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!!
Yesterday, a website that looked exactly like Bloomberg posted “news” that there was a $31 billion buyout offer for Twitter. Ummm not true! The website, called http://www.bloomberg.market, featuring a new gTLD, was fake. And so was the report. The fake website was a near-identical replica of Bloomberg’s site, and even used Bloomberg reporter Stephen Morris’s byline. OpenOutcrier, a Twitter account that bills itself as a destination for “Real-time stock & option trading headlines, breaking news, rumors and strategy” was the first to post about the report, although Bloomberg employees were quick to point out it was fake.
Most discussions about new gTLDs causing problems for brand owners is preventative such as with the .SUCKS and .PORN domains. This incident is a good example of a new gTLD causing the damage brand owners are trying to prevent in those other cases. As a brand owner you should make sure to not only use these new gTLDs as a tool for branding but remain aware of the release of new gTLDs to proactively register relevant domains and/or monitor for infringement like this. There are a number of free monitoring tools like Google Alerts or Talkwalker that you can use to monitor use of your brand name. And you can see which new gTLDs have launched and when so you can remain up to date on gTLDs that you should register from a branding perspective and/or from a brand protection perspective.
As a result of this false story, Twitter shares shot up, only to fall back down when Twitter corrected . It’s not clear who was behind the faux story. With all that’s going on with Twitter, including the CEO being replaced by co-founder Jack Dorsey earlier this month, this incident was believable. This could have caused more damage to company finances, reputation, and consumer trust. Don’t let your brand be next! Fraudsters are very savvy as you can see.
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.
Trademarks are wonderful means for protecting your brand. You want your trademark to be pervasive and resonate in the minds of consumers. You want it to be apart of their everyday life! However, when a trademark becomes so common that it is used at the term for the item or service rather that the brand you run the risk of loosing your trademark because it is generic. Under the Trademark Act generic terms cannot be trademarks. A generic term is a word that the relevant purchasing public understands primarily as the common name for a particular product or service.
What is kleenex? If you said tissue, you’re incorrect it is actually a brand of tissue that has become so common it is often used as a generic term. Kleenex is lucky because the company fought and won to keep its trademark alive. However, there are a whole host of others that were not as lucky. For example, escalator, originally a trademark of the Otis Elevator Company, or aspirin which is still a Bayer trademark name for acetylsalicylic acid in about 80 countries, including Canada and many countries in Europe, but declared generic in the U.S.
Recently the word “skew-ball” also came under scrutiny. Full Circle United, LLC (Full Circle) claims the word “skee-ball” is the common name for the game of skee-ball, which has been an American boardwalk and arcade pastime for over a century. Full Circle, which organizes skee-ball competitions across the country, was sued by SBI, Inc., a manufacturer of skee-ball machines, and owner of the federal trademark registration of “skee-ball,” for infringement of the term “skee-ball.” Full Circle countered by filing its own complaint alleging that SBI has no rights in the word “skee-ball” because, just like many other marks that have come and gone, such as yo-yo, trampoline, and pilates, skee-ball is generic. This case is still being decided.
This phenomenon is hard to control because you want your brand to be popular but some ways to prevent genericizing a brand are:
A sign in a supermarket using “Jell-O” generically – Image from Wikipedia
Use the proper name for the good or service in conjunction with the trademark or brand name. For example, you’ll notice that Kleenex’s brand now reads “Kleenex brand Tissue”
Let the world know you have a registered trademark by using the appropriate symbols. Use the letter R enclosed within a circle, ® for federally registered marks and for an unregistered mark, use TM.
DO NOT use your trademark as a noun. For example: Put on a BAND-AID – NO! Put on a BAND-AID brand bandage – YES!
DO NOT use trademark as a verb or plural. Go XEROX the document – NO! Make a copy with the XEROX copier – YES! I need two Kleenexes – NO! I need two Kleenex tissues. – YES!
Police your trademark. Correct others misuse of your trademark
Educate the public especially authorized users, distributors, and anyone else consumers will believe have authority or knowledge about the brand.
Be proactive about preventing your brand from becoming a generic term. Although this phenomenon is a symptom of your success you want to avoid loosing your trademark
As a trademark owner you have an obligation to “police” your trademark. What does that mean? You are responsible for finding and addressing infringement of your trademark rights. (Copyright holders have a similar obligation.) A major part of policing or enforcing those rights is monitoring and addressing violations on social media.
