Satisfy the “Use in Commerce” Requirement with Your Webpage

That a mark has been “used in commerce” is one of the primary requirements that a mark must fulfill before becoming a registered trademark with the U.S. Patent and Trademark Office (USPTO). While there is a significantly developed body of law regarding traditional “use in commerce” with regards to brick-and-mortar shops and radio and television advertising, the same is not as true with regards to the internet. In any case, some useful guidelines have emerged in recent years from the Trademark Trial and Appeal Board (TTAB).

Regarding the sale of goods (as opposed to services, which have an easier requirement), a mark is considered to be “used in commerce” if “it is placed in any manner on the goods or their containers or the displays associated [with the products, or if this is not possible,] then on documents associated with goods or their sale….”

When submitting evidence to the USPTO to demonstrate “use in commerce” on a website, the specimen must:

(1) include a picture of the products;

(2) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and

(3) contain the information necessary to order the products.

Remember that “mere advertising” of one’s product with the mark is typically insufficient, whereas “a display associated with the goods” is sufficient. Not only must the mark connect with the product in the minds of consumers, but the consumers must also be provided with enough information so that they can place an order.

In a 2007 case,  In re Valentine Inc., the TTAB considered the fact that a trademark applicant’s website, in addition to pictures of the goods, provided “an on-line catalog, technical information intended to further the prospective purchaser’s determination of which particular product to consider, an online calculator and both a link to, and phone number for, customer service [to place an order]”.

Taking these things into consideration when designing and building your website can help avoid a problem later down the line when you apply for your trademark, especially if you are strictly an online-based business. Make your trademark obvious on your page, with the goal of leaving an impression upon visitors of your mark as they click “add to shopping cart” or pick up the phone to order.

–   ck

Counterfeit Domain Name Seizures on Cyber Monday

In the early hours of Cyber Monday, the largest single day of online shopping in the United States, the federal government seized control of approximately 150 domain names which were deemed to be selling counterfeit goods. This adds to a total of 350 domain name seizures since “Operation In Our Sites”  was launched by the U.S.  Justice Department and the National Intellectual Property Rights Coordination Center, among other U.S. agencies. Visitors to the seized domain names were greeted by a banner, explaining the seizure and basic violations of intellectual property rights. The seizure banners have been viewed 77 million times since the operation’s launch in June 2010.

Some have viewed this as a pointless exercise, citing the fact that these internet IP infringers will simply bounce back with another top-level domain name based somewhere else in the world. While this may be true, I think there is certain value in executing these seizures on the dawn of the largest internet  purchasing frenzy of the year. I bet a lot of people were spared from purchasing faulty and/or counterfeit products, the people who were seeking cheap and fake products still found them on another site anyway, and many infringing internet dealers were pushed back. As with law enforcement in general, it is a war of attrition, and just because they did not win the battle completely, it does not mean it was fruitless.

– ck

Protect Your Brand, #2: Policing Your Trademarks

Receiving that beautifully sealed trademark registration is not the last step in protecting your brand; it is one of the first. You now have a relatively solid ground from which to protect your mark, but it does not mean you will get to sit back and let your castle to all the protecting – you will have to keep your castle wells well maintained and fight off attackers when they come.

A U.S. trademark registration gives one a nationwide right to use their registered mark, and legally prohibits others from using a confusingly similar mark in the States. However, trademark registrants are responsible for policing their registration, not the USPTO or any other government agency.

As a trademark owner, you will want to patrol both the digital world, and the real world, for potentially infringing use of your mark. You do a great service to your brand by regularly making searches of your trademark using the major search engines. Remember to also check for typical misspellings of your trademark as well. If you find anything that concerns you, you should address the problem as soon as possible. In the real world, it is a good idea to subscribe to the major publications in your industry, and to occasionally spend some time looking through the advertisement sections in those publications. At the very least, this keeps you updated on your competition, and you will be able to address trademark problems as they rise.

Of course, these are only two of many do-it-yourself techniques for policing your trademarks. This is an important part of protecting your brand, because if you do not expend effort to protect your brand, the law will see less of a need to protect your brand as well. Avoid the situation where you are suing an unfriendly competitor for clearly stealing your business, and then showing up in court empty-handed when your competitor’s lawyer asks what you have done to enforce your trademark rights (except for filing a lawsuit after two years of infringing use). To find out about a full range of solutions for monitoring your trademarks, contact a lawyer experienced in trademark law and brand management.

