I have accepted a position that will not allow me to write in 2016. However, I want to continue to provide information on cyber, intellectual property (IP), social media, security, privacy, and technology law and policy to you all. So…. I am accepting submissions from guest bloggers!
Please send me your best cyber, IP and tech law and policy posts. Many of this blog’s followers are entrepreneurs, technophiles, tech novices, bloggers, social media user and those intrigued by tech, so please cater your posts to that audience. Please send posts to firstname.lastname@example.org. I will notify you if your post is selected.
Thank you for your submission, in advance, and more importantly, THANK YOU FOR READING!
I hope the readers find previous posts and any information others are able to provide in my absence helpful! And I look forward to returning in 2017!!
It is extremely important for companies to protect their intellectual property. Developing a comprehensive intellectual property plan is essential to protecting your investment and protecting your consumers from confusion. Trademarking your brand names, slogans and company name as well as copyrighting blog content, original imagery, and other original works of authorship are commonly know areas of focus for companies and entrepreneurs. You want to be in control of your brand, your content and your creations.
Now, according to one federal court, companies can use trademark law to protect the unique look and feel of their websites from imitators. As a result of this ruling, companies should consider registering their websites as trademarks with the U.S. Patent and Trademark Office (the “USPTO”).
The U.S. District Court for the Northern District of California recently ruled in Ingrid & Isabel, Inc. v. Baby Be Mine, LLC, No. 13-01806 (N.D. Cal. Oct. 1, 2014) that the look and feel of a website used to market and sell products and services can constitute protectable trade dress under Section 43 of the Lanham Act. See 15 U.S.C. § 1125(a) (2012). Trade dress, a derivative of trademark law, protects the total image of a business or product, including the arrangement of identifying features such as graphics, packaging, designs, shapes, colors, textures, and décor.
This is an important development for companies seeking to protect their brand online. Your website is an important part of your brand as a company. It is often a customer’s first impression and point of sale. Previous case-law suggested that a website could constitute protectable trade dress only if the website itself was the product. See Conference Archives, Inc. v. Sound Images, Inc., No. 06-00076, 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010) The Ingrid & Isabel case provides an opportunity to expand those protections. This decision is reminiscent of the USPTO allowing Apple, Inc. to register a trademark for the design and layout of its unique retail stores. Your website is in effect your online store. This is a great example of the law starting to catch up with the times. Companies seeking to take advantage of this protection must make sure their website is 1)distinctive or has acquired secondary meaning and is 2) nonfunctional.
The court noted that the “Supreme Court has held that ‘design, like color is not inherently distinctive’ [citing a case involving Wal-Mart.] Given the conceptual similarity between ‘look and feel’ and ‘design,’ Wal-Mart suggests that Plaintiff must show that its website‘s ‘look and feel’ is distinctive through its secondary meaning.” This eludes to the fact that the design of a website is not “inherently” distinct. You want to secure these protections before someone seeks to copy your website. However, per previous case-law “secondary meaning may be inferred from evidence of deliberate copying of the trade dress…” Therefore, if you can show that your competitor deliberately copied your website, that will help to support your claim for acquired distinctiveness.
Functional elements cannot be protected as trade dress. However, according to the court in Ingrid & Isabel “the placement and arrangement of functional elements can produce a non-functional aesthetic whole.”
This is also an important decision from a cybersecurity perspective. Most consumers are lured into phishing and other fraud scams when malicious actors mimic the look and feel of a brand’s website. Armed with a similar site they can lure unsuspecting consumers to insert personally identifiable information and financial data into their fake site. This can result in identity theft and financial loss. This is another tool in a trademark owner or company’s arsenal to combat fraud and protect their customers.
If your website is distinct, talk to an attorney about protecting it. This is an important consideration and should be part of developing a comprehensive intellectual property plan.
Trade dress protection has existed for decades, but its usefulness for websites and other Internet-based applications has been limited. It will be interesting to see how courts continue to apply the law to websites, mobile apps, and other non-traditional mediums.
