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New procedures set forth in the new Trademark Modernization Act provides trademark holders new ways to combat fraudulent trademark applications and registrations.
Read MoreCare about your company’s brand? Then you should be considering registering your trademark. Trademarks are a big deal for companies – your brand name on average counts for one third of your company’s valuation, and is the basis for your goodwill.
Registering your trademark with the United States Patent and Trademark Office is less costly than registering other types of intellectual property (for example, a patent), and provides tremendous benefits for protecting your company goodwill and reputation. While you don’t necessarily need to register your trademark to obtain trademark rights (you may be able to obtain something called common law rights without registering), here are what we consider the top reasons why you should register your trademark:
-A registered trademark with the USPTO is afforded national rights. This means that you can prevent another company or person from using your name (or something confusingly similar), in the same realm of goods and services that you provide throughout the United States. Without it, you are limited to the area in which you are selling goods or services.
-It prevents others from being able to register a similar mark to yours in the same area of goods or services. The USPTO alone will likely stop a future applicant from registering a similar mark, and therefore helps protect your mark against infringement without any additional work (or money) from you.
-Registration gives you the right to use the ® symbol with your brand name. Without the registration, you may us the TM symbol, but using the ® is prohibited by law. This symbol is intended to place others on notice of your trademark rights, and may deter another from infringing on your brand name.
-Your registered mark will be included in the USPTO’s database for federally registered marks. This is an important additional deterrent to those who want to use your trademark (or something similar), as typically the USPTO’s database is one of the first places individuals and attorneys check to see if a trademark is already in use.
-It grants you keys to the federal courthouse. If you want to sue an infringer in federal court, you’ll need a registered trademark.
-It provides a legal presumption your trademark is valid and you are the exclusive owner in the instance of litigation. This can help you win your case against an infringer.
-Should you file and win a lawsuit against an infringer, a trademark registration may entitle to you treble damages (3x) plus attorneys’ fees. This may mean not only are your expensive costs for the lawsuit reimbursed, but you may be entitled to a tidy monetary award too.
-A registration provides the basis to register your mark abroad. If you want to expand your brand overseas, a US registered trademark should be your starting point.
-U.S. Customs and Border Protection will stop imports, which infringe on your goods. This will help prevent counterfeit goods bearing your brand name from entering the market (note: this requires additional recording).
Registration is a critical aspect of marketing development for anyone who is serious about building their company’s brand. The process, however, can be tricky and long (the average trademark may take up to a year or longer to register).
It’s no secret that craft brewing and Colorado go hand in hand. Colorado is home to more than 10% of the nation’s craft breweries, boasting more than 230 established breweries. Nationwide, the beer business is booming as well – the United States is home to more than 3,000 breweries. With so the beer market becoming so saturated, you can imagine that coming up with a creative and clever name for brews is becoming increasingly difficult.
Virtually every large city, landscape feature, creature and weather pattern have been used, along with other words, slogans, and images, as a trademark for beer. When it comes to picking a name, it’s a daunting task – seemingly all the possible names are already taken (and notably likely covered by trademark protection) – and brewery owners are finding themselves increasingly ensnarled with trademark claims that they have infringed on another’s trademark.
Traditionally, most business owners who believe another business is infringing on their trademark might send a nasty cease and desist letter, or and may file a lawsuit. Brewery owners, however, are commended at times for taking more a more amicable (higher) road toward resolving their intellectual property disputes. For example, when Avery (Colorado) and Russian River (CA) discovered that each company had named a beer “Salvation,” instead of heading to the courthouse, they both sat down and talked about it. Their resolution? A compromise – combining both beers and naming it “Collaboration Not Litigation.” Both parties won.
Of course not all trademark disputes in the brewing world end so nicely, and expensive litigation can ensue. So, what should you know as a brewer to avoid these disputes altogether?
1. Get Familiar With the Basics. Trademark law protects distinctive names, slogans, words, designs, smells etc, that are used in commerce to designate a source. For example, Fat Tire (a trademark) is a source indicator to New Belgium. Trademark infringement arises when another uses a mark in a way that is likely to confuse a consumer.
2. Understand “First in Time, First in Right.” The rights that a first user of a mark has will likely trump yours as a later user. There are exceptions to this when relying on a common law trademark, which only covers the geographic area in which the goods or services are offered, but understand that if someone was in the marketplace first, they’ll likely try to stop you in using a similar mark in a similar way – and in many cases they have the legal right to do so.
3. Pick a Distinctive, Clever, or Memorable Mark. These are more likely to be protected by federal law, and more likely to keep you away from something that’s already been chosen. This one isn’t easy, so crack a cold one, and get to the drawing board. (For more information, read this previous post on the legal importance of distinctive branding).
4. Research Your Mark. Think you’ve picked a great name? Do your homework before sending labels out to print. You need to conduct due diligence and research if there is a similar mark being used in a similar way. Google is a great place to start (but usually isn’t close to enough). A trademark attorney can help you do a much more thorough search, as well as analyze the results of the search (this is where legal training comes in to play). They can also discuss with you issues surrounding distinctiveness, and how to qualify generally for trademark protection (see #3).
