Proper "Use" and Your Trademark Portfolio

I think it is good practice that, from time to time, brand owners audit their trademark portfolio to analyse their current practices, look at their future brand strategy, and compare those two in order to see where shortfalls exist and where current practices may need to be adjusted moving forward.

One part of a trademark audit should include a look into the use of the trademarks currently registered. Improper use of a trademark can lead to trademarks losing their distinctiveness, shrinking of the scope of protection, and loss of clarity in brand identity amongst consumers. Proper notice of trademark rights, such as properly adding the ® symbol to trademarks, can have a deterrent effect on likely infringers. In a similar vein, improper use of the ® symbol varies from country to country (no rules in Brazil; only with registered trademark marks in India, punishable by fines and even imprisonment), and thus having an accurate grasp of one’s trademark use and the relevant legal authority will help avoid unnecessary surprises.

Proper use is also important with respect to use requirements in different jurisdictions. In the United States, the standard of “a bona fide use of the mark in the ordinary course of trade” is necessary before a trademark registration will issue. In the European Union, Community Trade Mark (CTM) applicants receive a trademark registration first, and only after five years could the proprietor be required to demonstrate “genuine use”, and with different standards than in the U.S.

It is important to have an accurate perception of the use of existing registered trademarks and potential marks for which registration may be sought at a later date. By conducting an audit of the portfolio, which includes an assessment of use, trademark usage guidelines can be created for all the relevant parties in a company which is related to use of the brand. This will help to ensure that marketing managers, social media teams, and business groups will all use the brand in a unified and clear manner, and thus protect and increase the value of the brand.

– ck

The Madrid Protocol for International Trademark Registrations. Part 1 – What it is.

Picture of WIPO Headquarters

The ever-growing amount of business that can be and is being done online is one factor driving the ever-growing need for global protection of trademark rights. The Madrid Protocol is an international treaty which provides one method of registering a trademark in several international jurisdictions through one simplified process. The Protocol is an alternative to the traditional method for a global expansion of trademark rights: filing individual trademark applications in each desired country using local counsel.

The Madrid Protocol allows the holder of a trademark registration in a Protocol country to extend the “home” registration to other Protocol countries. Trademark holders do this by essentially checking off the desired countries and paying a fee. There are currently 84 Protocol countries, and new countries are always joining (New Zealand, India, and Tunisia have all passed legislation in their respective countries to join the Protocol). Filing Protocol applications in foreign jurisdictions does not require foreign counsel.

Procedure and Cost Summary

Using the Protocol to acquire international registrations is effectually extending the trademark rights in the “country of origin”. While any Protocol country can be the country of origin for a Protocol “extension of protection,” the United States will be used as the example.

A trademark applicant to the United States Patent and Trademark Office (USPTO) may choose to extend that application or registration anytime after an application has been made (before and/or after a registration certificate has been issued). A fee is paid to the USPTO, which certifies the application, and send it to the International Bureau, an office maintained by the World Intellectual Property Office (WIPO) in Switzerland. After selecting the countries in which the applicant seeks trademark protection, a fee is paid to the International Bureau. Here are links to the current fee schedule and fee calculator.

The International Bureau then forwards the application to the selected countries’ trademark offices, which then assess the application on more-or-less the same basis they would a domestic application. If the application meets the foreign trademark offices’ requirements, an “extension of protection” is granted in that country. It is important to note that this is not the equivalent of a registration in that country. This will be explained in the next post.

Initial filing costs are based on the number of international classes (listed here with brief descriptions), as well as costs charged by the trademark office of the country of origin. This fee is $100 per class for the USPTO. Keep in mind these are only initial costs, covering only the cost of filing the application.

 

– 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

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

A Case Analysis: The Uniform Domain Name Dispute Resolution Policy

A recently issued decision by the National Arbitration Forum reinforces the importance of ensuring UDRP complaints are fundamentally sound. In PrintingForLess.com, Inc. v. Intech Printing, FA366693 (Nat. Arb. Forum May 7, 2011), complainant PrintingForLess.com, Inc. filed an action against respondent Intech Printing for the transfer of the domain name bestprintingforless.com, and Intech Printing failed to respond. Both parties were engaged in online commercial printing services and located in the United States.

