name that is similar to their trademark and is using the same to divert customers away from their own businesses. Here is what you need to know about the relationship between trademarks and domain names and what you can do to protect your trademarks from being used against you in competing domain names.

Registration of a Domain name is Not Trademark Use

As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce. Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.

Many people believe that the registration of a domain name in and of itself creates trademark rights. Simply put, it does not. Look at a domain name like a phone number. It is merely an address on the world wide web where a web site may be located. So the address by itself is just that – an address. It is not a trademark.

Of note, this is not to say that domain name cannot become a trademark. Amazon.com has one of the web’s most recognized trademarks. But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.

Cybersquatting

Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.

There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).

Both systems generally have the same requirements. A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;

2. The registrant does not have any rights or legitimate interests in the domain name; and

3. The registrant registered the domain name and is using it in "bad faith."

In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:

a. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;

b. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;

c. the registrant’s providing misleading false contact information when applying for registration of the domain name; and

d. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.

The UDRP and Its Remedies

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.

In short, if you register a domain name with one of these TLDs, you are subject to the policy.

Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name. These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.

Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership. There are no money damages.

One significant benefit to the system – speed. From start-to-finish cases can often be completed in roughly 8 weeks. In light of the current state of our court systems that is about as fast as you are going to get.

The ACPA and Its Remedies

The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S. Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.

Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system. Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.

However, the remedies under the ACPA are much broader than those under the UDRP. Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.

Summary

So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you. If you just want the domain name pursue the matter under the UDRP. If you want more, a claim under the ACPA will be required.

The Trademark Company