As a trademark owner, you have to maintain your rights by regularly checking for unauthorized use of your mark. If you are aware of possible infringement, you have an obligation to address it, sooner rather than later. “Sleeping on your rights” can lead to losing your rights.

– ck

Active Brand Monitoring and Karma Produces a Win in Karmaloop UDRP Action

Yesterday, Karmaloop won ownership of three domain names occupied by cybersquatters. The domains <karmaloup.com>, <karmamloop.com>, <marmaloop.com> were in dispute.

I had the opportunity to speak with CEO and Founder Greg Selkoe over the phone, who described Karmaloop as a “lifestyle and media company”, and pointed out the over $130 million in revenue his company achieved in the last year. Of course, a company of Karmaloop’s stature will have its imitators, as well as persons who will try to profit from Karmaloop’s success through cybersquatting.

In a UDRP action filed on August 11, 2011 by CitizenHawk on behalf of Karmaloop, Karmaloop alleged that the domain owners engaged in bad faith disruption of Karmaloop’s business due to the fact that the infringing domains contained links to Karmaloop’s competitors. The Panel thought so as well, holding that the cybersquatter’s “inclusion of links to [Karmaloop’s] competitors on its websites constitutes bad faith disruption of [Karmaloop’s] business.”

Due to the existence of links to Karmaloop competitors on the cybersquatter’s domains, the Panel assumed that the cybersquatters were collecting click-through fees. This is notable because the Panel used this reasoning to establish that the domain owners were commercially gaining from the confusion caused by the similar domain names, and thus a violation of the UDRP Paragraphs 4(c)(i) and 4(c)(iii) (lack of rights and legitimate interests in the domain).

The combination of domain names which are almost identical, along with advertising of direct competitors, is a scenario the UDRP seeks to discourage. <karmaloup.com> and <marmaloop.com> only exchange one letter from Karmaloop’s trademark, and <karmamloop.com> only adds one letter. These types of minor, single-letter changes to a trademark are typically held by UDRP panels to be insufficient to claim that a domain is distinguishable from a trademark owner’s mark.

The internet is a great space for innovative business tactics, but it is also a place for innovative foul play. In the world of domain names the UDRP is a way for those who engage in fair business practices to take control of their brand and business, and prevent the uninventive from free-riding.

– ck

Lady Gaga is Not Gaga About LadyGaga.org

Lady Gaga filed a UDRP action (text) against the owners of <LadyGaga.org>, and was delivered a loss last Friday. Lady Gaga argued that since the disputed name is identical in sight, sound and meaning to her trademark, that the owners of <LadyGaga.org> registered thedomain after Lady Gaga’s trademark became famous, and that <LadyGaga.org> desired only to “capitalize on and profit from the success and notoriety of Lady Gaga and to keep her from owning and using her name as a web site.”

The hurdle Lady Gaga was unable to leap over in this UDRP action  with the National Arbitration Forum (NAF)  was convincing the NAF Panel that the owner of <LadyGaga.org> lacked rights and legitimate interests in the domain name under the UDRP, the second element of a UDRP action.

To summarize, the Panel focused on three key observations. First, the Panel noted that <LadyGaga.org> is a purely non-commercial website, offering Lady Gaga’s tour dates, photographs, video clips, a fan blog, and biographical information. Additionally, the  only links from <LadyGaga.org> were one which directed users to an official Lady Gaga site, and another to the web designer’s webpage.

Secondly, the Panel cited previous NAF case law which upheld the notion that use of a disputed domain name in conjunction with a fan website is an acceptable use under the UDRP as it is a legitimate fair use under the UDRP Paragraph 4(c)(iii). Citing a previous case, the Panel reiterated “There is significant social value in permitting supporters of performers to express their support and appreciation for them…just as there is a right to criticize public figures under the freedom of speech principles.”

Lastly, the Panel made notable reference to the disclaimers prevalent on the <LadyGaga.org> website. Website visitors are immediately greeted with “Welcome to your #01 unofficial Lady Gaga fansite.” On this issue, the Panel stated that Lady Gaga “cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration.” Well put.