Platform Content Removal Policies
Each social media platform has their own policies for removal of content whether trademarks or copyrighted work. It is important to determine the appropriate method and provide all the necessary information to secure timely removal. Social media content changes very quickly so to be effective at protecting brand perception you must be swift and efficient about requesting content removal.
Not only is knowing the policy requirements important you need to determine when a post/content warrants removal. This is a strategic decision your company should make while engaging all necessary stakeholders including but not limited to management, legal and marketing/PR. Below are a few things to consider when determining when to take down a post:
As an organization develop a policy for what types of brand use or content use are important to the company. Use that as a guide to addressing infringement.
Embrace positive uses of your mark. There are positive uses that can promote your brand. Coca Cola illustrates a great example of embracing what could have been trademark infringement when two fans created a Facebook page for them. Coca cola just dedicated a few members of their team to monitor the content.
Know the social media platform rules and policies on content removal. See the infographic for some help but visit the policies on the platform.
Figure out who is likely to comply with your request for content removal. It is usually easier to make a request through the platform. It can be hard to determine who posted content and their contact information. Additionally, it is unlikely that they will cooperate. Remember that the social media content provider is not likely liable for anything unless you can prove a partnership or joint ownership and control over the account.
Reviews & other commentary about your brand, positive or negative, are allowed. Most social media sites will not take down content of this nature and this can cause backlash that will outweigh the potential benefit. This is a great opportunity to engage consumers and either address concerns or reinforce positive perceptions.
Consider the public relations implications of requesting removal. Will attempting to remove the content cause backlash that will be more detrimental? There have been a number of instances of brands garnering greater negative media attention for trying to take something down justified or not. If infringer’s presence is significant enough to cause concern consider joining the conversation.
Include all the requested information. Incomplete requests for content removal may cause unnecessary delays.
Include trademark registration numbers for all jurisdictions. Some social media platforms will only block content in the applicable jurisdiction or country if you only provide proof of one registration. Provide all registrations so the social media platform is aware of the extent of your protection.
List exactly where infringements are located on the site. Platforms are not required to search for infringements.
Submit evidence of current use. This information only serves to strengthen your claim and is as easy as providing the url to your website.
Remember your objective when policing your mark is to make sure consumers will not be confused. Your trademark is your calling card, do not let anyone use it in a way that dilutes your reputation or capitalizes on the goodwill or value created in that trademark. If you do not have in-house legal counsel consult with an attorney to develop a comprehensive plan to address trademark infringement.
The launch of new gTLDs (generic top-level domains) provide an amazing opportunity for entrepreneurs and small to medium businesses to further brand their business in their domain name. A gTLD is the part of you domain after the “.”. Having fun with you website domain can help you stand out as you market yourself and establish your brand. Emphasize your company’s mission, expertise, experience, niche, etc through the top-level domain you use. Also if your company name or other domain you sought to register is taken on .com there are new and exciting options! Don’t miss out on companyname.rocks or company name.consulting.
You can register these new top-level domains just like you register a “.com” domain head to goDaddy, Namecheap, Name.com or your favorite registrar. This is something your should consider early in establishing your company. You don’t want to lose out on the perfect domain name.
This is an opportunity to accent your personal brand as well. As you establish your expertise and want to develop a website that showcases your skills you no longer are limited to firstnamelastname.com you can register firstnamelastname.esq, firstnamelastname.photography, or firstnamelastname.guru. Grab your new domains as soon as they roll out!
Over 175 new domains have been released or delegated to date, with hundreds more on the horizon. You can view the available domains by visiting this page: http://newgtlds.icann.org/en/program-status/delegated-strings . This page lists the delegated domains, which means they are available for registration. This site will be updated as others are available.
Take advantage of this branding opportunity before others catch on!!
Examples of some new gTLDs that can make for a creative domain name:
The other day I was making a purchase online and listed along with the other payment options– pay pal and credit card– was bitcoin…. What’s a bitcoin? Can you actually use this to make purchases? Is this form of payment secure? How do I get bitcoins?
What is a Bitcoin?
A bitcoin is a form of virtual currency that only operates in cyberspace.
A virtual currency can be defined as a type of unregulated, digital money, which is issued and usually controlled by its developers, and used and accepted among the members of a specific virtual community. In 2009, the “Bitcoin” network was launched, introducing a worldwide virtual currency.
Bitcoin is typically stored on a user’s personal computer or in cloud based accounts called “wallets.”
Bitcoin wallets do not meet the UCC’s definition of a deposit account as they are not maintained with a bank.
Bitcoin wallets are not insured by the FDIC.
