Professional Trademark Search: Should I Pay for This?

The answer is: “It depends.” Like most simplified questions asked to lawyers, the answer to this depends on your individual situation. If simple questions had simple answers, software would be written to replace lawyers, in which case I’d be out of a job but not out of my obligation to pay for law school. Ouch.

Professional trademark searches can be valuable when you need to know whether your proposed trademark will likely be granted trademark registration by the USPTO; and when you need to know quickly and with some degree of certainty. Basically, if you are about to invest a relatively significant amount of resources into a brand without having a trademark registration, I would recommend first investing in a full professional search report.

This situation commonly arises when a company develops an idea for a brand or company name, and is ready to move quickly with branding and marketing. While a trademark registration typically takes 6-9 months to clear, at best, marketing can be ready much sooner than that. The dangers of moving ahead without a finalized trademark registration can be any of the following, plus more:

• possibly infringing upon someone else’s trademark, and being liable in court for the infringement.
• spending significant amounts of time on marketing efforts, and then finding out you infringed on another trademark
• spending significant amounts of money on web development, stationary, and advertisements, and then ultimately failing to secure a trademark registration
• choosing a brand or company name, and not being able to secure key domain names
• investing many resources into the new brand or company name, encountering any of the problems above, and then having to spend more resources on rebranding

Trademark lawyers should be able to offer  you a professional search report from a third party, such as Thomson Compumark, which I personally like to use with my clients if needed. The costs range from approximately $600-$1400 USD, mainly depending on how quickly you need the report done (1-4 days), and you should also factor in 1-2 hours of your lawyer’s time to review the report as well, which can sometimes be hundreds of pages long.

By ordering and having a good trademark lawyer review a professional search report, you can get near a 90% certainty as to whether your proposed mark will succeed at becoming a registered trademark. On the other hand, if you have already been using your brand for some time with no problem, and you are not necessarily expanding your business at lightening speed, then a full search probably is not necessary for your situation, and you should not be “sold” on this extra service by your lawyer.

– ck

How Much Does a Trademark Registration Cost?

Seal of the U.S. Patent and Trademark Office (for example only)

Registering a trademark in the United States can cost as little as $275 (for the most commonly used “TEAS Plus” application)  in fees to the United States Patent and Trademark Office. However, as with many procedures involving the law and lawyers, the costs can always end up to be significantly more than the low estimate.

In addition to the USPTO filing fee, legal fees for registering a trademark typically range from about $1000.00-$5000.00 USD. Pricing models also differ from firm to firm, but I think a good trademark lawyer should be able to state a flat fee, as well as clearly identify what is and is not included with the flat fee. A reasonable trademark lawyer should include in a basic trademark service the following:

1. A preliminary search of the mark, both in the USPTO database and on the internet in general. This step can only serve the purpose of eliminating major potential problems, as no trademark lawyer should represent that they themselves have the ability to conduct an exhaustive search.
2. If the preliminary search returns no major problems, the lawyer should then file the application with the USPTO, which begins the official process.
3. In about 3 months, a USPTO lawyer will review the application. If there are problems with the application, the USPTO will issue an Office Action, which is a formal statement identifying problems with the application, and usually indicates what is needed to fix the problem. I strongly believe that a good trademark lawyer should include in a flat fee, a set number of hours which the lawyer will dedicate to dealing with simple Office Actions. I typically include 2 hours of my time, and this ensures that simple problems will be resolved without my client having to pay more money.
4. About a month after the application is approved by the USPTO, the application is then submitted for “opposition” for 30 days: published on the internet for anyone to see, and to oppose if they believe they may be harmed by a registration of the mark in the application. As with step 3, small problems may be resolved without too much time (again which I believe a good trademark lawyer should include with a flat fee), but larger problems may occur.
5. About a month after the opposition period ends, or after all oppositions are satisfactorily resolved, a trademark registration will be issued.

I believe clients are generally happy with flat fees, as it helps to maintain some predictability in the process.  However, clients should understand that whether the services offered under a flat fee arrangement are sufficient for their mark to be registered does depend on what is being sought to be registered.

For the mark “App Store”, Apple has been fighting the USPTO and many other companies, including Amazon.com, for years. Of course, legal fees for this mark are definitely in the five-figure range, and likely in the six-figure range. I do not mention this to frighten anyone, but one must consider that Apple has done a cost-benefit analysis of this venture, and has decided to pursue this. Also consider that Apple’s brand alone is worth $153 billion, so they understand the value of investing in their brand.

To conclude, the stronger a mark is, and the more unique it is, the more likely the mark will smoothly travel through the registration process, meaning less money spent on lawyers. The combination of a strong mark and having a lawyer with a flat fee will help you keep your legal expenses in check through this brand-building process.

– ck

Twitter's Recent Trademark Successes

In recent days, San Francisco based Twitter has won a few small victories in the never-ending gargantuan effort of establishing and protecting their brand. Yesterday, a WIPO arbitration panel handed over a judgment which will transfer the <twitter.ch> to Twitter from a Swiss cybersquatter, even citing a Swiss trademark registration.

Also, according to an unverified report, Twitter has also cleared up some legal problems which were standing in the way of their U.S. trademark registration applications for the word “TWEET”. Contrary to what many of the articles I have just read on the subject say, the battle for the trademark registration is not over yet. Based on a quick view of the history of the TWEET applications (one and two), it looks like more troubles may be lying ahead for TWEET. More in the next blog post.