5. Settled on a Name? Great, but you’re still not done. If you’ve picked a perfect name, and have done all your due diligence to ensure nobody else is using that mark, you should consider filing a federal registration for the mark with the USPTO. Federal registration will provide a whole host of benefits including nationwide rights, certain legal presumptions, and of course, provides third parties notice that the mark is being used (and hopefully discourages them from picking a similar one). An experienced trademark attorney can help you do this too.
While much of the law surrounding issues of Internet domain names and trademarks remains undefined, there are two principles that are well established:
1. Registering a domain does not alone provide you trademark rights; and
2. You can be sued by a trademark holder if your domain is likely to confuse consumers, or dilute a famous trademark.
Let’s discuss both in a little more detail….
Domain Registration Does Not Alone Grant You Trademark Rights
You have a clever name that’s available as a domain name, and so you go ahead and register it. Does this mean that you have a trademark in said clever name? It does not andorrafarm.com. Registering a domain name alone will not provide you rights to prevent another party from using that name for its business or product. Without doing more, registering the domain simply means that that you have the ability (not even necessarily the “right”) to use that specific Internet address.
In order to obtain trademark rights through your domain, you must use it in connection with the sale of goods or services, and it must meet legal standards to qualify as a trademark.. Once you use your domain as a trademark, you then will have legal rights to prevent others from using that name (caveat: this is true, unless others were using the name before you).
Trademark Holders Can Sue You For Registering Their Trademark as a Domain
Even if the domain is available, know that you face a potential lawsuit if your domain is confusingly similar to an existing trademark owned by another person or business. For example, if you registered the domain www.looloolemons.com to sell fitness attire, you may be sued by Lululemon Athletica (www.lululemon.com). Lululemon, as a trademark rights holder, has the legal ability to stop the use of names that are likely to confuse consumers of fitness attire an accessories (and Looloolemons would almost certainly be deemed confusingly similar to consumers if used to sell athletic clothing).
Determining whether your domain would infringe on another’s trademark takes consideration of several factors, those of which included: 1) which mark was put to use in commerce first; 2) whether the domain name would confuse consumers regarding the trademark; and 3) whether the trademark is considered famous. The legal standards that would apply to a trademark dispute involving a domain name, are the same as would be applied in a standard trademark dispute.
What About Using Links to Another Website?
Typically using another’s trademark text to link to another’s website will not cause problems; however, be careful about using trademark symbols, which could cause issues. It’s always advisable to provide an appropriate disclaimer on your website in the case you do use outbound links that include another’s trademark. Also, it’s never wise to use another’s trademark to misdirect customers to your website, and don’t use another’s trademark in your programming code. Layman’s rule of thumb: if it seems dishonest or deceptive, it’s likely to get you into trouble, legally speaking.
Using another’s trademark for the purpose to comment or criticize the other company is generally okay under principles of free speech. Keep in mind; however, that even if it’s legally permissible, a trademark owner may still harass you by threatening or filing a lawsuit – especially in situations where you’re selling your goods or services under the critical commentary of another’s trademark, or if you might confuse consumers.
Most of our blog posts focus on how to build your brand and protect your trademark against others, but what happens when you’re put on the defense, and someone claims that your trademark infringes theirs? Typically this begins when you receive what is called a Cease and Desist Letter – you may get it from the individual business owner, or their attorney. When you receive this letter, the biggest question in your mind is what should you do?
First, know that no matter how threatening or aggressive the letter, that this is not the end of the world today. Getting a letter, without more, does not mean you are getting sued. While legal action may follow, you have a little time to research the pertinent issues, evaluate your options, and strategize your response.
Preliminarily, you’ll want to evaluate your own trademark and use. This involves how much money you have invested, when you started using the mark, and whether you have registered your trademark with the USPTO. In other words, what’s the brand or trademark really worth to the company? This will drive much of your decision-making throughout the process.
Next, understand that the person or business sending the letter cannot do anything to you without a court order (also known as a “temporary injunction”). In order to obtain the temporary injunction, the complaining party must convince a judge that they will suffer irreparable and immediate damage by your continued use of the mark, and that he or she is likely to eventually win in an infringement lawsuit against you. Now, just because the complaining party cannot do anything to you without a court order, doesn’t necessarily mean that you should ignore the letter sent to you.
Be proactive.
You’ll want to initially research as much as you can about the complaining person or company, its use of the mark, and registration. These facts are essential to your case. Next, get advice. It will be well worth it to consult a trademark attorney to evaluate the case. While hiring an attorney may seem expensive from the get-go, it may save you a tremendous amount of money in the long run.
Once you’ve evaluated your case, and hopefully talked to an expert, you should now be ready to respond. Different responses will vary depending on the individual facts of the case. Typically your options include one of the following: respond, do nothing, negotiate, defend against a lawsuit or file your own (seeking a declaratory judgment).
