Google & Facebook Take on Patent Trolls

As Posted on Inc.com.

On Friday, December 7, 2012 Google joined other technology giants Facebook, Dell, and Intuit in filing an amicus brief seeking to restrict the validity of certain patents issued by the U.S. Patent and Trademark Office. At issue is whether the U.S. patent protection system should recognize patents for mere abstract ideas in the field of technology.

The brief was filed before the U.S. Court of Appeals for the Federal Circuit in the case CLS Bank International et al. vs. Alice Corp. Pty, Ltd. At issue in CLS is whether a company may secure a patent for an "abstract idea" concerning financial intermediation implemented with a computer. A lower court originally concluded that Alice's claims in their patent were sufficient and, accordingly, held that Alice retained a valid rights allowing them to counter sue CLS in an existing case of infringement. CLS subsequently appealed the ruling to the Federal Circuit, the de facto appellate court for patents in the United States.

Under the Federal Rules of Appellate Procedure a party not involved in a pending appeal may nonetheless file an amicus curie brief when they believe the results of the appeal may have more broad reaching ramifications. Given the potentially far-reaching implications of this case, technology giants jumped at the opportunity to weigh in on the subject.

In short, Google, and those joining them in their amicus brief, have asked that the Federal Circuit reject the notion that technology patents can be issued on what amounts to little more than an abstract idea. The request, in large part, originates from the concept that individuals and companies should not be permitted to secure patent protection for mere general ideas in the absence of more concrete technological claims setting forth how such ideas are, or can be, effectuated.

The broader interest affected is that by permitting rights to be secured in the abstract the rights-holders can potentially abuse the system by using vague patents to bring infringement lawsuits against legitimate innovators who later develop technology that could arguably fall within the scope of aforementioned patents.

Effectively the larger players in the technology industries contend that the allowance of such general patents has created a cottage industry for lawsuits by such patent holders against companies who legitimately invest in and develop their own technology. The result is that when these companies are sued by these so-called patent trolls they must pass the cost on to the end consumer effectively creating a surtax on legitimate innovation while simultaneously discouraging investment the same.

The technology giant's arguments may be ripe for a win. Already this year the U.S. Patent and Trademark Office issued a preliminary ruling declaring a key Apple patent covering touch screen devices invalid along similar lines as are at issue in CLS. Patent number 7,479,949, or the Steve Jobs Patent, is still in effect, but if the U.S. Patent and Trademark Office's ruling is upheld, it could spell trouble for Apple's ongoing patent fights with Samsung and Motorola.

In a larger context, however, the preliminary invalidation of the Steve Jobs Patent may suggest a shift in the way the U.S. Patent and Trademark Office, and federal courts in general, are moving towards in regard to patent protection. The end of the vague patent may be at hand.

Whatever the case, CLS will be closely watched by industry insiders as it may set the tone for a key reform in the patent protection system in the United States for years to come.

Why Good Bosses Keep Their Word

As Published on Inc.com on December 12, 2012.

Today I was sitting in my office when one of my right-hand people came in and said "I'm going to lunch now." I replied, "Okay," but somewhat indifferently because normally people in my department do not check in with me before heading to lunch.

"I'm going to lunch because you did not get us pizza today," she continued. I was focusing my attention on something else, but this made me look up.

She went on, "You said yesterday that because we were short-staffed and had a deadline that we all pulled together on, that you might order pizzas and have a pizza party for lunch. So I planned on having a pizza party today and did not bring my lunch." Whoops,  I did vaguely recalled saying that to her, but I had forgotten until now.

I quickly said, "I'm so sorry. I completely forgot. Let me buy you lunch. Who else knows?"

"I don't need lunch," she quickly replied. "Just wanted to let you know."

The experience was a reminder of this: when you are the boss you may not remember everything that you say, but your employees do.

So be careful when you speak or make promises. You may mean things as puffery, but there is no such thing in their minds.

I have a bad habit of doing this that often gets me into trouble. A few years ago we were at an office happy hour, and I had been enjoying myself just a little bit too much. The subject of Las Vegas came up as a general destination for travel. Soon thereafter we were discussing our company's ten-year anniversary. Well, one thing led to another and soon I announced that we would consider a Vegas trip for our ten-year anniversary for all employees. At the time we were a relatively small company. In the 18 months since that original proclamation we have quadrupled in size. And a simple alcohol-infused idea has become a reality, and in July the entire company will be heading to Las Vegas for our ten-year anniversary.

So I am reminded be mindful of what I say. When speaking to employees, always remember:

1. Think Before You Speak

Seems so easy, doesn't it? But every word that comes out of your mouth has meaning. And they will rely on it. So always make sure you think before you speak and you consider the ramifications of any promises or decisions before they are articulated. 

2. Pull It Back Immediately

If you find yourself in a situation where you speak before you think and you extend a promise before considering the ramifications immediately act to pull back that promise. The longer you wait to say, "I have rethought this" or "We cannot do that" the more push back you will get from the persons who were to be the beneficiaries of the promise.

3. Keep Your Word

Assuming that you make a promise and do not pull it back immediately you must keep your word. You must satisfy the expectations of that promise. If not, it erodes the employer-employee relationship by infusing an element of distrust and lack of accountability.

The Trademark Company

How to Select a Great Trademark

As a former trademark examining attorney for the U.S. Patent and Trademark Office and founder of The Trademark Company I am often asked for suggestions on how to select a great trademark by our start-up business customers. The response is always the same, "It depends on what you want out of your trademark."

There are two schools of thought in selecting a great trademark that every new business must consider. On one hand do you want to use a completely coined name? Something that no one has ever heard of such as GOOGLE or EBAY.

On the other, do you want a trademark that creates instant interest in the product or service because it tells your prospective customers what you provide and what they’ll get (e.g., FROSTED MINI WHEATS for breakfast cereals, VISION CENTER for retail store services featuring eyewear).

Both schools of thought have their benefits. Both also have their detriments.