Facts of the Case

Complainant PrintingForLess.com began their online printing operation in 1999, applied for trademark registrations for several variations of “PrintingForLess” in the United States in 2003, and had registrations granted to them in 2005. Respondent Intech Printing registeredbestprintingforless.com in 2004, approximately five years after PrintingForLess.com registered their domain printingforless.com. Users who entered bestprintingforless.com would find an offering of services substantially similar to the services offered on printingforless.com.After the deadline for a response to be filed by Intech Printing expired, the Panel assigned to the case proceeded to hear the complaint pursuant to the UDRP. The relevant rules instruct Panels overseeing domain name disputes to proceed with a case on the basis of the complainant’s undisputedallegations, so long as those allegations and inferences from those allegations are reasonable and there is no contradictory evidence. These rules apply equally to cases where no response is filed.

A Notably Detailed Analysis of a Case, Despite the Absence of an Answer

The facts were quite clear in satisfying the elements of a UDRP dispute. The Panel found 1) the disputed domain name to be confusingly similar to the registered trademark “printingforless.com”, 2)that Intech Printing had no legitimate interests in the disputed domain, and 3) that Intech Printing registered and used the disputed domain in bad faith.What is notable about this UDRP decision is the level of detail used by the Panel in analyzing each element in a dispute with no response. This is especially so when compared to a default occurring at a state or federal court of the United States. In fact, on the second element, the Panel gave a full analysis of the allegations made by PrintingForLess.com, despite the fact that the Panel could have ruled the element as satisfied at the end of the first paragraph of the discussion. The Panel cited a case holding that the mere filing of a complaint constitutes the establishment of a prima facie case,and instead of concluding the discussion at this point, the Panel continued the discussion for two more paragraphs regarding the second element. This attention to detail leaves the gates of possibility wide open for an improperly pleaded UDRP complaint to be ineffectual in securing a domain transfer, even in UDRP disputes with no response.The importance of properly pleading the elements of a case cannot be over emphasized. Under the UDRP, panelists must still analyze the complaint before granting a domain transfer in a UDRP dispute with no response. The internet community seems to place a level of importance to this process, in light of the criticism the Czech Arbitration Court received on their proposal to offer an expedited UDRP process where no response was filed.(http://www.adr.eu/arbitration_platform/news.php). Considering the outcome for a default is a transfer of the domain name, this adherence to a strict analysis of a UDRP complaint in cases without a response is understandable. The lesson here is completeness: make it easy for the UDRP Panel hearing your case to decide in your favor. UDRP Panels are paying attention to your pleadings, even if the respondent fails to answer.

Mixed Results? UDRP Proceedings Versus a United States Trademark Infringement Action

To compare PrintingForLess.com’s decision to file a UDRP complaint with their other option, filing a complaint in a United States Federal court, one can see why the former was the choice. A simple answer is cost: UDRP disputes in the National Arbitration Forum or WIPO have a fee range of $1300- $4000 plus legal costs, which are also relatively contained due to the expediency with which UDRP cases are resolved. Alternatively, legal fees associated with just the filing of a complaint for federal trademark infringement may already reach the cost of a completed UDRP proceeding, and provides no guarantee of finality.The standard in a federal court in the United States is whether there is a “likelihood of confusion”between the two marks. A federal court would analyze whether Intech Printing’s registration and use of bestprintingforless.com was a commercial use of PrintingForLess.com’s trademark that was likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. The legal test for this can involve the analysis of as many as seven factors! This easily translates into higher legal fees.There are many similarities within the legal authority guiding UDRP disputes and US trademark infringement suits. For example, U.S. common law also holds that the addition of a single modifier toa trademark will not shield a defendant from an infringement claim. This is essentially identical to UDRP precedent which has established that “the addition of a single, generic term to a complainant’smark is not sufficient to render the domain name distinct from the mark.”One difference in UDRP disputes and U.S. trademark law is the applicability of laches, an equitable defense applied when a plaintiff is found to have “slept on his rights.” Laches is a formidable defense under U.S. trademark law, whereas laches has had limited and sporadic results in UDRP proceedings.In the case at hand, Intech Printing may have had a good argument in a federal court in the U.S. for a laches defense due to the seven years which passed between Intech Printing’s registration of the disputed domain and PrintingForLess.com’s filing of an action. In the United States, delays in bringing an action of three years and eight months have been held to be sufficient for establishing a laches defense. Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 U.S.P.Q.2d 1203 (TTAB2006).

For PrintingForLess.com, filing a UDRP dispute might not just have been a cost-cutting measure, but also a strategic one as well.

– ck