Should resolution not be possible in early stages of the dispute, the likely next move is litigation. Litigation is timely, and expensive (sometimes prohibitively), and it’s important to understand your position, alternatives, and all possible outcomes before getting to that point.
When strategically thinking about choosing a brand name and building your business around it, there are a lot of considerations to make. Amongst them is the legal protection surrounding your brand (also known as a trademark) – which is afforded by intellectual property law. Essentially, when you begin thinking about your brand, you’ll need to consider the legal strength of the trademark you pick. This is important as it impacts the degree to which a court will protect you against misuse of your trademark by competitors.
Know from the get-go that a legally strong trademark has two basic characteristics: The first is that it successfully identifies the goods or service in a consumer’s mind. The second is that through use (and perhaps trademark registration with the USPTO), competitors are prevented from using it (or a similar mark) in any context where customers may be confused as to the source of the goods or services, or misidentify the goods or services as coming from a competitor.
Once you understand the importance of picking a legally strong trademark, the next step is actually choosing one. You’ll want to focus on the distinctiveness of your brand or trademark – the most distinctive marks will be most protectable (compare to generic marks which are not protectable at all). Distinctive marks fall into three basic categories: coined, arbitrary and suggestive. I’ll discuss each in turn below.
Coined Marks. A coined mark is simply made up. Examples of coined marks include Uber, Reebok, and Tylenol. These marks have no other meaning, and are legally the most defensible. In practice, these marks cannot be used by anyone else in any other context, which makes them particularly attractive.
Fanciful or Arbitrary Marks. Fanciful or arbitrary names are also distinctive. Apple (describing electronics) fits under this category. Other examples are Penguin Books or Camel Cigarettes. These marks are common words that are used in an arbitrary manner. This is to say that they have nothing to do with the actual goods or services that they identify. Pick an arbitrary word to describe your business, and so long as nobody else is using it in a similar manner, you’re in good shape.
Suggestive Marks. Words that suggest the goods and services provided in order to create an idea in the customer’s mind about the goods are services are called “suggestive.” Suggestive marks are closely related to fanciful marks, and are considered legally strong because of their ability to indirectly associate certain qualities with goods and services. Classic examples are Greyhound (for a bus service), and Jaguar (for automobiles). These are good too.
If you understand the basics, don’t worry too much about the nuanced distinction between suggestive marks and those considered fanciful or arbitrary. Marks fitting into those categories can often be argued more than one way. The important thing is that they’re considered distinctive, and because they’re distinctive, they afford you the most legal protection. So, when you’re thinking about your branding strategy, don’t forget to go out on a limb, and get creative. You’ll be rewarded, legally speaking, for doing so.
Your trademark is your brand, and trademark law protects your use of certain logos, symbols, words, phrases, and sometimes even colors and sounds. In order to obtain legal protection for your trademark, you need a qualifying mark (note: this can be a complex legal issue) that is used in interstate commerce. Nothing more. However, owning a federally registered mark provides big benefits to any business that is putting any amount of time and energy into their branding efforts.
Obtaining a federally registered mark through the United States Patent and Trademark Office (USPTO) can be a long process, but provides the owner of the trademark the following benefits:
· Provides public notice that you claim ownership in the mark (thereby deterring others from using the mark, or ease in finding you to license or otherwise pay you to use the mark);
· Gives you certain legal presumptions including the presumption that you are in-fact the owner of the mark, and you have national rights to use the mark in connection with the goods or services that your registration claims;
· The ability to file a lawsuit regarding use of the mark in federal court (i.e. keys to the federal courthouse);
· Ability to use the application to obtain foreign rights in other countries around the world;
· The ability to record the mark with U.S. Customs and Border Protection to help keep infringing goods from entering the country;
· The right to use the registered trademark symbol ® (it’s against the law to use this symbol if you don’t have a registered mark); and
· Inclusion on the USPTO’s online database.
These benefits are tremendous, and conducting trademark due diligence and registering your marks should be the first step in any branding effort by a company.
Avoiding Pitfalls in the Registration Process
Hiring an attorney is not required to file a trademark application – but should be seen as a wise move. The trademark process is riddled with nuances and complexities, where applicants can find themselves in trouble quickly, and mistakes can be costly. An attorney can help you avoid pitfalls by assisting you before, during, and after the trademark registration process, including policing and enforcing any trademark registration that might issue. Simply said, the right attorney can save you from future costly legal problems by conducting recommended searches before filing. The attorney can also file your registration correctly, and help during the application process with several things that can arise and ultimately impact your trademark rights, such as determining the best way to describe your goods or services, and preparing responses for the USPTO’s office actions (e.g. a refusal to register). Last, an experienced attorney can help you with using the mark properly and policing the mark once you have it. This is critical so that you don’t lose rights (which is possible). The USPTO only registers trademarks, beyond that, it’s up the trademark owner to protect it.
you’ve got the business chops to market a dynamite product or service to the world. But do you need to do anything to protect your intellectual property abroad – whether your trademarks, your copyright, or your patents? For protecting those intellectual property (IP) rights beyond the U.S., here are four tips to keep in mind:
1. Your IP rights are usually restricted to the territory of their registration.
In legal lingo, your IP rights are generally “territorial,” rather than “universal.” In other words, properly registering a patent or trademark with the U.S. Patent & Trademark Office (USPTO) only helps you inside the U.S. It offers no protection to those often crucial IP rights in other countries.