If you have a domain which is identical or similar to another’s trademark, you are always at risk of an unruly trademark owner filing a UDRP action against you. The first lesson of the day is that you are in a good position within a UDRP action if you make an effort to distinguish your webpage from an official trademark owner, making visitors to your site aware that your webpage is in no way affiliated with the trademark owner.

The second lesson of the day is to make sure that you do not profit from your webpage which has a domain similar to another’s trademark. Be aware that “profit” can be derived in many ways: selling counterfeit products of the trademark owner, selling advertising on your webpage, and linking to other sites which sell products related to the trademark owner, among others.

What’s next for Lady Gaga? Funny enough, there seems to be an identity crisis amongst the owners of <Lady-Gaga.net>, and <propaGaga.com>, with Twitter accounts @popatemyheart  @gagamonstersnet @PropaGaga all seemingly to lay some type of claim to those domains. Watch out for Gaga!

– ck

The Uniform Domain Name Dispute Resolution Policy (UDRP) – Assisting Domain Name Disputes

Suppose your company name was IntelliFox, and your business sold children’s learning software online. You would not be delighted if someone registered <intellifox.com> and sold children’s books, or worse, if they registered <intellifoxxx.com> and sold porn. This is where the UDRP comes in.

The UDRP is the international legal framework used for domain name disputes internationally. If someone registers a domain name that is confusingly similar to one of your registered trademarks, you can use the UDRP to help take ownership of a domain name which was registered in bad faith to your disadvantage.

The Uniform Domain Name Dispute Resolution Policy is essentially a treaty with force in almost every country on the globe, requiring domain name registrars to comply with decisions made with an approved arbitration provider. The most notable and used provider is the World Intellectual Property Organization (WIPO). While headquartered in Geneva, Switzerland, WIPO in recent years has required that 100% of disputes must be submitted electronically, allowing for ultimate flexibility in resolving domain name disputes.

What the UDRP is.

The UDRP is a set of rules applied by the three approved arbitration providers in the world for resolving domain name disputes. The UDRP process was designed to be a quick and easy way (relative to standard litigation) of determining whether or not a domain name owner is cybersquatting on a domain. The UDRP limits results to two options: whether or not the domain name ownership is transferred to the trademark owner. No UDRP arbitration provider will resolve any matters of monetary damages, so if one is seeking monetary damages, the UDRP would not be the vehicle.

UDRP: Process and Procedure.

Typical UDRP cases can be resolved within 45 days of the filing of a complaint. WIPO charges $1500.00 USD for one arbitrator in a case involving 1-5 domain names, and $4000.00 USD for 3 arbitrators hearing a case involving 1-5 domain names. Click here for a more detailed schedule of fees. In addition to WIPO fees, I personally have seen legal fees for a UDRP action ranging from $3500.00 USD to $15,000.00 USD. Many lawyers do offer a flat fee for this service.

Here is a rough timeline for a UDRP action:

• Day 1 – Complainant files an action
• Day 21 – Respondent has 20 days to file an answer. Respondent will default if no response is filed within the 20 day window.
• Day 26 – The arbitration provider has 5 days to appoint a panel to review the complaint and response.
• Day 40 – After a panel has been appointed, the panel has 14 days to make a decision.
• Day 43 – The panel has 3 days to inform the parties of the decision.
• 10 Days Later – The relevant domain registrar will put the panel decision into effect, canceling or transferring the domain name ownership accordingly.

For the actual text of the Rules for the UDRP, click here.

Elements of a Successful UDRP Claim.

For a complainant to succeed, they must establish all of the following:

1. That respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. That respondent has no rights or legitimate interests in the domain name; and
3. That respondent registered the domain and uses the domain in bad faith.

A relatively significant body of law exists behind each of these three elements, so they will be discussed more in depth in the future. I will slightly touch upon the element that I see most confusion about: bad faith.

