Trademark – Page 11 – The Business of Creativity

Why Register a Trademark

Ownership of a trademark is automatic as soon as the mark is first used in trade (or in the case of marks that are not inherently distinctive, as soon as the mark gains enough “secondary meaning” to act as an indicator of source for the owner). No registration is necessary to acquire ownership rights, but if you DO register the mark, you receive the following benefits.

First, a presumption of mark ownership and validity.

Second, after 5 years of continous use, preculsion of certain challenges or defenses to the mark. (Saving a lot of time and money in litigation if necessary – and giving you a bigger club to use in settlement/forced licensing negotiations…)

Third, presumptive rights relative to a larger geographic area than might be possible without the registration. (Note: the Web has diluted this advantage a bit…).

Fourth, a right to assistance from U.S. Customs in preventing infringing goods from entering the country.

Response to a Higher Ed Communications Listserv Question

I posted this this morning in response to a question on a Higher Education Communications Professionals Listserv…. I thought it would be helpful here…

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Trademark is about marketing – it’s about protecting the brand equity and good-will and investment in an “indicator of source” in a particular market. The goal is to protect consumers from confusion as to the source of the product or service.

To make a long story short – it’s a subjective question. A “merely descriptive” statement like “educating tomorrow’s leaders” CAN eventually become an indicator of source if you can prove the slogan is actually associated with your institution in the marketplace. We call this establishing “secondary meaning.” Accordingly, “Explore. Experience. Excel” is more “arbitrary” when connected to an institution, and easy to qualify as a trademark right from the start.

Higher Education is about differentiating your product. In some ways, it’s harder than most consumer-goods branding because, in many cases, higher education is a seen as a commodity – like bread or beer, and the only way to truly distinguish your school from others is by:

1. Actually having a different product (programming). That’s hard due to the nature of accreditation, and the culture of higher education itself.
2. Communicating the few actual differences you DO have effectively.
3. Becoming memorable based on those distinctions.

Obviously, there are whole books written on the subject of TM, going into all the fine distinctions between different situations. I’m not going to cover all of that in this, or any other, email.

The important thing is to come up with something that’s truly original, register it (you can file an “intent to use” registration before the slogan shows up in the market), and then USE it.

Domain Names & Cybersquatting

Quick overview of Cybersquatting and Domain Name TM Issues

Here’s a quick Mind Map outlining the Trademark issues relative to domain names and cybersquatting.

PDF FILE

Trademark and Domain Names:

Trademark and Domain Names:

I’m always being asked about domain name issues, so I thought it was time to post a quick primer on the intersection of domain names and Trademark.

The Internet Corporation for Assigned Names and Numbers (ICANN) oversees the domain name system and is charged with the duties of assigning names and numbers (which it delegates to companies like Network Solutions), and developing procedures to resolve disputes of the registration of domain names. Under the current system, the initial registration of very similar domain names to wholly unrelated entities is permitted. It’s a first-come, first-served system, so if a search shows that nobody else has registered the EXACT string of letters and numbers being requested as a domain name, then the domain issues. This domain registration process ignores any trademark issues.

The United States Patent and Trademark Office (USPTO) will register a domain name as a trademark ONLY IF the domain name IS the trademark. For instance, “amazon.com” IS THE NAME of the company – the indicator of source – the trademark: and is thus eligible for registration with the USPTO. By contrast “houchinlaw.com” is just the location on the Web to find information about my practice, not the NAME of my practice, so my domain is NOT eligible for registration with the USPTO.

To dispute a domain name, one must file a complaint in hard copy, and electronically with a dispute resolution service provider approved by ICANN and the person filing the claim must prove three things:
1. The domain name is identical or confusing ly similar to a trademark or service mark in which the complainant has rights;
2. The domain name holder has no rights or legitimate interests in respect of the domain name in question; AND
3. The domain name has been registered AND IS BEING USED in bad faith.

The remedies for the situation include:
1. transferring the domain name to the complaining TM owner;
2. leaving things as they were with the domain name controlled by the respondent; OR
3. canceling the domain name altogether.

The Anticybersquatting Consumer Protection Act (ACPA) of 1999 was created to respond to the e-savvy entrepreneurs who amassed domain names incorporating protected trademarks for their own exploitation via sale or use (holding a famous domain hostage until the corporate owner figured out they needed to register their brands’ domains…). The requirements for protection under this law include:
1. a bad-faith intent to profit from the mark;
2. the mark is distinctive of famous at the time of registration of the domain name; and
3. the domain name is identical or confusingly similar to (in the case of a famous mark, it may alternatively be proved dilutive of) the mark..

Remedies for these actions (which have pretty much shaken out by now because brand marketers are savvy enough to register the domain names BEFORE investing in huge branding campaigns…) include:
1. cancellation of the domain name;
2. transfer of the domain name;
3. injunctions;
4. profits;
5. statutory damages between $1,000 and $100,000 per domain.

In addition to these actions, one can also pursue standard trademark infringement theories including normal consumer confusion factors, initial interest confusion (especially in infringing use of metatags, pop-ups, and banner advertising), and dilution in the case of well-known trademarks.