The same is generally true for copyright: Simply having copyrights in the U.S. (through registration or otherwise) provides no protection to copying or reproducing those copyrighted materials overseas.
2. You can often easily expand your IP rights through the USPTO system.
As proof that we finally do live in an electronic age, the USPTO has smartly allowed for multiple and simultaneous applications for patent and trademark protection/registration.
This means that inventors applying for patents within the U.S. may simultaneously apply for patent protection outside the U.S. — in as many as 143 different countries. (Click here for more details about this option under the Patent Cooperation Treaty.) Likewise, under the so-called “Madrid Protocol” or “Madrid System,” the USPTO has allowed trademark owners to apply simultaneously for trademark protection within the U.S. and outside the U.S. in as many as 84 different countries. (Click here for more details.)
Unfortunately, there is not yet such a system in place for copyright registration, perhaps partly due to the fact that many countries (including the U.S.) do not require copyright registration to enjoy copyright protection. For a recent list of particular countries’ agreements with the U.S. concerning copyrights, click here.
Nothing in the U.S. law requires that you attempt to register your IP rights abroad through the USPTO. In short, you can always head directly to the country’s IP offices to determine what procedures work in your particular instance, with your particular IP concern. That may, in fact, be a shorter course to registration and protection by removing a layer of registration (through the USPTO). (For a listing of the world’s IP offices, click here.) It may also prove to be a more profitable option long-term, by building relationships and understandings at the local level that can guide you through the intricacies of later disputes or difficulties.
4. Never try to protect your IP rights alone.
While the processes may now be streamlined, the complexities of registration and protection of IP rights overseas can be dizzyingly complex. Always look for competent, reasonable counsel to help you through those tangles. Remember: Your focus is your business, not on the intricacies of how to protect your intellectual property abroad.
You’ve worked hard to create a valuable and unique method, process, or design–your own trade secret. But how do you license that secret (or have a designer or manufacturer build from it), and at the same time keep that trade secret proprietary? While there’s no full-proof answer—and every case is different—here are five easy steps to protect trade secrets from being taken (or, in legal lingo, “misappropriated”):
1. Hire a competent lawyer to craft a thorough, binding, and appropriate confidentiality agreement. When trade secret litigation arises, the parties often dispute whether the confidentiality agreement actually covers the purported trade secret—and whether the agreement is even legally binding. Of course, these are intricate legal issues that require an analysis of how the applicable law fits with the facts at hand. In other words, this should be a huge red flag NOT to use the cheap, cookie-cutter forms found so readily online or at the office supply store. There may be times when doing it yourself pays off, but leaving the protections of a valuable trade secret in the hands of a form document is not it. A competent attorney will work with you to draft a confidentiality agreement that may, among other things:
· Choose an appropriate and/or favorable applicable law.
· Describe the trade secret—neither too broadly (that subjects the agreement to a separate attack), nor too narrowly (that fails to protect all aspects of the trade secret).
· Prohibit certain conduct—providing the right amount of access to the trade secret that (again) will not subject the agreement to an attack that it is overbroad or over-narrow.
· Set out damages and dispute mechanisms that are favorable to the trade secret owner and available under the applicable law.
2. Restrict access to the trade secret. The trade secrets’ contents should be provided on a “need to know” basis. Many times, a business focuses on keeping non-employees from knowing its trade secrets. But that’s only part of the equation. The business should also carefully determine who within the company should have access to the trade secrets. Some questions to consider include:
· What is this employee’s job description? Does that description deal directly with the trade secrets? If not, why not?
· What are this employee’s daily or routine duties? Do those duties include direct work with the trade secret? If not, is there someone else who can do those tasks?
· Does this employee need to know all parts of the trade secret—or is it possible to curtain off certain parts?
3. Make all appropriate persons sign the confidentiality agreement. Once you’ve invested in a good confidentiality agreement, be sure that every person with access to the trade secrets signs it. Those persons may include:
· Employees.
· Independent contracts.
· Manufacturers, their employees, and agents.
· Licensees, their employees, and agents.
A recent federal appellate decision from the Seventh Circuit highlights the impact of this step. In nClosures, Inc. v. Block and Company, Inc., the trade secrets’ owner (nClosures) had its manufacturer (Block) sign a confidentiality agreement and, after the business relationship failed, nClosures sued Block, claiming that Block breached the confidentiality agreement. But the district court granted summary judgment for Block, concluding that the confidentiality agreement was unenforceable because nClosures had not taken appropriate steps to protect its trade secrets.
Closures appealed, but the Seventh Circuit affirmed this dismissal. It reasoned, in part, that while the parties “did sign a confidentiality agreement at the outset of their business relationship, no additional confidentiality agreements were required of individuals who accessed the design files.” In short, the appellate court concluded that no jury could find that nClosures had done enough to protect its trade secrets from its manufacturer—even though nClosures had a signed confidentiality agreement with that manufacturer.