So which should you choose? Like I said above, it depends upon what you are looking for out of your trademark.

Coined trademarks, those that are completely made up, are the strongest form of trademarks and, in theory, the easiest to protect (e.g., Google, eBay, Hulu, etc.). But beware, although easier to protect, such trademarks do not tell the consumer what you do or what goods or services you provide. As such, if you intend to coin your own trademark be ready to spend more to promote your brand name as there will not be instant recognition by consumers of what you do or provide.

Descriptive trademarks, on the other hand, provide the owner with instant recognition for what their brand does (e.g., NEW YORK PIZZERIA). This comes at a cost, however. Descriptive trademarks are very hard to enforce and, as a result, may not provide the owner the ability to enforce their trademarks (e.g., the owner of NEW YORK PIZZERIA, more likely than not, cannot stop someone else from using NEW YORK CITY PIZZERIA even though the trademarks are very similar).

As such, if you are looking to adopt a trademark that instantly drums up interest in your goods or services and will cost less to brand adopting a descriptive trademark may be best for you. You simply need to know that the rights you will acquire in any such trademark may never entitle you to exclude others from the use of similar trademarks.

So in the end how do you select a great trademark? It depends. What are you looking for?

The Trademark Company

Why Registering Your Trademarks is Money Well Spent.

Every day we are asked "How much does it cost to receive a U.S. Trademark Registration?"  In reality it is not that expensive.  More importantly, given the cost to re-brand if you do not and can you afford not to? 


Government Filing Fees

The United States Patent and Trademark Office (“USPTO”) charges either $275 or $325 per class of goods or services to file an application for a U.S. Trademark Registration. Whether the cost per class is $275 or $325 depends upon system the applicant uses at the USPTO.

The traditional filing system, known as the TEAS system, permits applicants to write their own identification of goods or recitation of services with which they wish their trademark to be registered. For instance, Nike would seek registration for a trademark using an identification of goods such as “athletic shoes” in International Class 25. If Nike writes their own identification of goods using the TEAS system the cost is $325 per class of goods or services in which the application is filed.
We’ll explain below what “per class” means.

As an alternative to the traditional system, in recent years the USPTO initiated a new system known as the TEAS PLUS system. The TEAS PLUS system is designed to both reduce the cost of the trademark process while speeding up the registration process. In this regard, provided that applicants meet certain specific criteria and use only identifications of goods or recitations of services from a pre-approved list the cost to register their marks is reduced from $325 to $275 per class of goods or services.

Accordingly, the base price to apply to register a trademark with the USPTO is either $325 or $275 depending upon which system is used.  Of course we here at The Trademark Company almost always are able to get our customers the lower filing fee of $275 per class.

U.S. Filing Fees Are Per Class

Next, applicants should understand that the USPTO’s filing fees are per class. U.S. Trademark Registrations are goods or services specific. This means that when you seek a U.S. Trademark Registration you must specify the goods or services with which the trademark is, or will be, used.

For instance, Nike undoubtedly owns registrations for NIKE in Class 25 for running shoes whereas McDonalds retains registrations in Class 42 or 43 for restaurants.

There are currently 45 classes of goods and services recognized by the USPTO. Goods and services are defined into these 45 specific classes to both create certainty for the USPTO in regard to the goods or services for which specific Trademark Registrations will apply but also to allow for greater uniformity among international trademark offices of various countries as the world moves toward a unified global system of trademark protection.

As such, an application by a music band who also intends to sell CDs of their music would apply to register a mark in two classes:

Class 9: Pre-recorded music CDs.

Class 41: Live performances by a music band.

If they file using the TEAS system, their total filing fees would be $650 (2 classes x $325 per class). In the alternative, if they are able to use the TEAS PLUS system their filing fees would be reduced to $550 (2 classes x $275 per class).

As such, prospective applicants must be savvy in regard to not only the system which they use but also the classification system and how many classes their requested application may fall into to understand the true cost of the U.S. Trademark Registration for which they seek.

The Distinction Between Use and Intent-to-Use Applications

Next, if your trademark is in use at the time of filing the application should be filed as a use-based application under what is known as Section 1(a). However, if the trademark is not in use as of the date of filing it is required to be filed as an intent-to-use application under Section 1(b). If it is filed as an intent-to-use mark, additional fees will apply in order to get the mark registered.

In short, should the USPTO deem the application worthy of registration rather than receiving a Certificate of Registration like a use-based application, an intent-to-use application receives what is known as a Notice of Allowance.

The Notice of Allowance is akin to a permission slip which allows the applicant to complete the registration process and receive its Certificate of Registration upon filing what is known as a Statement of Use. This subsequent filing, however, requires an additional charge of $100 per class of goods and services.

Accordingly, if you have a 2-class intent-to-use application filed under the TEAS system the fees to register the mark would look something like this:

Application Fee = $650 (2 x $325);

Statement of Use Fee = $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use Application = $850.

But it does not end here. We mentioned above that to file the Statement of Use costs $100 per class. Of note, from the date of the Notice of Allowance an applicant has only 6 months to file their Statement of Use establishing use of the mark. If the mark is yet to be in use by this date an applicant may file for an extension of time in which to file their Statement of Use. An extension of time to file the Statement of Use costs $150 per class. An applicant may file up to 5 extension requests per mark or may extend the due date of the Statement of Use for up to 2 and one half years (5 x 6 months) following the conclusion of the initial Notice of Allowance Period.

So let’s look back at our example above changing the situation slightly to reflect a need to file the Statement of Use 8 months after receiving the Notice of Allowance. Recall, this would require one extension of time to file the Statement of Use as an applicant is only permitted 6 months to file the same following receipt of the Notice of Allowance. Under that scenario the same would look something like this:

Application Fee = $650 (2 x $325);

Extension of Time in Which to File Statement of Use = $300 (2 x $150);

Statement of Use Fee = $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use
Application with One Extension of Time = $1150.