– ck

 

 

Twitter’s Recent Trademark Successes

In recent days, San Francisco based Twitter has won a few small victories in the never-ending gargantuan effort of establishing and protecting their brand. Yesterday, a WIPO arbitration panel handed over a judgment which will transfer the <twitter.ch> to Twitter from a Swiss cybersquatter, even citing a Swiss trademark registration.

Also, according to an unverified report, Twitter has also cleared up some legal problems which were standing in the way of their U.S. trademark registration applications for the word “TWEET”. Contrary to what many of the articles I have just read on the subject say, the battle for the trademark registration is not over yet. Based on a quick view of the history of the TWEET applications (one and two), it looks like more troubles may be lying ahead for TWEET. More in the next blog post.

– ck

 

 

Interesting Trademark Law Fact 1: Abandonment

One way to lose a U.S. trademark registration is through “abandonment” of the mark. Among other ways, abandonment can be established by a showing of non-use of the mark in commerce. For example, if McDonald’s issued a press release stating that they were going to take Big Mac’s off their menu, and consequently stopped selling Big Mac’s, McDonald’s could likely lose their trademark in Big Mac’s for sandwiches in International Class 030.

However, courts have held that not all nonuse will lead to abandonment. An interesting series of cases occurred in the 1940’s where courts consistently held that suspension of a use of a trademark due to war would not lead to abandonment of a mark.

In Vaudable v. Montmarte, the famous Parisian restaurant Maxim’s was closed due to German occupation in WWII, and thus suspended it’s wine and catering services in New York, where it operated under the same name. Another New York restaurateur opened a replica of the Parisian Maxim’s in New York City, and the court fell deaf to the restaurateur’s claims that the real Maxim’s abandoned its trademark rights, finding no abandonment of the mark since Maxim’s business continued after the war in 1946. A similar finding on the abandonment-due-to-war issue. occurred in Chandon Champagne Corp. v. San Marino, involving the “Dom Perignon” mark. However, the ultimate result was against the owners of “Dom Perignon.”

Courts have refused to find abandonment in many situations where companies stopped using their trademarks due to outside circumstances: labor strikes, government seizures of foreign based companies, severely low levels of sales, and resource-intensive litigation causing a halt in business operations.

If you find your company needing to temporarily halt your trademark use due to severe outside circumstances, you may still preserve your trademark rights!

– ck

Trademark Registration: The “Use in Commerce” Requirement for Internet-Based Companies

For all marks sought to be federally registered in the United States, the requirement that the mark first be “used in commerce” must be satisfied, as registered trademarks must designate the origin and source of a product. At least one qualifying “specimen” of the mark being used in commerce must be submitted in each trademark application. Typically, submitting a picture of a mark attached to a good, a picture of a product with the mark in a trade catalog, or a picture of the mark on a trade show sign will suffice. This is requirement is relatively easy to satisfy in goods-based industries, and slightly more difficult for service-based industries which offer most or all of their services on the Internet.

While screenshots of a trademark applicant’s webpage can be a satisfactory specimen to satisfy the “use in commerce” requirement, a slightly different and more specific set of rules applies when the goods or services are offered exclusively on the internet.

Goods-Based Companies Existing Exclusively on the Internet

For a goods-based company on the internet, the USPTO follows case precedent on this issue, which consists of three factors to determine the eligibility of a screenshot as a specimen showing “use in commerce”:

1. The webpage must include a picture of the goods
2. The mark seeking registration must be shown sufficiently near the picture of the goods so that the website viewer is likely to associate the mark with those goods
3. The webpage contains the information needed by a website viewer to purchase and order the goods.

I would also stress that the mark should prominently displayed in the screen, as well as in all the pages of your website. If your mark is buried amongst a sea of text on your webpage and in your screenshot, it will not be seen as a sufficient use.

If your application for a trademark will submit a screenshot of your webpage as a specimen, and that screenshot satisfies the above three requirements, then it should satisfactorily demonstrate “use in commerce” to the USPTO Examining Attorney on your case.

Service-Based Companies Existing Exclusively on the Internet

Service-based companies possess a unique twist on the issue of proving “use in commerce” in a trademark application. This is because there is no part of the service upon which one could attach the mark. For specimens used to show “use in commerce” of service marks in general, it is only necessary to show the mark actually used in the advertising of the services, with an emphasis on an association between the mark and the services. A screenshot which shows only the mark, without a reference to the relevant services, would not demonstrate sufficient usage of the mark.

Consider adding a tagline to your mark, briefly explaining the services associated with the mark. For example, I am currently rebranding my law practice under the mark SOMA, with a tagline beneath stating “Trademark and Branding Law for the Internet Era”. If placed several mentions of the mark SOMA all over my webpage, and thus all over my screenshot specimen, it may not be obvious to a website visitor what it is that SOMA as a company provides. If this is unclear, than there is insufficient usage of the mark in commerce.

Examples of Specimens Failing to Demonstrate Sufficient “Use in Commerce” for Services

• A professional Christmas tree decorator/designer company submitting a specimen of a picture showing tags with their mark fixed to Christmas trees (mark makes no explicit reference to services)
• A custom parts manufacturer submitting a specimen of a picture showing labels fixed to packaging of custom manufactured parts (insufficient to show “custom manufacturing” as the service connected to the mark)
• An anti-drunk-driving organization submitting a specimen of a bumper sticker containing only the mark (the mark itself was insufficient to demonstrate what service was being provided)

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!