4. Mark every trade secret document appropriately. Every document, email, or other item containing trade secret information should be marked in some identifiable, unique way. Those marks may include language such as “Confidential,” “Contains Proprietary Information,” or “Trade Secret Information.” Ideally, this mark should appear on each page of the material. Care should be taken, however, to be sure that these marks should not be over-used. If applied in a blanket fashion, these marks become (arguably) meaningless—leaving the trade secret owner subject to counterattack that none of the information is truly a trade secret.
5. Keep the trade secret “under lock and key.” In today’s world, very few trade secrets are simply on paper. When they are, placing those papers in a locked cabinet—with only “need to know” personnel having access to the key—is the old stand-by way of keeping them secret. But for most information nowadays, trade secrets are stored electronically. Still, the “cabinet” analogy applies: Those trade secret files should be accessed only by a limited number of “need to know” personnel, who have restricted access through a series of unique passwords—and, preferably—passwords both to the file, and to the unique documents.
You know people are infringing your trademarks—but they’re the illegitimate, faceless leaches who disappear as soon as they’re notified of trouble. Can you do anything to stop them? What if you don’t even know their names? The answer is yes, and we’ll tell you how. (See also: World Wrestling Entertainment, Inc. v. Unidentified Parties).
The Trademark Counterfeiting Act allows owners to seek TROs and seizure orders—with the right proof.
The federal Trademark Counterfeiting Act (the Act) generally lets trademark owners seek temporary restraining orders (also called a “TRO”)—court orders that last a few days and command the person to stop/cease-and-desist—against counterfeiters. See 15 USC 1116. The Act also permits trademark owners to seek seizure orders—court orders essentially commanding the person to turn over items in their possession.
In order for the court to to grant such an order, the Act also requires the trademark owner prove (among other things) that:
· the trademark owner will likely succeed in showing that the defendant had used a counterfeit mark,
· the harm to the trademark owner outweighs the harm to the defendant, and
· the defendants would destroy or make inaccessible the infringing goods after they’d received notice of a lawsuit.
But what about anonymous trademark infringers?
But how could a court order someone to cease-and-desist through a TRO (or turn over merchandise through a seizure order), when the court—and even the trademarks’ owner—cannot tell who that someone is?
That was the problem faced by World Wrestling Entertainment (WWE). It owned valuable trademarks, distributed all of its own trademarked merchandise (rather than licensing through third-parties), and was dogged by various fly-by-night operators who would set up shop outside WWE events and sell unauthorized, infringing products—cannibalizing WWE’s sales. And of course, these bootleggers would disappear at the first sign of a lawsuit (or conceal or destroy the relevant evidence).
To fight this problem, WWE sued these unidentified parties under the Act and asked the court to grant it an ex parte seizure of the counterfeit merchandise and an ex parte TRO. (An “ex parte” order is one that the court enters without notice to one of the parties; hence, WWE sought relief from the district court without first notifying the alleged infringers.)
Unfortunately for WWE, the Act gave no clear guidance about whether a trademark owner could sue these anonymous infringers.
The courts decide: Anonymity is not full-proof protection.
Without this guidance, the district court denied WWE’s requests, concluding that without the names of the persons against whom seizure would be ordered, it could not evaluate whether WWE met all the other requirements of the Act. In other words, the district court believed that—without the names of the alleged infringers—WWE could not provide the court with the right proof.
WWE appealed, and the Fifth Circuit reversed. It concluded that because WWE acted as its own distributor, WWE would know right away if the person selling “WWE” merchandise were a counterfeiter. That is, while “WWE cannot know in advance the specific identities of counterfeiters who will present themselves at any given event, [] it does know that any non-affiliated seller at or near an event is almost certainly a counterfeiter.”
Thus, WWE was entitled to both the TRO and the seizure order under the Act.
If you’re a startup considering doing business overseas, or your business is currently doing business overseas, then you should be thinking about not only your trademark rights in the United States, but also your rights abroad. Specifically, you should consider registering your mark in any country where you currently offer products or services, and any country where you intend on offering products or services in the future.
So, the world is a big place, where should you start? Getting into the international sphere can be tricky, but begin with the basic understanding that a trademark registered in the United States will not be protected overseas without more. Trademarks are territorial, and you must file in each country where you seek protection. Though it may sound difficult or expensive, they’re ways to streamline the process. For example, if you have a U.S. registered trademark, you may seek registration in any country that is a signatory to the Madrid Protocol by filing a single application called an “international application” with the International Bureau of the World Property Intellectual Organization (“WIPO”), through the USPTO. With this, there are pros and cons, but the biggest advantage is that you may concurrently seek protection in up to 92 countries (each referred to as a “contracting party”), therefore diminishing time and expense (note: while an international registration may be issued, it remains the right of each country designated for protection to determine whether or not protection for a mark will ultimately be granted – as there really is no single “international law” on trademark protection).