As you can see, the base price to apply for a U.S. Trademark Registration can vary widely depending upon the (1) USPTO system used, (2) the number of classes for which the application is made, (3) whether the application is use-based or an intent-to-use, and (4) whether, if an intent-to-use, an extensions of time are required prior to filing the Statement of Use.

Law Firms and Online Filing Services

We would be remiss if we did not mention the cost of assistance in the trademark filing process. The cost to have a law firm and/or filing service file for a trademark on your behalf typically ranges from $149 to well over $3000 depending upon the size of the firm or company and the level of experience they retain in the trademark arena.

The obvious expense to using a law firm or filing service is the additional costs involved in employing the same. The benefits, however, typically far outweigh the burden of the costs insofar as a skilled firm can not only reduce or minimize the costs involved as referenced above but also retain invaluable experience in what can be a complex system to garner a U.S. Trademark Registration.

Often the cost of the legal services are fully offset by the firm or company’s ability to have an applicant’s application filed in the TEAS PLUS system versus the TEAS system, reducing the number of classes filed for, and even working with the applicant to determine whether an application may be filed as a use-based application versus an intent-to-use or otherwise.

Moreover, as the USPTO’s filing fees are non-refundable most consumers prefer the added confidence of knowing that their application is being prepared and prosecuted by a seasoned professional.

Infringement and Re-Branding

One of the main reasons businesses decide to register their trademarks is for security.  Security in knowing their brand has been vetted by the USPTO.  Security in knowing that they have quieted title in their brand.  Security in knowing that with a U.S. trademark registration a company is far less likely to be forced to re-brand due to infringing upon another company's trademark.

After all, no matter what the cost of the registration may be above, there can be no doubt that it is far less than the cost to re-brand after years of building your brand under your trademark.  Moreover, this does not even address the loss of business goodwill your company will experience by losing its name.


Summary

In conclusion, there is much to know about the costs involved in filing for a trademark. Whether it is that the costs involved are dependent upon the filing system used, the number of classes filed for, or whether the application is filed once use has begun or not will all affect the price of your trademark application. Additionally, most consumers prefer to rely upon the experience of seasoned professional to sort through the filing costs, reduce filing fees whenever possible, and advise them as to the availability of their mark prior to incurring non-refundable filing fees.

Without assistance, the cost for a U.S. Trademark Registration can be as low as $275 for a one-class mark filed using the TEAS PLUS system. However, if the applicant does not satisfy all of the requirements of the TEAS PLUS system additional fees will apply.

In the alternative, applicants may seek to assistance from an experienced law firm to assist in the registration process. In that case they should expect the lowest cost to be in the nature of $424 for a One-Class Mark filed using the TEAS PLUS system ($275 for the USPTO filing fee, $149 for the law firm’s services).

But there can be no doubt that the costs of trademark registration are clearly justified when you consider the alternatives that could result if you do not protect your brand.  So get your trademarks registered.  It is well-worth the expense.

TheTrademarkCompany.com

Is the Cost to Register a Trademark Going Down?

August 22, 2012

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) is considering lowering trademark application fees for all applicants willing to file and communicate electronically with the USPTO.

Specifically, the USPTO is considering encouraging complete electronic communications by reducing the TEAS Plus filing fee, which currently stands at $275 per class. TEAS Plus is the least expensive application option, and requires electronic communication as well as a complete application and pre-approved identification of goods/services upon filing.  It is the option used by The Trademark Company for the vast majority of its clients.


While 99% of applicants file under TEAS or TEAS Plus, only 76% of applications remain fully electronic throughout the entire process. To increase efficiency, the USPTO is looking to incentivize end-to-end electronic processing.

While these changes may not be placed into effect until next year, if at all, when, and if, they occur, The Trademark Company will always pass along these savings to our customers so that they continue to incur the lowest filing costs possible.



The Trademark Company

What’s in a Name? Everything. So Protect It!

Are your trademarks protected?  Are they really protected?  Is the brand you are about to launch secured?

All too often businesses launch without considering “Can I use this name?”  “Is it legal to use that slogan?”  And it can cost you.  It can cost you plenty.

When deciding upon a new business or a new product or service line for your existing business always make sure to (1) clear use of the trademark or slogan and then (2) protect it with the U.S. Patent and Trademark Office.

If you do not clear use of the trademark, your brand name, you could be adopting a trademark that is confusingly similar to another’s to the point that weeks, months, or years after launch – after your brand is becoming successful – you may be forced to abandon your trademark and re-name the product or your company entirely.  So be smart.  Clear the use of your new trademark before you start using it.   

You will be glad you did.

Second, once it is clear file and protect it with the U.S. Patent and Trademark Office.  This way you will quiet title in the trademark according to the official government agency charged with the registration of trademarks here in the U.S.  Registration of your trademark not only puts all on notice in the U.S. of your claimed rights in the trademark but also makes the enforcement thereof far simpler and more effective.

So don’t spend your blood, sweet, and tears developing a brand that could infringe upon another.  Pick a trademark that is available and then protect it.

The Trademark Company

The Trademark Company Named to Inc. 500|5000 List of the Fastest–Growing Private Companies in America

We were pleased to learn today that for the 3rd straight year The Trademark Company has made the Inc. 500|5000 list of the fastest–growing private companies in America.

With this accomplishment The Trademark Company joins the rarefied company of enterprises that have appeared on the Inc. Magazine annual list multiple times, many of which have grown to become national icons.

We here at The Trademark Company would like to extend our heart-felt thanks to all of those who have worked so hard to achieve this distinction and to our customers for being our driving force to work even harder on their behalf.

The Trademark Company

Patents, Copyrights and Trademarks: What a Start-Up Needs to Know

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

How to Select a Great Trademark

As a former trademark examining attorney for the U.S. Patent and Trademark Office and founder of The Trademark Company I am often asked for suggestions on how to select a great trademark by our start-up business customers. The response is always the same, "It depends on what you want out of your trademark."