Note that the court didn’t determine the ultimate outcome of this case; that’s still in dispute. This ruling merely allowed Ingrid & Isabel’s claim on this point to proceed to trial.
So you have great idea blog, business, product, brand, etc.! Now what? How do you make sure you are protecting your asset?
Well, an important part of protecting your invention, product or business is protecting the name. Start by outlining a strategic plan for trademarking your intellectual property. A very important part of that strategy is determining whether or not your proposed mark can be trademarked.
How can I ensure my mark is trademarkable? What is the likelihood for successfully trademarking this name? Should I consider changing the name to make sure that it can be trademarked? These are questions you should ask yourself, preferably while under the consult of an attorney.
Only the USPTO can make a final decision as to whether or not a mark is eligible for federal trademark registration. However, they have provided guidance on what terms can be trademarked and ways to make otherwise untrademarkable names trademarkable. This guidance is a great framework to use when determining if you can successfully trademark your name.
Trademark rights are designed to protect the consumer from confusion. Therefore, the overarching rule is the USPTO will not approve a trademark they think will cause consumer confusion. Here are a few things to consider to help you think about whether or not your mark may cause consumer confusion in the eyes of the USPTO.
Originality The first thing to know is the USPTO will not trademark a name that is already trademarked or similar to a mark that is already trademarked, in the same or similar classification. The USPTO wants consumers to be able to associate a specific set of goods or services to a mark so if two marks are confusingly similar and are associated to the same or similar goods or services it is not likely to receive a federal trademark registration. A trademark clearance search is great tool to ensure that your mark does not infringe on the trademark rights of others. This search should scour federal and state registrations to ensure no one has already secured the same or similar trademark. Internet searches of businesses or brands operating with the mark that have not yet secured federal or state trademark protections are also very important because they may have common law trademark rights. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. It’s imperative to know all potential impediments. Having a clearance search done by a trademark attorney during the planning stages of your new venture can help you avoid rebranding and the expenses therein, after you’ve already launched.
Also if you are starting a business you should check with your state’s business entity registration office to see if the name you’ve chosen is available for your entity name.
Distinctiveness Trademark law requires that a mark be distinctive or unique such that it easily distinguishes a product or service from the product or services of others. The distinctiveness of a device can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. From most distinctive to least distinctive, these categories are:
Fanciful – marks created for the sole purpose of being used with the product or service. This is the strongest type of mark. E.g., would be XEROX or KODAK,
Arbitrary – a common word which is used in connection with products or services unrelated to the dictionary meaning. E.g. APPLE for computers. Arbitrary marks are also immediately eligible for registration.
Suggestive – marks that suggest a quality or characteristic of the goods and services but requires imagination on the part of the consumer to identify the characteristic. E.g., MICROSOFT (suggestive of software for microcomputers)
Descriptive – marks that merely describe the good or service. The mark likely uses the dictionary meaning of a works in connection with products or services directly related to that meaning. Unlike suggestive marks there is no imagination or creativity needed to identify the product or service. E.g., LEKTRONIIC was famously refused protection by the USPTO on ground of being descriptive for electronic goods.
Generic – the common name for the products or services in connection with which it is used, such as “salt” when used in connection with sodium chloride.
Devices that are fanciful, arbitrary, or suggestive are usually considered distinctive enough to function as trademarks. On the other hand, if a device is descriptive, the device can function as a trademark or service mark only if it has obtained secondary meaning. Generic devices can never be a trademark. A mark can become generic if the trademark becomes the generic name for the good or service. For example Escalator. See my previous post “Trademark Holders Beware of the Generic Curse” for more details.
Figure out where on the spectrum your mark falls. This will help gauge your likelihood for success and how long the application process will take. The closer you are to not distinctive portion of the spectrum the more likely you will need to prove distinctiveness tot he USPTO. If you have not yet selected a name, keep these limits in mind as you create one.