Bitcoin has a high likelihood for extreme value fluctuations.
Bitcoin is gaining popularity.
On March 11, 2014, FINRA issued an Investor Alert to caution investors of the “significant risks” of buying and speculating in bitcoin and other digital currencies, as well as the risk of fraud and cybercrime related to online bitcoin exchanges and other bitcoin-related service providers.Specifically, the alert outlines several risks surrounding the usage of and speculating in bitcoin, including:
Bitcoin and other digital currencies are not legal tender and if the trust built up among individual users and businesses should vanish, bitcoin would be valueless.
Online exchanges that allow users to buy and sell bitcoin and digital wallet services that allow users to store bitcoin are magnets for cyberthieves.
Because bitcoin transactions are essentially anonymous, users must take extra care to avoid fraudsters posing as legitimate services.
Bitcoin has been used for illicit transactions and such activities could impact users and speculators if an online exchange or service is shut down by law enforcement.
Price volatility has been bitcoin’s hallmark in recent years, and there is no uniform value of bitcoin across the various exchanges.
Is bitcoin the future?
Given the variable nature of bitcoin, it’s hard to foresee the future. Many questions remain: How will state or federal legislators regulate the bitcoin system? Will volatility and data security destroy confidence in bitcoin? Will bitcoin emerge as a standard payment option, remain a niche product, or otherwise become less interesting, but more predictable under new regulations? Will the average consumers embrace this new currency?
Should Small Business Owners Use Bitcoin?
I would caution against it if your company will not survive the associated risks and building the necessary infrastructure. Accepting bit coin will necessitate updates to refund and exchange policies, calculation of sales tax, when to lock in the rate, etc. Additionally, users will need to monitor developing regulations and consumer perception of bitcoin. This volatility can be hard on sellers especially small sellers that rely on every dollar to survive and thrive.
The retailers and other businesses that have announced that they are accepting bitcoin as payment are not established “brand” names that perhaps have a higher risk tolerance. One exception may be Overstock.com. The major brands may soon follow. We have seen Vegas casinos, and Congressman accepting bitcoin. But it seems the major brands are waiting to see how legislation develops,how consumer opinion develops, if the value will stabilize, etc before dabbling in a currency that offers little to no stability. The companies using bitcoin are predominately brands that have the benefit of anonymity, are seeking publicity or have a consumer base that is actively using bitcoin and will understand the volatility. Unless you run a tech business that caters to the bitcoin-savy, use caution when exploring new payment options. Your budding company may not bounce back from a dive in the value or new regulations that may emerge. Build a strong brand and strong consumer base then consider taking risks. Bitcoin may not be going away anytime soon but asses legal/regulatory, commercial/financial, and reputational risks before deciding whether to make bitcoin a part of your business.
What is a gTLD? gTLD stands for generic top-level domain and is an Internet extension such as “.COM,” “.NET” or “.ORG.” Right now there are a little over two dozen gTLDs, but soon, there could be hundreds. The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for the coordination of the global Internet’s systems of unique identifiers and, in particular, ensuring its stable and secure operation. According to ICANN the new gTLD program was developed to increase competition and choice in the domain name space. As the new gTLDs launch and threaten to change the Internet as we know it there are a lot of things you should know but here are five to start. For additional background information about new gTLDs, please visit some of my previous posts “What do you know about the new top level domains?” & “Will You Be Confused When The New Generic Top Level Domains (gTLDs) Launch?”
1. Be careful of services “guaranteeing” to get a domain name for you
“As responsible Registrars are advising, successful pre-registration of a domain cannot be guaranteed. ICANN seconds that advice, cautioning that registrants should be wary of anyone who claims to be able to guarantee a domain registration on a new gTLD. There are several situations that can impact the availability of a domain name and some domain names may never be available for purchase.”
Namazi points out that competition between registrars for a single domain, domains claimed in sunrise, reserved domains, premium domains, and name collision domains make it impossible to guarantee. He also notes that some TLDs may not even end up being delegated.
2. The first non-Latin character new gTLDs were delegated
What does delegated mean? This means that the gTLDs or strings have successfully completed the new gTLD Program and has officially been selected as a new gTLD that will go live for use. This will be the first time non-Latin characters can be used in a TLD and not just in the second level domain. Click here for more information from ICANN.