There are two schools of thought in selecting a great trademark that every new business must consider. On one hand do you want to use a completely coined name? Something that no one has ever heard of such as Google or eBay.

On the other, do you want a trademark that creates instant interest in the product or service because it tells your prospective customers what you provide and what they’ll get (e.g., FROSTED MINI WHEATS for breakfast cereals, VISION CENTER for retail store services featuring eyewear).

Both schools of thought have their benefits. Both also have their detriments.

Which should you choose? Like I said above, it depends upon what you are looking for out of your trademark. Coined trademarks, those that are completely made up, are the strongest form of trademarks and, in theory, the easiest to protect (e.g., Google, eBay, Hulu, etc.). But beware, although easier to protect, such trademarks do not tell the consumer what you do or what goods or services you provide. As such, if you intend to coin your own trademark be ready to spend more to promote your brand name as there will not be instant recognition by consumers of what you do or provide.

Descriptive trademarks, on the other hand, provide the owner with instant recognition for what their brand does (e.g., NEW YORK PIZZERIA). This comes at a cost, however. Descriptive trademarks are very hard to enforce and, as a result, may not provide the owner the ability to enforce their trademarks (e.g., the owner of NEW YORK PIZZERIA, more likely than not, cannot stop someone else from using NEW YORK CITY PIZZERIA even though the trademarks are very similar). As such, if you are looking to adopt a trademark that instantly drums up interest in your goods or services and will cost less to brand adopting a descriptive trademark may be best for you. You simply need to know that the rights you will acquire in any such trademark may never entitle you to exclude others from the use of similar trademarks.

So in the end how do you select a great trademark? It depends. What are you looking for?

The Trademark Company

How to Get a Google Monopoly on Your Brand

Did you know that Google is every bit as concerned as you are that some other company may infringe upon their company’s trademark? What is infringement and why should I care, you may ask.

Trademark infringement, at its core, is when one party adopts a trademarhttp://www.blogger.com/img/blank.gifk that is confusingly similar to the trademark of another. They do this because, in essence, they want to create confusion in the marketplace among consumers so they can steal customers from the original trademark holder.

Infringement takes many forms. In the good old days it may simply have been opening up a brick and mortar store front with a name for the store that was confusingly similar to an established brand. Who doesn’t recall the restaurant McDougal’s from the movie Coming to America and its shockingly similar appearance to the iconic McDonald’s brand. A perfect example of infringement to its core.

But in today’s increasingly global economy brands face new challenges as infringers have moved online. Most people are familiar with what has become known as cybersquatting, where some unscrupulous person registers a domain name that is similar to another’s established trademark rights. Squatters may sell competing products from a site posted to that domain or merely use the domain as an automatic redirect to the other’s competing web site. But there are far more subtle ways people can infringe upon your brand online that, when spotted, must be handled swiftly.

One such form of infringement is by bidding on your brands or trademarks as keywords in pay-per-click advertising.

As the readers of this article may or may not know, Google and the other search engines derive revenue by and through their pay-per-click advertising programs. When you search for a term your search results will bring up both organic (e.g., results the search engine deems to be the most relevant to your search terms via a secret algorithm each search engine respectively employs) as well as sponsored (e.g., results that are paid advertising typically appearing above and to the left of the organic returns) results.

Sponsored results and the ads that appear therewith are returned because the persons or companies who place the ads bid on specific keywords that, when searched, display those sponsored results as well as the organic as referenced above.

Returning to our discussion on modern-day infringement, today one well-recognized form of infringement occurs against your brand when a competitor of yours bids on your trademark as a pay-per-click keyword such that when consumers search for your goods or services online your competitor’s advertisements will appear in the sponsored results.

For instance, and this is just a hypothetical for the purposes of this article, let’s say Pepsi wants to drive potential customers to its web site every time someone searches for Coca Cola. What they could do is open a pay-per-click account with Google or another search engine and bid on the keywords “Coca Cola.” Then every time a consumer searches on that search engine for “Coca Cola” Pepsi’s ad would appear in the sponsored results.

Well, fortunately for trademark holders, this is against the law insofar as it creates a form of infringement known generally as initial interest confusion. What can you do to stop it and protect your brand online? Simply follow three steps to create a Google pay-per-click monopoly for your brand:

1. Assemble a list of your trademarks

Depending upon the size of your organization, this may be as simple as your company’s name or as complex as the name and multiple trademarks used to identify your company’s various goods, services, and advertising campaigns.

2. Registered and unregistered trademarks

In assembling the list of your trademarks, determine which are registered with the U.S. Patent and Trademark Office and which are not. For those that are registered it is highly recommended that you have their registration number available. For those that are not, it is advisable to get an application on file to protect the same prior to the next step as Google is more likely to respect your trademark rights if you retain an application or registration number from the U.S. Patent and Trademark Office.

3. General complaint

File a general trademark complaint with Google using Google Adwords Trademark Complain Form. Google will then investigate your claimed rights in the trademarks submitted and, if such is able to be verified, will then preclude others from bidding on your trademarks in pay-per-click advertising and diverting your customers away from your web site using your own trademarks against you.

So go online and get that Google pay-per-click monopoly for your brands. It’s just that simple.

The Trademark Company

IP Law 101: What a Start-Up Needs to Know About the 3 Types of IP Rights

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

How Do You Acquire Rights in a Trademark? Here's What You Need to Know.

One of the most popular questions we receive here at The Trademark Company is when do you acquire rights in a trademark?

In the United States there are two ways that you can acquire federal trademark rights. First, you can acquire rights by using the trademark in interstate commerce. Second, you can acquire rights by filing to protect the trademark with the U.S. Patent and Trademark Office.

In regard to use-based acquisition, a person or entity acquires rights in any trademark they begin use of in interstate commerce for the purpose of identifying their goods or services. In short, when McDonald's first started selling hamburgers way back when they did not have to file to protect their trademark with the U.S. Patent and Trademark Office. They acquired rights as soon as their restaurant services began affecting interstate commerce.

