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.

Advertising Services Is Not Use In Commerce

Your website for your new service has gone live! You are building momentum for you launch in a few weeks by advertising your services. You know you need to protect your intellectual property so you seek federal registration of your new trademark. Is that new website or other adverting materials sufficient to show “use in commerce” as required to secure a federal registration for use?

Seems like it could, right? Unfortunately, the answer is NO.

In Couture v. Playdom, Inc., the Federal Circuit held that the use of a mark on a website to offer services is not use in commerce sufficient to support an actual-use service mark application. As a result, the Court affirmed the Trademark Trial and Appeals Board’s (“TTAB”) cancellation of the mark.  The PTO granted the petition because, at the time of Playdom’s service mark registration, it had not rendered any services under the mark, but merely advertised those services on a website.

This case is a great example of the unnecessary risk in prematurely applying for an actual use mark, rather than an intent-to-use mark.

To apply for registration under Lanham Act § 1(a), a mark must be “used in commerce,” which requires – as to services – that, as of the filing date, the mark (1) is used or displayed in the sale or advertising of services and (2) the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. 15 U.S.C. § 1127; Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009).

The Federal Circuit, in this case, explained the fundamental proposition that “[w]ithout question, advertising or publicizing a service that the applicant intends to perform in the future will not support registration;” the advertising must instead “relate to an existing service which has already been offered to the public.” Id. at 1358 (internal quotation marks and citations omitted) (emphasis added).

So what does all of that mean? Advertising for a service you have not yet begun to offer to the public is not enough. To successfully register a service mark, services associated with the mark must have been provided prior to registration. Do not use advertising for a service set to launch in 3 weeks or a month. The mark is not in use in commerce as necessary to secure federal trademark registration. It may not be obvious when filing but if there is ever a challenge you could lose your protections as Couture did.

Any doubt about actual use should lead to the filing of an intent-to-use application; it’s not worth the risk of losing your mark. An intent-to-use application would have given Couture the benefit of the earlier filing date when the mark was actually used in commerce and issued as an actual use mark. See 15 U.S.C. § 1057(c).

Copyright Owners Beware!! Are You Accurately Protecting Your Copyrights??

Personal Keepsakes, Inc. v. PersonalizationMall, No. 11 C 5177, Slip Op. (N.D. Ill. May 24, 2012) (Kendall, J.) is a great cautionary tale for small businesses and other copyright owners. Make sure you sufficiently protect your investment. Make sure your copyright notices are clear and that you are smart about what names you use when copyrighting your works. The details matter.

In this case, Judge Kendall denied plaintiff Personal Keepsakes’ (“PKI”) motion to reconsider in this copyright and Digital Millenium Copyright Act (“DMCA”) case.  The Court previously held that, a copyright notice on a separate page of a website from the allegedly copied work does not constitute the copyright management information (“CMI”) required by the DMCA.  Which means

The DMCA seeks to hamper copyright infringement in the digital age by protecting “copyright management information” (CMI) in various ways.17 U.S.C. § 1202. Specifically, the DMCA forbids distributing false CMI, removing or altering CMI, or distributing works knowing the CMI has been removed or altered. See id. CMI, is defined as the information about the copyright that is “conveyed in connection with copies” of the work, including the title of the work, the author of the work, the name of the copyright owner, and identifying numbers or symbols referring to copyright information. See17 U.S.C. § 1202(c).

PKI’s DMCA claim boils down two allegations: (1) that Defendants removed the CMI conveyed with the poems when it copied the poems, and (2) Defendants provided false CMI on the pages selling the infringing products and in their general website terms and conditions, which make various statements about copyrights on the website.

However all relevant CMI was not on the page where the poems and other works at issue were. The company name used to register the marks was PKI, however, the site only displays poetrygift.com. “Similarly, the titles cannot be CMI because the copyright registrations do not list the titles of the works as they appear on PKI’s website, but rather refers to them as ‘Personal Keepsakes VI’ and ‘Personal Keepsakes X.”‘ Pers. Keepsakes, Inc. v. Personalizationmall.com, Inc., 11 C 5177, 2012 WL 414803 (N.D. Ill. Feb. 8, 2012).  A general “Web Site and Original Verses—© (1991–2012)” on each page of PKI’s websitedid not make it clear that the poems were the “original verses” mentioned.

PKI also pointed to their terms of service which stated, “Our Site and all its content, including but not limited to its text, photographs including those of product, graphics, logos button icons, images, audio clips, and software, is owned by or licensed to ‘Abernook, LLC and may be protected by United States and international patent, trademark, and copyright laws and other intellectual property laws.” They claimed this general notice covered the entire site.

Put simply, these website terms are not close to the poem; rather, per PKI’s allegations, they appear on another page on the website. Some courts have held, persuasively, that a defendant must remove the CMI from the “body” or the “area around” the work to violate DMCA. See Schiffer Publishing, Ltd. v. Chronicle Books, LLC, No. 03 C 4962, 2004 WL 2583817, at *4, 14 (E.D.Pa. Nov.12, 2004) (finding no DMCA violation where a book contained 118 copyrighted photos with no CMI near them and the defendant had a general copyright notice on the whole book). That rule is consistent with the text of the statute, which requires the CMI to be “conveyed” with the copyrighted work. See 17U.S.C. § 1202(c).

This case teaches important lessons to copyright owners.

  1. Be consistent. The name used when you register copyrighted material should be the name used when distributing or using copyrights material.under. The same is true for all CMI.
  2. Be clear. Make sure your website makes clear the owner of copyrighted work and that your CMI is clearly linked to each work.
  3. CMI is extremely important. Items considered CMI should be carefully chosen and used are registered to protect works.
  4. CMI should be on the same page as each work. As a matter of law, if a general copyright notice appears on an entirely different webpage than the work at issue, then that CMI is not “conveyed” with the work and no claim will lie under the DMCA.  One copyright notice on an entire website is not sufficient!!

Do not lose rights to your copyrighted works because of small preventable errors. Consult a copyright attorney if you are unsure if your works are accurately and sufficiently protected. Remember the details matter, be strategic!

Business Owners Trademark Your Brand!: New Law Helps Unregistered Tradmark Owners in the Fight to Protect Their Brand

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.

Signed Legislation

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.