One is شبكة, the Arabic word for “web” or “network”, while another is 游戏, which means “game” in Chinese.The other two – онлайн and сайт – are both Russian words, meaning “online” and “website” respectively
3. First nine LATIN new gTLDs were delegated
The first nine new gTLDs delegated last week were:
The “sunrise period” for registration of the first seven gTLDs is “.BIKE,” “.CLOTHING,” “.GURU,” “.HOLDINGS,” “.PLUMBING,” “.SINGLES,” “.VENTURES.” will begin November 26 and general availability to anyone will begin January 29, 2014. Keep any eye out for new gTLDs as they are delegated. Consider whether you or your company wants to purchase a domain. And monitor the official launch of these new gTLDs starting in January. Monitor how your brand and ineffectual property are being used on this new gTLDs. To keep up with delegated strings click here.
4. The launch of new gTLDs multiplies the size of the Internet and presents increased security and intellectual property infringement risks.
Pay attention to the gTLD in the address bar. New gTLDs give malicious actors more platforms to attack the unsuspecting. Pay attention to the address you are trying to get to and make sure all parts of the address are correct. Also if you search for a website make sure the site that comes up is the legitimate website.
Companies must monitor the use of their intellectual property on new gTLDs. Companies should currently have a plan in place to protect their IP investments through motoring, preemptive registrations, the Trademark Clearinghouse and other rights protection mechanisms provided by ICANN. Be proactive!
5. Launch of new gTLDs presents a number of opportunities to market your brand or yourself. This will present business and consumers with a new and unique user experience and online footprint. There will be a lot more room for customization online and opportunities for marketers to be creative with how to reach consumers. I am excited to see the innovative means of reaching the public that are birthed from the new gTLD launch.Please ask any questions you have about new gTLDs, protecting yourself, rights mechanisms, IP protection, security concerns etc. Start the discussion!
Get your mark trademarked!! A lot of start-up companies wait to trademark their brand name and/ or logo for monetary reasons or out of sheer ignorance. When trouble arises they hope that state common law protections will be sufficient to protect the time, money and energy invested into creating a recognizable brand. This is true to an extent but the protections are not as clear-cut nor as strong for trademarks not federally registered.
What happens if someone else tries to use your mark or something very similar to it? Well, if they get a federal trademark before you, you might be in some trouble.
Section 43(c)(6) of the Lanham Act, 15 U.S.C. 1125(c)(6) included a complete bar for state dilution claims brought against federally registered marks. Which means that if someone federally registered your mark before you and you tried to do something about it based on a dilution claim (they are weakening the strength of your mark) you would have very hard time bringing a claim not to mention proving prior ownership if you get to a proceeding.
President Obama on October 5, 2012, signed legislation (H.R. 6215) that restores the limitation of the federal registration defense to trademark dilution claims based on state law only. This will make it easier to bring a dilution claim against someone attempting to steal your mark or gain an advantage by confusing consumers using your mark. The House Report (H. Rept. 112-647) for H.R. 6215 points out that Congress could not have intended that federal registration could serve to bar all dilution claims since that result would make it difficult to cancel a diluting mark that is registered. That would only encourage illegitimate mark holders to register diluting marks, and would force legitimate mark holders to expend greater resources monitoring registrations as well as other marks being used in commerce, the Report noted.
H.R. 6215 restores the intent of the House-passed version of 15 U.S.C. 1125(c)(6) as follows:
(c)(6) The ownership by a person of a valid registration … shall be a complete bar to an action against that person, with respect to that mark, that —
(A) is brought by another person under the common law or a statute of a State; and
(B) (i) seeks to prevent dilution by blurring or dilution by tarnishment; or
(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or
reputation of a mark, label, or form of advertisement.’.
The need for this legislation was recently confirmed by a ruling of the Trademark Trial and Appeal Board in the cancellation action in Academy of Motion Picture Arts and Sciences v. Alliance of Professionals and Consultants, Inc., TTAB, Canc. No. 95055081, 9/24/2012. The TTAB dismissed the action, finding that the language of the 2006 amendment barred a federal dilution claim against a federally registered mark.
Although this new law will help trademark owners without a federal registration protect their marks from infringers/illegitimate mark holders it does not mean that a legitimate trademark holder will be able to defend their mark. This only allows for a greater opportunity to appear in court. Then a legitimate mark holder must start the uphill battle to prove that they are the initial and legitimate mark holder. Trademark protections work better for entities or individuals who have proactively registered their mark(s) with the USPTO. I encourage every business owner, budding business owner, idealist, or individual with a cool mark to register your trademark. Protect your investment. Additionally, seek the help of a trademark attorney. These applications seem easy but unless your mark is completely nonsensical and a new word you are likely to experience trouble registering the mark.