On the other end of the spectrum, once you file for protection of your trademark with the U.S. Patent and Trademark Office and provided that the application matures into a registration your trademark rights will revert back to the date of the filing of your trademark application.

So we truly have a two-way acquisition system here in the U.S. for trademark rights: use and filing.

Many will then ask why then should we register our trademarks? Well, for a relatively modest fee the registration of your trademarks in large part quiets title for you in the trademark, makes it far easier to enforce the same, and provides the holder thereof with a host of additional remedies in the event the trademark is ever infringed upon.

So if you are using a trademark get it registered. It will deter others from infringing upon the same and provide you with a host of additional remedies should enforcement ever be required. If you are yet to begin use of a new trademark but know what you want to use therefor file an intent-to-use application with the U.S. Patent and Trademark Office as soon as possible. You will be glad that you did.

The Trademark Company

When Do You Acquire Rights in a Trademark? Here's What You Need to Know.

One of the most popular questions we receive here at The Trademark Company is when do you acquire rights in a trademark?

In the United States there are two ways that you can acquire federal trademark rights. First, you can acquire rights by using the trademark in interstate commerce. Second, you can acquire rights by filing to protect the trademark with the U.S. Patent and Trademark Office.

In regard to use-based acquisition, a person or entity acquires rights in any trademark they begin use of in interstate commerce for the purpose of identifying their goods or services. In short, when McDonald's first started selling hamburgers way back when they did not have to file to protect their trademark with the U.S. Patent and Trademark Office. They acquired rights as soon as their restaurant services began affecting interstate commerce.

On the other end of the spectrum, once you file for protection of your trademark with the U.S. Patent and Trademark Office, and provided that the application matures into a registration, your trademark rights will revert back to the date of the filing of your trademark application.

So we truly have a two-way acquisition system here in the U.S. for trademark rights: use and filing.

Many will then ask why then should we register our trademarks? Well, for a relatively modest fee the registration of your trademarks in large part quiets title for you in the trademark, makes it far easier to enforce the same, and provides the holder thereof with a host of additional remedies in the event the trademark is ever infringed upon.

So if you are using a trademark get it registered. It will deter others from infringing upon the same and provide you with a host of additional remedies should enforcement ever be required. If you are yet to begin use of a new trademark but know what you want to use it in connection with file an intent-to-use application with the U.S. Patent and Trademark Office as soon as possible. You will be glad that you did.

The Trademark Company

What’s in a Name? Everything. So Protect It!

Are your trademarks protected?  Are they really protected?  Is the brand you are about to launch secured?

All too often businesses launch without considering “Can I use this name?”  “Is it legal to use that slogan?”  And it can cost you.  It can cost you plenty.

When deciding upon a new business or a new product or service line for your existing business always make sure to (1) clear use of the trademark or slogan and then (2) protect it with the U.S. Patent and Trademark Office.

If you do not clear use of the trademark, your brand name, you could be adopting a trademark that is confusingly similar to another’s to the point that weeks, months, or years after launch – after your brand is becoming successful – you may be forced to abandon your trademark and re-name the product or your company entirely.  So be smart.  Clear the use of your new trademark before you start using it.   

You will be glad you did.

Second, once it is clear file and protect it with the U.S. Patent and Trademark Office.  This way you will quiet title in the trademark according to the official government agency charged with the registration of trademarks here in the U.S.  Registration of your trademark not only puts all on notice in the U.S. of your claimed rights in the trademark but also makes the enforcement thereof far simpler and more effective.

So don’t spend your blood, sweet, and tears developing a brand that could infringe upon another.  Pick a trademark that is available and then protect it.

The Trademark Company

Is Your Business Suffering From This Silent Killer?

As featured on Inc.com on May 30, 2012.

It's out there right now. Lurking in the shadows of your success. Hiding where you least expect to find it, a great balance sheet. It is the silent business killer that strikes without warning and can bring even the biggest and the brightest companies to their knees. What is this hidden terror of which I speak? Complacency.

Don't think it can happen? It does, every day. It happens to small businesses. It happens to the big and mighty. It cares not of your size, length in business, or otherwise. It cares only of the cold, hard reality that while you were satisfied somebody else was not and they took your business model and made it better, leaner, and their product more attractive to your consumer base.

Look at Research in Motion ("RIM"), the maker of the once iconic BlackBerry. A scant 10 years ago they were merely a scrappy upstart with a truly innovative idea: let's give people the ability to get their email messages on the go. This idea, and the underlying technology, propelled RIM to the forefront of mobile communications. Within a few years they were no longer the scrappy upstart but the market leader. But a funny thing sometimes happens when you are the market leader. You are so busy looking forward and enjoying your success you forget to check your rear-view mirror.

While RIM was focused on simply staying the course with their email push technology a little company named Apple was focused on delivering an entirely new kind of product. A multimedia and technological wonder known as the iPhone that could deliver your emails just like the BlackBerry but was cooler, hipper, more stylish. People wanted one and wanted to be seen with one. Then, as BlackBerry raced to catch up with the iPhone they were blindsided by the Android operating system.

From scrappy upstart to market leader to the free fall they have experienced in the past 18 months, RIM has seen it all. If only they had seen it coming and had not been complacent when they were on top. If only they had spent time looking where the market was going. If only.

So don't wait for your if only. Avoid complacently always. Avoiding complacency is essential to any business's long-term longevity. Here's how you avoid it:

1. Practice reasonable paranoia

Someone is always coming for you. Someone is always figuring out a better way to do what you do. So practice reasonable paranoia. Don't loose sleep over the fact that once you are established someone will eventually target your customers and try to take away part or all of your market share. But also do not be blind to that fact. Practicing reasonable paranoia will keep your business fresh and out in front of the competition by ingraining into your business that you must always strive to be better because someone else is right now. They're out there. Trust me.

