Should You Trademark Your Website?

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.RegisteredTM

  1. 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.
  2. 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.

Security Risks & the Healthcare Roll Out

Anticipation of the healthcare roll-out tomorrow, October 1, 2013, has sparked heated debate and concern over costs, employer rescission of benefits, and questions about the Health Insurance Marketplace. One question, raised by the FTC and other stakeholders, remains to be fully addressed: What security measures will be put in place to protect Marketplace consumers from identity theft?

The new Health Insurance Marketplace allows you to fill out an application and see all the health plans available in your area. While all insurance plans are offered by private companies, the Marketplace is run by either your state or the federal government. As designed, consumers create an account online or over the phone with a “navigator.”  Under the Affordable Care Act (ACA), the government is training additional customer service professionals to help consumers “navigate” the Health Insurance Marketplace. To create an account, participants must provide their personal data such as household size, income, passport, address, and potentially a social security number for every member of the household that needs coverage. 

What measures are being taken to dispose of information gathered by customer service professionals? What safeguards are in place to prevent identity theft? Scammers are already calling consumers and pretending to be navigators to gather their personal information.  How will consumers know the difference?

​How to protect yourself in the interim:

  • Do not give personal information to cold calls or emails from navigators or others representing themselves as part of the Marketplace.
  • ​If you call-in or seek help in person, ask navigators what the internal policy is on handling your personal information. 
  • Share the least amount of information necessary when shopping for health plans.

For more information about the healthcare roll out visit healthcare.gov

Update October 1, 2013: The government has released the following on avoiding consumer fraud http://oig.hhs.gov/fraud/consumer-alerts/alerts/marketplace.asp