Timing is everything – well, sort of. Timeliness of your international application is an important factor. If you file a Madrid Protocol application within six months of filing your U.S. registration, then your international application will have the advantage of the same filing date as your U.S. application (see Article 4 of the Paris Convention). However, if you already have a registered mark, don’t fret, your international application will simply have the filing date of your international application. So, while there may be advantages to filing within that 6-month time frame, know that you will always be able to file an international application after that period passes, but that you lose the advantage of the earlier filing date.
Got it? Next, what is actually required under the Madrid Protocol to file for international trademark protection? To file an international application through the USPTO, an applicant must have a U.S. application, called a “basic application” or a U.S. registration, called a “basic registration.” The mark and the owner of the international application must be the same as on the basic application or registration. The international application may be based on more than one USPTO application or registration provided the mark and the owner are the same for each basic application and/or registration. The international application must also include a list of goods and services that is identical to or narrower than the list of goods or services in the basic application or registration. Last, the applicant must then pay the U.S. certification fees at the time of submission and identify at least one country where protection is sought.
Once you’ve submitted your application, assuming no issues, the International Bureau will issue a registration and notify each country designated in the international registration of the request for an extension of protection to that country. Each country then examines the request for an extension as it would a national application under its own law. If the application meets the requirements for registration of that country, then the contracting party will grant protection of the mark in its country. Once you have protection, an international registration will last you 10 years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.
If the Madrid Protocol doesn’t suit your purposes, there are several other international agreements that coordinate the procedure of filing trademark applications in more than one country, which may also save you time and money. For example, a registration with the Benelux Office for Intellectual Property (BOIP) covers Belgium, Luxembourg and the Netherlands. A Community Trade Mark (CTM) protects a trademark in all of the member countries of the European Union. Filing with the African Intellectual Property Organization (OAPI) protects trademarks in all of the member countries in Africa, and so forth. Each option should be considered depending on your business’s individual circumstances.
In the end, expanding into international territories as a business can be exciting and lucrative, but also understand that dealing with foreign laws and treaties adds an extra layer of complexity to your game. It’s always advisable to speak with a trademark attorney who can help you navigate foreign waters, and ensure that your mark is not only protected on home soil, but that you are protected abroad as well.
You’re a software developer, or you own a software development company and have others develop it for you? Well then you need to know who owns the intellectual property, and specifically the copyrights to computer software programs being developed. Who gets all the protections of the U.S. Copyright Act to keep others from wrongly copying those programs? Who gets to to reap the financial benefits for licensing those programs (read: payday)? With the thousands of copyright lawsuits filed and tried and appealed for the last 200 years, the answer should be clear by now, but it’s not. The answer can be particularly complex when the work’s creator is creating the work at someone else’s direction. Here’s an explanation of what you should know.
Background–The Copyright Act Protects the Author’s Rights to Literary Works Such as Computer Software:
The Copyright Act protects a copyright owner’s right to her or his “works.” Those works include “literary works.” See 17 USC § 101. Federal courts have almost universally concluded that computer software programs constitute “literary works.” In other words, software programs are generally protectable by the Copyright Act so long as the programs are “fixed in a tangible medium of expression” (versus an idea) and are “original.”
Not surprisingly, the Copyright Act’s general rule is that the person who puts down (or “fixes”) the program/material for the first time has first rights to the work. Or, in the words of the Copyright Act, copyright work that can be protected by the Act “vests initially in the author or authors of the work.” See 17 USC § 201(a). But that’s just the general rule. And in the law, there’s (almost) always an exception.
“Works Made for Hire”—A Major Twist on Copyright Ownership:
When an author creates a work at someone else’s direction, the work may qualify as a “work made for hire,” a carve out from the general rule, which may leave the original author without any copyright rights in the work at all. Specifically, in the case of a “work made for hire,” the Copyright Act declares that “the employer or other person for whom the work was prepared”—not the original author—“is considered the author.”
In other words, under the Copyright Act, the “work made for hire” provision flips authorship of the work from the original author to someone else (usually the original author’s employer). So, what is a “work made for hire”? The Copyright Act defines this term differently, depending on whether the original author was an employee or not.
If the original author was an employee, then the employee’s work is “work made for hire” if it was “prepared by [the] employee within the scope of his or her employment.” This definition seems pretty straightforward, but know that “employee” is not defined by the IRS’s standards, but rather the laws of agency. So, if the original author is on the payroll of the employer, and creates the work as part of the employee’s job duties, then the work qualifies as “work made for hire,” unless there’s something in writing to the contrary. In short, the employee produced the work as part of the employee’s efforts for the employer, so the employer owns the copyright. (Notably, the Copyright Act also permits employers and employees to opt out of this definition. That is, if the employee and employer “expressly” agree in writing (and sign the writing), then the copyright can stay with the employee/original author. See 17 USC § 201(b).)