Bad faith is easily established when the owner of a domain name registered a domain name which is confusingly similar to a trademark, after the trademark was registered. This is because the UDRP sees a trademark registration as a sufficient warning to the public, a “Hey, don’t even think about registering a domain name similar to this trademark!” message. Unfortunately, anything less than a trademark registration prior to an infringing domain name registration will be difficult to prove as “bad faith.” In these situations, only a few cases exist where bad faith was established; only if the respondent was proven to have clear, blatant knowledge of the UDRP complainant, and it was proven that respondent’s goal was to take advantage of confusion between the domain name and any trademark or branding rights of the complainant.

I will discuss the other elements in depth in the future, thanks for reading my blog!

–          ck

Nestle's Negative Publicity in Cyberspace – Social Media Failure

In 2010, Greenpeace® released a controversial video on YouTube regarding food giant Nestle®’s source for palm oil for their products.

The specific product targeted was the Kit Kat® bar, and the video made a play off the Kit Kat® slogan “Have a break… have a Kit Kat”. Greenpeace® claimed that Nestle®’s source for palm oil in Indonesia had dirty hands in destroying rainforests which were natural habitats for orangutans.

In addition to the slogan, the Greenpeace® video also mimics a Kit Kat® commercial, beginning with a bored office worker shredding paper for his boss for hours. He pulls out a Kit Kat® bar and bites into it, not noticing or caring that the bar is actually a bloody orangutan finger, and drips blood all over his face and keyboard.

The video was posted on YouTube®, and went viral. Nestle®’s legal team took quick action, and had the video properly removed from YouTube. But in today’s day and age, a proper legal solution is not always a practical overall solution. Through social media channels on the internet, GreenPeace® supporters reacted strongly to Nestle®’s action, viewing it as an attempt to silence GreenPeace® and their movement. Once coupled with Nestle®’s takedown actions, the video transformed into its own beast overnight around the globe on social media networks.  Individual supporters began reposting the video all over the internet, and I assume Nestle® realized that for each video taken down, GreenPeace sympathizers would only become more emboldened, and only more videos would pop up; a publicity nightmare.

This is an example of how legal solutions are increasingly intersecting with public relations due to social media. While the legal solution did not fully achieve Nestle®’s objectives, the public relations department slightly better, releasing this letter from Nestle® to Greenpeace®.

Despite the letter, I would have recommended Nestle® to immediately deal with the video head on. A general strategy would be 1) acknowledgement of the video, 2) a response page offsite from the Nestle® main page (but include a link from the main page), 3) a social media campaign to educate individuals on Nestle®’s practices and what Nestle® was doing to ensure the safety of orangutans and rainforests, and 4) once a policy shift was made, to publicize it! During my research for this blog, it took me some time to even find the letter in the link above, only showing up 5th in Google® search results for a search on “nestle changes policy on palm oil”.

If you are going to put a good foot forward, put it all the way in front!

Nestle’s Negative Publicity in Cyberspace – Social Media Failure

In 2010, Greenpeace® released a controversial video on YouTube regarding food giant Nestle®’s source for palm oil for their products.

The specific product targeted was the Kit Kat® bar, and the video made a play off the Kit Kat® slogan “Have a break… have a Kit Kat”. Greenpeace® claimed that Nestle®’s source for palm oil in Indonesia had dirty hands in destroying rainforests which were natural habitats for orangutans.

In addition to the slogan, the Greenpeace® video also mimics a Kit Kat® commercial, beginning with a bored office worker shredding paper for his boss for hours. He pulls out a Kit Kat® bar and bites into it, not noticing or caring that the bar is actually a bloody orangutan finger, and drips blood all over his face and keyboard.

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The video was posted on YouTube®, and went viral. Nestle®’s legal team took quick action, and had the video properly removed from YouTube. But in today’s day and age, a proper legal solution is not always a practical overall solution. Through social media channels on the internet, GreenPeace® supporters reacted strongly to Nestle®’s action, viewing it as an attempt to silence GreenPeace® and their movement. Once coupled with Nestle®’s takedown actions, the video transformed into its own beast overnight around the globe on social media networks.  Individual supporters began reposting the video all over the internet, and I assume Nestle® realized that for each video taken down, GreenPeace sympathizers would only become more emboldened, and only more videos would pop up; a publicity nightmare.

This is an example of how legal solutions are increasingly intersecting with public relations due to social media. While the legal solution did not fully achieve Nestle®’s objectives, the public relations department slightly better, releasing this letter from Nestle® to Greenpeace®.