A few additional tips…
Claim Your Mark
Until you have secured a federal registration you cannot use the ® symbol, which indicates that the trademark is registered with the U.S. Patent and Trademark Office (“PTO”). However, you can use the ™ symbol with the mark to identify it as a trademark, whether or not a federal trademark application has been filed. The ™ symbol can be used with marks for both goods and services, although some companies use SM (referring to a service mark) with a mark that is used for services as opposed to goods. These symbols put people on notice that you claim rights in the mark, although common law (a trademark mark rights acquired merely by using the mark) doesn’t give you all the rights and benefits of federal registration.
Consult an attorney when determining whether or not to file a trademark. This is a brief overview and does not shed light on all of the intricacies of the process. Registration of a trademark is a very fact specific process and your mark must be analyzed on the merits. This article is just designed to help you frame your thought process. Attorney’s are uniquely equipped to position a mark to be successful and know how to fight a denial using case-law and previous registrations to get a seemingly untrademarkable mark trademarked.
As cases of employees loosing their job because the medium they love has “betrayed” them continue to pop up, I urge you again to be careful what you post. Revealing too much information can get you fired! There is a voyeuristic nature and a desire to share and stay connected in today’s society that has made social media (and reality tv – but that’s a topic for another day) popular. That desire is normal and appropriate within reason. Share about your mall trip and the new clothes you purchased, connect with old and new friends, share photographs but make sure that your social media persona matches your professional persona or you can run into trouble. Remember this information never goes away…
Here are a few individuals who have lost their jobs because of the information they’ve posted on the sites they love. Learn from their mistakes. A Michigan nurse and a Washington barista both lost their jobs because of over-sharing on social media. The nurse was fired for FMLA fraud after the hospital where she worked saw Facebook pictures of the Mexican vacation she took while still on leave. The barista was fired for using his blog as a forum to insult his customers and boss.
Recently, a tenured New Jersey schoolteacher named Jennifer O’Brien was fired after she vocalized the following opinions about her students on her private Facebook page (from opinion PDF):
I’m not a teacher – I’m a warden for future criminals!
They had a scared straight program in school – why couldn’t [I] bring [first] graders.
Understandably, students’ parents and the principal found her comments offensive, and instantly challenged her continued role as an educator.
In response to being charged with “conduct unbecoming a teacher,” O’Brien argued that her expression should be protected by the First Amendment’s right to free speech. However, free speech only goes so far in the work environment, as defined by the Pickering Test. Another one bites the dust…
Free speech only goes so far when it comes to your job, especially if you are a public employee.
Review everything before you post. This information is out there forever so make sure it aligns with your current interests and your future interests. This is especially for true for the generation growing up only knowing the access that comes with phenomena like social media. Many of these individuals lack the desire for privacy and the awareness of the consequences of over sharing that is important in a professional context.
Some opinions should be kept to yourself or at least not posted on the internet. Although you are entitled to your opinion, there are consequences for our actions. Make sure that the opinions you state are either uncontroversial or worth taking a stand for.
Check the privacy settings on your social medium. Know what your settings are and who you allow to see your posts. Making accounts widely available is not bad, just act accordingly. Although, “private” accounts are not an excuse to make reckless, defamatory, or inappropriate comments. Your profile or account should always reflect the persona you carry with you every day especially your professional persona.
Always ask yourself “What if my [boss, potential boss, parents, grandparents, children, etc] were to see this post?” If you would be embarrassed, in trouble, or in any way uncomfortable then maybe you should reconsider posting that item.
Its hard when the things we love turn around and “betray” us. The nice thing about social media is we are in control of our message and as long as we post consciously and in consideration of the big picture social media can remain a safe and fun space to engage with family, friends, and whoever else you decide. Remember there is a thin line between love and hate… Don’t let your actions turn social media from a friend to an enemy.