If the original author was not an employee, then the non-employee’s work is “work made for hire” if three conditions are met. First, the non-employee must sign a written agreement expressly stating that the work is a “work made for hire.” Thus, if the non-employee does not sign such an agreement, then the work should not be considered “work made for hire.” Second, the non-employee must have been “ordered or commissioned” to do the work. Thus, if the non-employee simply does the work spontaneously, then work should not be considered “work made for hire.” Third, the non-employee’s work must qualify within one of nine (9) specific categories of “works”:
(1) as a contribution to a collective work,
(2) as a part of a motion picture or other audiovisual work,
(3) as a translation,
(4) as a supplementary work,
(5) as a compilation,
(6) as an instructional text,
(7) as a test,
(8) as answer material for a test, or
(9) as an atlas
See 17 USC § 101. Thus, if the non-employee creates a “work” that does not fall within one of those nine categories, then the work should not be considered a “work made for hire.”
So what is missing from the nine categories? Literary works (i.e. computer programs!). This means that software programs created by non-employees may never qualify as “work made for hire” under the Copyright Act—leaving all copyright protections and rights with the original author.
Smart IP Players Need Solid Advice:
With the every-increasing value of software programs and other intellectual property, savvy employees, employers, independent contractors, and computer programmers need competent legal counsel to navigate through the complexities and subtleties of the Copyright Act and the “work made for hire” principles. (This brief post only touches on some of the potential issues).
Being aware of and protecting your Intellectual Property is one of the most important aspects of owning and running a startup, or business. In terms of protecting the marketing efforts and goodwill you put into your brand, trademark law is the name of the game. Specifically, you’ll need to pick a strong trademark, and register that mark – which has the effect of placing the world on notice that your design, word, name, or symbol that you use to identify your goods or services is your official and legal trademark. So as you think about and build a brand, what should you do? Here are the top four things you need to know about building your brand and your trademarks.
Hire An Attorney. The first step in developing a trademark that will then either become your brand, or part of your brand, is talking to a qualified trademark attorney. A trademark attorney will help you pick a strong trademark, and streamline the entire process, which will save you both time and money. Additionally, an attorney is on the lookout for legal pitfalls, and will help you avoid mistakes, which could be detrimental and costly to your business in the future.
Run a Trademark Search. If you pick a mark that may be considered “confusingly similar” to another mark already in use, you’ll likely find yourself in a sticky situation down the road – making difficult choices such as abandoning your brand or facing a federal lawsuit. How to prevent this? Do your homework by conducting a trademark search (or hiring someone to conduct one for you). There are a few ways to do this, but a good place to begin is Google and the United States Patent and Trademark Office. There are comprehensive search services that can be utilized that will provide the best results, but also come at a higher cost. Your trademark attorney can assist you in the search process, and perhaps most importantly, can analyze search results for you and render a legal opinion about your use of a mark. Using a trademark without conducting an adequate search, or blindly submitting a trademark application to the USPTO, puts you at risk that your application will be denied (read: waste time and money), and exposes your business to unnecessary liability and legal squabbles.
Pick a Strong Mark. Not all marks are created equal. In the United States, trademark strength is assessed on a spectrum, and marks are classified as arbitrary, suggestive, descriptive, or generic. Marks considered arbitrary or suggestive are provided the most legal protection, while anything generic will not qualify for trademark protection at all. You’ll want to work with a trademark lawyer in picking a strong mark to build your brand around.
As a startup, your IP may be your most valuable asset, and so it’s important that you have a good grasp on the basics. There are four primary types of intellectual property – namely copyrights, trademarks, trade secrets, and patents (which are then categorized as “utility” or “design”). While there may be significant cross over, each form of intellectual property protects different things, and affords specific exclusive rights. Typically, what an “exclusive right” means is that owner or rights-holder has the power to prevent someone else from doing a specific activity (for example, using their brand name). You should understand what these exclusive rights mean for your business both from the perspective of liability and monetization of the company.
Copyrights
Copyrights protect creative content and expressions. To obtain a copyright, you must simply meet the requirement of “creative expression fixed in a tangible medium.” This means that copyrights will protect things such as written articles, books, photographs, or computer programs etc. Importantly they only protect creative expression, and will not cover anything that is deemed “functional.” Contrary to common belief, registration with the U.S. Copyright Office is not necessary, though highly recommended – you’ll need it if you ever want to sue for infringement, and there are specific legal requirements pertaining to registration in order to recover statutory damages, which may translate to recovering big bucks from an infringing party. Additionally, claiming a copyright by using “© Company Name” is not required legally speaking, though considered prudent and recommended as well. Have a copyright? Great! Just know it won’t last forever. Though the term of a copyright depends on a lot of factors, generally copyrights will last 70 years after the death of the author, or 95+ years for a corporate author.