Despite the letter, I would have recommended Nestle® to immediately deal with the video head on. A general strategy would be 1) acknowledgement of the video, 2) a response page offsite from the Nestle® main page (but include a link from the main page), 3) a social media campaign to educate individuals on Nestle®’s practices and what Nestle® was doing to ensure the safety of orangutans and rainforests, and 4) once a policy shift was made, to publicize it! During my research for this blog, it took me some time to even find the letter in the link above, only showing up 5th in Google® search results for a search on “nestle changes policy on palm oil”.

If you are going to put a good foot forward, put it all the way in front!

Protect Your Brand, #1

Beware of electronic and physical publications which use your logo in a way which suggests your sponsorship. Companies may be motivated to use logos of other brands which may be more well-known in the industry, for the purpose of trying to boost their own image.

For example, let’s take a hypothetical company, DesiKicks, which designs brilliant shoes but has no reputation for quality, long-lasting shoe construction. DesiKicks implements a marketing plan which includes creating a new page on their website, promoting the long-lasting features of their shoes. So far, so good. But DesiKicks would cross the line if, for example, they prominently placed a Nike logo on that page, because it implies that Nike is sponsoring DesiKicks. While the implied message may or may not be true, under U.S. trademark law, Nike reserves the full right to control what their brand is associated with.

Think twice about letting other companies use your logo on electronic or printed materials. Your logo is part of your brand identity, and giving someone else broad freedoms to use your logo can lead to consumers, including your existing customers, having misguided impressions about your company. If your logo is associated with unseemly brands, negative political affiliations, or opinions you and your company do not want to be aligned with, you stand to lose control of your public image in the marketplace.

THINK ABOUT: Having a “linking” license agreement with another company before allowing them to use your logo and/or branding on their own website. This agreement can help you structure exactly how, or how not to, use your logo.

3 Advantages of UDRP Over Litigation in Cybersquatting Situations

Using the UDRP process to resolve domain name disputes has many advantages, and can be summarized into three main reasons. Domain name disputes bring particularly interesting issues to the table because of the way domain names are regulated and managed, and the UDRP process is a simple and quick process to deal with issues that could be much more complex and resource-consuming. To briefly illustrate, ICANN is a nonprofit, non-governmental organization which, for all practical purposes, is the lead regulator of all the world’s domain names. However, individual countries also have their own sets of rules and regulations for trademarks, which are greatly related to domain name disputes. Many problems arise at this intersection of domestic law, and international law rooted in treaties and other multilateral agreements.

1) The UDRP is quick & easy

The typical timeline for a UDRP case, from filing of a complaint to completion of the process, is 60 days, which is relatively short compared to the uncertain timelines with federal litigation. Also, only one document needs to be submitted by the Complainant, and one Response filed by the Respondent. Once a complaint has been filed, a Respondent has 20 days to respond, and WIPO will assign a Panelist within 5 days after a response has been made. Panelists are required to issue a decision to the relevant domain name registrar within 14 days of being assigned, and then the registrar is required to carry out the decision within 10 days.

2) The UDRP uses Panelists who are experts in trademark and domain name issues. 

Have the confidence that your domain name rights are being assessed by experts in the field, as opposed to federal judges with caseloads containing a small fraction of trademark cases, and even fewer domain name cases. Expert Panelists minimize the risk of faulty decisions which may lead to more expensive appeals made by a party who is wronged by a decision. Additionally, Panelists are drawn from all over the world, and may likely have more expertise on the subtle international issues present in cybersquatting cases.

3) The UDRP is an inexpensive process. 

The majority of UDRP cases are administered by WIPO in Geneva, Switzerland (“OMPI” locally), where cases involving 1-5 domain names and heard by a single Panelist costs $1500.oo USD, and a panel of 3 costs $4000.00 USD in fees. Fees are payable by the Complainant. Lawyer’s fees typically range from $3500.00 to 6000.00 USD in addition to the WIPO fees. Thus, Complainants could have a decision for under $10,000.00 USD, where federal litigators will easily ask for a $10,000.00 up front retainer just to begin federal litigation; litigation which tends to have an uncertain path and future costs.

– ck