2. Look in the rear view mirror

When you're in the lead it is often difficult to see who is behind you. So what? Look anyways. Who is your closest competitor? Your closest three? Five? What are they doing now and what are they planning? Don't obsess. Ultimately you have to run your business. But that does not mean you cannot take an occasional look over your shoulder to see what they are up to so when someone starts gaining on you your company will be ready to react.

3. You can always do better

But if you always wait to react ultimately there will come a time when you will not be able to do so in time. As such, you must always recognize that you can do better. No one's perfect. A product can always be improved. A service improved upon. If you ever get to the point where you say it is 100% perfect the way that it is you're not looking hard enough. Be proud of what you provide to your consumer. But staying out in front is about challenging yourself to find better enhancements, better or cheaper service, and to strive to always do better even before you are forced to react to a competitor's challenge.

4. Listen for fresh ideas

Think you know it all? Wrong. Anyone who does will fall to the complacency bug. Rather, solicit ideas from others in your company and existing customers alike. They'll tell you want they like and, perhaps most importantly, what they do not. For in the end if you are too busy patting yourself on the back you can't hear the next great idea which may not even come from you.

How to Select a Great Trademark.

As a former trademark examining attorney for the U.S. Patent and Trademark Office and founder of The Trademark Company I am often asked for suggestions on how to select a great trademark by our start-up business customers. The response is always the same, "It depends on what you want out of your trademark."

There are two schools of thought in selecting a great trademark that every new business must consider. On one hand do you want to use a completely coined name? Something that no one has ever heard of such as GOOGLE or EBAY.

On the other, do you want a trademark that creates instant interest in the product or service because it tells your prospective customers what you provide and what they’ll get (e.g., FROSTED MINI WHEATS for breakfast cereals, VISION CENTER for retail store services featuring eyewear).

Both schools of thought have their benefits. Both also have their detriments.

So which should you choose? Like I said above, it depends upon what you are looking for out of your trademark.

Coined trademarks, those that are completely made up, are the strongest form of trademarks and, in theory, the easiest to protect (e.g., Google, eBay, Hulu, etc.). But beware, although easier to protect, such trademarks do not tell the consumer what you do or what goods or services you provide. As such, if you intend to coin your own trademark be ready to spend more to promote your brand name as there will not be instant recognition by consumers of what you do or provide.

Descriptive trademarks, on the other hand, provide the owner with instant recognition for what their brand does (e.g., NEW YORK PIZZERIA). This comes at a cost, however. Descriptive trademarks are very hard to enforce and, as a result, may not provide the owner the ability to enforce their trademarks (e.g., the owner of NEW YORK PIZZERIA, more likely than not, cannot stop someone else from using NEW YORK CITY PIZZERIA even though the trademarks are very similar).

As such, if you are looking to adopt a trademark that instantly drums up interest in your goods or services and will cost less to brand adopting a descriptive trademark may be best for you. You simply need to know that the rights you will acquire in any such trademark may never entitle you to exclude others from the use of similar trademarks.

So in the end how do you select a great trademark? It depends. What are you looking for?

The Trademark Company

Trademark, Patent, and Copyright Protection for Your Business: What You Need to Know

We are often asked do I need a trademark?  What's the difference between a trademark and a copyright?  Can I patent my business name?

Many new and existing businesses need to know how to protect their trademarks, copyrights, and patents but often they lack a fundamental understanding of the three main segments of intellectual property such that they do not even know where to begin.  To that end, here’s a quick rundown of the various protections every business should be aware of to protect its 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)

We hope that this brief overview helps so that you now know what can be protected and what cannot.  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

How Much Does it Cost to Register a Trademark? Here's What You Need to Know.

How much does it cost to receive a U.S. Trademark Registration? Here is what you need to know about the costs involved in registering a trademark in the U.S.

The ETEAS and ETEAS PLUS Systems

The United States Patent and Trademark Office (“USPTO”) charges either $275 or $325 per class of goods or services to file an application for a U.S. Trademark Registration. Whether the cost per class is $275 or $325 depends upon system the applicant uses at the USPTO.

The traditional filing system, known as the TEAS system, permits applicants to write their own identification of goods or recitation of services with which they wish their trademark to be registered. For instance, Nike would seek registration for a trademark using an identification of goods such as “athletic shoes” in International Class 25. If Nike writes their own identification of goods using the TEAS system the cost is $325 per class of goods or services in which the application is filed.
We’ll explain below what “per class” means.

As an alternative to the traditional system, in recent years the USPTO initiated a new system known as the TEAS PLUS system. The TEAS PLUS system is designed to both reduce the cost of the trademark process while speeding up the registration process. In this regard, provided that applicants meet certain specific criteria and use only identifications of goods or recitations of services from a pre-approved list the cost to register their marks is reduced from $325 to $275 per class of goods or services.

Accordingly, the base price to apply to register a trademark with the USPTO is either $325 or $275 depending upon which system is used.

U.S. Filing Fees Are Per Class

Next, applicants should understand that the USPTO’s filing fees are per class. U.S. Trademark Registrations are goods or services specific. This means that when you seek a U.S. Trademark Registration you must specify the goods or services with which the trademark is, or will be, used.

For instance, Nike undoubtedly owns registrations for NIKE in Class 25 for running shoes whereas McDonalds retains registrations in Class 42 or 43 for restaurants.

There are currently 45 classes of goods and services recognized by the USPTO. Goods and services are defined into these 45 specific classes to both create certainty for the USPTO in regard to the goods or services for which specific Trademark Registrations will apply but also to allow for greater uniformity among international trademark offices of various countries as the world moves toward a unified global system of trademark protection.

As such, an application by a music band who also intends to sell CDs of their music would apply to register a mark in two classes:

Class 9: Pre-recorded music CDs.

Class 41: Live performances by a music band.

If they file using the TEAS system, their total filing fees would be $650 (2 classes x $325 per class). In the alternative, if they are able to use the TEAS PLUS system their filing fees would be reduced to $550 (2 classes x $275 per class).