Trademarks
Trademarks are tools that greatly enhance your marketing, branding and company’s good will. A trademark is any word, mark, or symbol that is capable of identifying an owner’s products from those of another. It must be distinguishable, and not a generic term. They can be words, designs, and sometimes even colors and sounds. Famous examples include Pillsbury, Coca-Cola, BMW, Nike, and Starbucks. The purpose of a trademark is different from other forms of intellectual property, which are concerned with protecting creators and inventors. Trademark law is designed to protect consumers. Also distinguishable from other forms of intellectual property in that a trademark will last as long as your business truly uses it (potentially forever). Similarly to copyright registration, trademark registration with the United States Patent and Trademark Office (USPTO) is not required, though incredibly beneficial, and therefore, also recommended. You also only get the ability to use the ® symbol if you have a federally registered mark. Paramount for any startup investing in their brand name and marketing is ensuring that you do your due diligence before picking a trademark as to make certain that you’re not infringing on another’s mark (an experienced trademark attorney can help you through this process, and with registration). Doing your homework should allow you to sleep better at night knowing that you have a brand name that is afforded strong legal protection, and you have reduced the likelihood that you are forced to abandon your brand at the threat of a lawsuit down the road.
Trade Secrets
Trade Secrets are tools for keeping proprietary information secret. One famous example of a trade secret is Coca-Cola’s soda formula. Trade secrets are typically protected through the use of something called NDAs (Non-Disclosure Agreements) and Confidentiality Agreements. If you have a trade secret, it’s imperative you take certain measures to keep it secret. Once the cat is out the bag, there is not much you can do about it.
Patents
Patent rights provide the ability to exclude others from practicing your invention for a set period of time. As a startup, it is also important not to use, market or sell another’s patented invention without permission (even as part of a new invention), or you may face liability for infringing on another’s patent rights.
There are two types of patents: utility and design. A utility patent protects functionality (i.e. how something works), while a design patent protects ornamental appearance (i.e. how something looks). To qualify as a design patent an invention must be “useful, novel, and non-obvious.” It is examined by the USPTO, and if granted, will last for 20 year from the date of filing with the USPTO. And don’t think you’ll get a patent quickly, as it usually takes around 3-5 years to issue. To qualify as a design patent, it must be novel and non-obvious. These patents are also issued by the USPTO, but generally are issued more quickly than a utility patent. Design patents last 14 years. Provisional patent applications may be helpful to you as well. If you’re looking to secure a patent, it’s advisable to seek the counsel of an experienced patent attorney to walk you through the patent process.
Conclusion
Managing your startup’s IP portfolio can be difficult, and a riddled with land-mines. It’s important to understand the different forms of intellectual property in order to mitigate risk and liability of infringing on others’ intellectual property, and importantly, to help maximize the value of your company.
You’re starting a business, or maybe you already have an established business up and running, and you are concerned about your company’s trademark rights and website. Particularly, you are concerned with building a legally protectable brand, and you’re not sure if you can register a trademark that covers your company’s website domain name. Even if you can trademark your domain name, you are not sure if you should. I’m here to provide some insight on trademarks and how they relate to your company’s URL.
First, it’s important to understand exactly what is a trademark. A trademark is a symbol, word or group of words that is legally registered, or established by use, as representing a particular company or product. Not only can logos, slogans, and company names be eligible for legal protection as a trademark, but website URL’s (domain names) are generally eligible for trademark protection as well. When picking a trademark, you should consult a legal professional experienced in trademark law to discuss how to qualify for trademark protection.
Next, acquiring a web-domain name can be very easy – you simply need to register the name you want with an organization called ICANN through a domain name registrar such as GoDaddy.com. However, before purchasing a domain name, you should research and investigate whether the domain name you want is identical or similar to an existing trademark. This diligence should be included in your overall approach to securing a legally protectable trademark, and is a process that can substantially reduce the risk that your chosen domain name will infringe on an existing trademark, or that you may run afoul of other laws such as the Anti-Cybersquatting Consumer Protection Act.
A Google search is a great place to start with your search. If you cannot find a similar mark to yours through a Google or basic web search, your next step should be to access the United States Patent & Trademark Office’s website, and search their electronic system for registered marks. Again, it’s recommended that you have a legal professional experienced in trademark law to assist you with this aspect of the process, as navigating the USPTO’s database and records may prove to be challenging, and doing an incomplete or inadequate search may spell trouble down the road for your company. Once you have conducted one of these preliminary “knockout” searches, the final (and most comprehensive) option is to hire a third party search entity such as Thomson Compumark to conduct a thorough search. A trademark attorney will generally review the results, and render a legal opinion about the perceived risks of using the mark, and discuss with you any potential problems you may run into by using the mark. The attorney may also find very low risk, and give you the green light. This option is the most costly, but the safest way to ensure that your mark is not infringing on someone else’s mark, and therefore, may significantly diminish your company’s potential liabilities.
So, if your brand name is similar or identical to another trademark, which may include another’s domain name that provides the same or similar services, beware, you may be infringing on someone else’s trademark, and could face a Cease and Desist in the future, or worse, a federal lawsuit. If that is the case, it may be best to eliminate the risk and attempt to acquire a different trademark and domain name. On the other hand, if you have conducted competent due diligence on your mark, and you find that there is little likelihood of infringement of another’s mark, you can move forward feeling confident about building the a strong (and legally protected) brand both on and offline.
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