As such, prospective applicants must be savvy in regard to not only the system which they use but also the classification system and how many classes their requested application may fall into to understand the true cost of the U.S. Trademark Registration for which they seek.

The Distinction Between Use and Intent-to-Use Applications

Next, if your trademark is in use at the time of filing the application should be filed as a use-based application under what is known as Section 1(a). However, if the trademark is not in use as of the date of filing it is required to be filed as an intent-to-use application under Section 1(b). If it is filed as an intent-to-use mark, additional fees will apply in order to get the mark registered.

In short, should the USPTO deem the application worthy of registration rather than receiving a Certificate of Registration like a use-based application, an intent-to-use application receives what is known as a Notice of Allowance.

The Notice of Allowance is akin to a permission slip which allows the applicant to complete the registration process and receive its Certificate of Registration upon filing what is known as a Statement of Use. This subsequent filing, however, requires an additional charge of $100 per class of goods and services.

Accordingly, if you have a 2-class intent-to-use application filed under the TEAS system the fees to register the mark would look something like this:

Application Fee = $650 (2 x $325);

Statement of Use Fee = $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use Application = $850.

But it does not end here. We mentioned above that to file the Statement of Use costs $100 per class. Of note, from the date of the Notice of Allowance an applicant has only 6 months to file their Statement of Use establishing use of the mark. If the mark is yet to be in use by this date an applicant may file for an extension of time in which to file their Statement of Use. An extension of time to file the Statement of Use costs $150 per class. An applicant may file up to 5 extension requests per mark or may extend the due date of the Statement of Use for up to 2 and one half years (5 x 6 months) following the conclusion of the initial Notice of Allowance Period.

So let’s look back at our example above changing the situation slightly to reflect a need to file the Statement of Use 8 months after receiving the Notice of Allowance. Recall, this would require one extension of time to file the Statement of Use as an applicant is only permitted 6 months to file the same following receipt of the Notice of Allowance. Under that scenario the same would look something like this:

Application Fee = $650 (2 x $325);

Extension of Time in Which to File Statement of Use = $300 (2 x $150);

Statement of Use Fee = $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use
Application with One Extension of Time = $1150.

As you can see, the base price to apply for a U.S. Trademark Registration can vary widely depending upon the (1) USPTO system used, (2) the number of classes for which the application is made, (3) whether the application is use-based or an intent-to-use, and (4) whether, if an intent-to-use, an extensions of time are required prior to filing the Statement of Use.

Law Firms and Filing Services

Lastly, we would be remiss if we did not mention the cost of assistance in the trademark filing process. The cost to have a law firm and/or filing service file for a trademark on your behalf typically ranges from $149 to well over $3000 depending upon the size of the firm or company and the level of experience they retain in the trademark arena.

The obvious expense to using a law firm or filing service is the additional costs involved in employing the same. The benefits, however, typically far outweigh the burden of the costs insofar as a skilled firm can not only reduce or minimize the costs involved as referenced above but also retain invaluable experience in what can be a complex system to garner a U.S. Trademark Registration.

Often the cost of the legal services are fully offset by the firm or company’s ability to have an applicant’s application filed in the TEAS PLUS system versus the TEAS system, reducing the number of classes filed for, and even working with the applicant to determine whether an application may be filed as a use-based application versus an intent-to-use or otherwise.

Moreover, as the USPTO’s filing fees are non-refundable most consumers prefer the added confidence of knowing that their application is being prepared and prosecuted by a seasoned professional.

Summary

In conclusion, there is much to know about the costs involved in filing for a trademark. Whether it is that the costs involved are dependent upon the filing system used, the number of classes filed for, or whether the application is filed once use has begun or not will all affect the price of your trademark application. Additionally, most consumers prefer to rely upon the experience of seasoned professional to sort through the filing costs, reduce filing fees whenever possible, and advise them as to the availability of their mark prior to incurring non-refundable filing fees.

Without assistance, the cost for a U.S. Trademark Registration can be as low as $275 for a one-class mark filed using the TEAS PLUS system. However, if the applicant does not satisfy all of the requirements of the TEAS PLUS system additional fees will apply.

In the alternative, applicants may seek to assistance from an experienced law firm to assist in the registration process. In that case they should expect the lowest cost to be in the nature of $424 for a One-Class Mark filed using the TEAS PLUS system ($275 for the USPTO filing fee, $149 for the law firm’s services).

TheTrademarkCompany.com

3 Reasons to Perform a Trademark Clearance Report

We are often asked by our prospective customers why should I perform a trademark clearance report? Our answers are always the same. Here are the top 3 reasons why we feel you should always conduct Trademark Research in the form of a Trademark Clearance Report prior to adopting and beginning use of your new trademark.

1. U.S. Patent and Trademark Office (“USPTO”) Filing Fees Are Non-Refundable

First and foremost filing fees paid to the USPTO are non-refundable. In other words, if you file for your mark and your mark is ultimately block based upon a likelihood of confusion with an existing mark you have forfeited the cost of your filing fees paid to the USPTO in the filing of your Trademark Application.

A trademark clearance report, even one as simple as a Basic Federal Database Search which costs a fraction of what it costs to file for protection of a trademark with the USPTO, is often a cost-effective method to evaluate whether your mark is clear to be registered and, if so, whether you should proceed forward with filing for the Trademark Registration or decide upon another mark if the same is not available.

2. Don’t Develop a Brand You May Be Forced to Give Up

Second, a Comprehensive U.S. Trademark Research Report – one that includes a search of not only the USPTO’s databases but also state trademark and corporate databases – will not only let you know if your trademark is clear to registered but also whether you are likely to infringe upon another’s use of an already-existing trademark whether it be filed with the USPTO or not.

Note, trademarks are not required to be registered with the USPTO to be afforded protection state and federal protection. Rights to trademarks can be acquired merely by use thereof or what is generally referred to as at common law.

So imagine the scenario, you are a California restaurateur. You come up with what you think is a unique name, let’s say Suntopia. You open your first restaurant in Los Angeles. Since you came up with the name you figure it must be available so no research report is performed. Business is great. You open a second location in Palm Springs and later a third in Las Vegas. You register the trademark with the USPTO and life is good. A few years go by and you are now famous. Your restaurants are the toast of the town. You routinely appear on the Jay Leno show as a celebrity guest chef. And then one day you get a letter from a law firm in Florida. The letter reads “Dear so in so ... our client has been using the mark Suntopia in connection with a chain of restaurants in the States of Florida and Georgia for over twenty years. We demand you immediately change your name. P.S. Loved you on Leno. The pesto-encrusted sea bass was great.”

You’re crushed. How could this be? You came up with the mark in a dream sequence fit for a Hollywood film. This must be your trademark.

Sadly who wins? More likely than not the Flori-Georgians. Who looses? You do. What happens to the years of blood sweat and tears building your brand Suntopia? Gone. And to think, all of this could have been resolved if only you would have spent a few dollars up front and had a trademark clearance report performed. Then you would have known to come up with another mark instead of spending years of your life and countless resources building up another’s pre-existing brand.

After all, as most practitioners and entrepreneurs know alike, it is the enterprise that creates the brand. The brand does not create the enterprise.

3. Having a Trademark Clearance Report Performed Is Evidence of Your Reasonableness in Adopting a Trademark

Third, did you know that should you ever get sued for trademark infringement the fact that you had a clearance report issued which cleared the adoption and use of your mark may be used as evidence in that case as evidence of your reasonableness in adopting the mark.

Trademark litigation counsel love it when an accused infringer did not perform a trademark clearance report. In the hands of a skilled lawyer this can be manipulated into showing a callous disregard as to the existing trademark rights of others by the purported infringing defendant.

But if you have a trademark clearance report performed, and if that report “clears” use of your mark, the opposite may be true. Should you ever be sued over the use of the trademark your lawyer can mount a defense on the reasonableness of your selection of the mark backed by objective evidence at or before the critical point of adoption of the mark: your trademark clearance report.

Conclusion

So whenever considering the adoption of a new trademark, be you a small start-up business or a multinational corporation rolling out new product after new product, remember to always have a trademark clearance report performed before you begin use of your mark. It is well worth the investment.

The Trademark Company

Get a Google Pay-Per-Click Monopoly for Your Brand

Did you know that Google is every bit as concerned as you are that some other company may infringe upon their company’s trademark? What is infringement and why should I care, you may ask.

Trademark infringement, at its core, is when one party adopts a trademarhttp://www.blogger.com/img/blank.gifk that is confusingly similar to the trademark of another. They do this because, in essence, they want to create confusion in the marketplace among consumers so they can steal customers from the original trademark holder.

Infringement takes many forms. In the good old days it may simply have been opening up a brick and mortar store front with a name for the store that was confusingly similar to an established brand. Who doesn’t recall the restaurant McDougal’s from the movie Coming to America and its shockingly similar appearance to the iconic McDonald’s brand. A perfect example of infringement to its core.

But in today’s increasingly global economy brands face new challenges as infringers have moved online. Most people are familiar with what has become known as cybersquatting, where some unscrupulous person registers a domain name that is similar to another’s established trademark rights. Squatters may sell competing products from a site posted to that domain or merely use the domain as an automatic redirect to the other’s competing web site. But there are far more subtle ways people can infringe upon your brand online that, when spotted, must be handled swiftly.

One such form of infringement is by bidding on your brands or trademarks as keywords in pay-per-click advertising.

As the readers of this article may or may not know, Google and the other search engines derive revenue by and through their pay-per-click advertising programs. When you search for a term your search results will bring up both organic (e.g., results the search engine deems to be the most relevant to your search terms via a secret algorithm each search engine respectively employs) as well as sponsored (e.g., results that are paid advertising typically appearing above and to the left of the organic returns) results.

Sponsored results and the ads that appear therewith are returned because the persons or companies who place the ads bid on specific keywords that, when searched, display those sponsored results as well as the organic as referenced above.

Returning to our discussion on modern-day infringement, today one well-recognized form of infringement occurs against your brand when a competitor of yours bids on your trademark as a pay-per-click keyword such that when consumers search for your goods or services online your competitor’s advertisements will appear in the sponsored results.

For instance, and this is just a hypothetical for the purposes of this article, let’s say Pepsi wants to drive potential customers to its web site every time someone searches for Coca Cola. What they could do is open a pay-per-click account with Google or another search engine and bid on the keywords “Coca Cola.” Then every time a consumer searches on that search engine for “Coca Cola” Pepsi’s ad would appear in the sponsored results.

Well, fortunately for trademark holders, this is against the law insofar as it creates a form of infringement known generally as initial interest confusion. What can you do to stop it and protect your brand online? Simply follow three steps to create a Google pay-per-click monopoly for your brand:

1. Assemble a list of your trademarks

Depending upon the size of your organization, this may be as simple as your company’s name or as complex as the name and multiple trademarks used to identify your company’s various goods, services, and advertising campaigns.

2. Registered and unregistered trademarks

In assembling the list of your trademarks, determine which are registered with the U.S. Patent and Trademark Office and which are not. For those that are registered it is highly recommended that you have their registration number available. For those that are not, it is advisable to get an application on file to protect the same prior to the next step as Google is more likely to respect your trademark rights if you retain an application or registration number from the U.S. Patent and Trademark Office.

3. General complaint

File a general trademark complaint with Google using Google Adwords Trademark Complain Form. Google will then investigate your claimed rights in the trademarks submitted and, if such is able to be verified, will then preclude others from bidding on your trademarks in pay-per-click advertising and diverting your customers away from your web site using your own trademarks against you.

So go online and get that Google pay-per-click monopoly for your brands. It’s just that simple.

The Trademark Company