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 email@example.com. 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.
Cuba is now an open market for US businesses. President Obama announced in December 2014 that US is taking steps towards increased travel and improved relations with Cuba. This will mean a new frontier for many businesses as commerce restrictions are lifted.
One exception to the long-standing US embargo on trade with Cuba permits US companies to file for and obtain trademark registrations in Cuba. Many companies did not consider obtaining a Cuban trademark a high priority but it is now something to consider. Cuba is a “first to file” jurisdiction – in other words, a Cuban registration for a trademark will be awarded to the first applicant, even if that applicant has no legitimate claim to the mark. An applicant does not have to use the mark in Cuba, or even plan to expand its business into that country, before filing an application for trademark registration. Proactively seeking a Cuban trademark registration now will help ensure that the mark is available when the embargo with Cuba is lifted.
There are two ways to apply for a Cuban trademark registration: (1) if a US company owns a current US trademark registration, a Cuban application can be based on the US registration and filed through the international Madrid Protocol treaty; or (2) a national Cuban trademark application can be filed through local trademark agents with the Oficina Cubana de la Propiedad Industrial (OCPI), the Cuban equivalent of the US Patent and Trademark Office. Seek advice of counsel as you expand your trademark portfolio.
Being proactive about foreign registrations is an important part of a strong intellectual property portfolio.
U.S. trademark owners should conduct trademark searches both domestic and international markets that are of potential significance, even if the foreign search is merely a “knock-out” search for identical marks; and
U.S. trademark owners should develop and implement strategies for global trademark protection sooner, rather than later.
International searching and registration are costly and often forgotten when small businesses develop and intellectual property strategy. Being proactive and paying for this search early can prevent the cost to either defend an infringement suit or change branding in an entire geographic region. With some forethought it is possible to spread the costs of searching and registration over several months or years. Do not underestimate the growth potential of your brand.
Two recent cases illustrate the importance of this kind of forethought:
Crowdfunding has become a major financing tool for small businesses from tech start ups to small services companies. This source of funding, made available by The 2012 Jumpstart Our Business Startup Act (JOBS Act) which enables small businesses to raise funds from non-accredited investors. An accredited investor must meet a personal net worth or income test that excludes the majority of the population. There are still rules about how much each person can invest for equity crowdfunding but Title III truly opens up the ability for the average American to invest.
If you are considering a crowdfunding platform for your new venture, or if you are contemplating investing in a crowd-funded project, attention to intellectual property protection is critical. Often, companies considering crowdfunding are in the early stages of development and owners may not have the appropriate intellectual property (IP) protections in place yet. Here are a few things to consider about each of the major types of intellectual property:
Securing federal and/or international trademark protection is an important early step to establishing a company and launching a brand. This, however, can be hard to do or forgotten prior to using the mark in commerce, the standard set by the USPTO. Therefore, posting a project with a proposed trademarkcould serves as an open invitation for trademark infringers in the U.S. and abroad to file for registration first. The same is true with respect to domain name registrations. Additionally, without the proper research you could inadvertently launch a brand with a trademark already in use. This is not only bad PR but could open you up to suit before you’ve even begun.Action Items: Do a thorough search on potential marks and make sure it does not conflict with state, federal or international trademarks. Consider filing an Intent to Use trademark application if you are not at the place to file a trademark application based on use. Consult an attorney to make an informed decision based on a thorough search and knowledge of requirements for proving use such that you can file a trademark based on use.
Although filing is not required to benefit from copyright protection, it is a prerequisite for a U.S. copyright owner who wishes to file suit for infringement in the U.S. If you are going to post copyrighted works in connection with your project disclosure or business plan, and if those works integral to the success of the project or business make sure you protect them. Additionally, make sure if you use the copyrighted work of others in your proposal you have the proper permissions to avoid copyright infringement.
Action Items: Review your copyrighted work and consider filing for copyright registration if any of the work you will loose is integral to the business. If you plan to use images, music, or other content from third-party sources in your proposal, be sure to obtain appropriate licensing/permission prior to posting such works publicly.
Disclosing the details of an invention before filing a patent application may bar patent protection due to required disclosures or missing the first to file window. Some crowdfunding sites require projects that involve the manufacture and distribution of “gadgets” to “show as much as they can about how they’re going to make their project, including things like a production plan, an estimated schedule, and any details you can provide for backers.”
Action Items: Preserve your rights, patent applications should be filed as early as possible as required by the America Invents Act, under “first to file”. By filing a patent application prior to disclosing a project, the inventor can preserve patent rights and potentially avoid problems with both the statutory bar and potentially conflicting applications. While U.S. patent law gives the inventor a year after disclosure in which to file, the same is not true in most of the rest of the world where a prefiling disclosure bars patent protection. Keep this in mind for projects that will rely on foreign marketing and revenue for their success.
Think about your IP on a local and global scale. Develop a state, federal and international IP development plan. As your brand grows, depending on industry and target market you want to make sure your protections are as robust as possible.
Consult an attorney early and often to help you develop your IP strategy and think through the hurdles associated with crowdfunding.
Investigate services like U.K.-based Creative Barcode. that are designed to provide a provide protection for early stage intellectual property. This is NOT an endorsement of these services but this is an option to consider.
Your intellectual property is one of your biggest assets and the last thing you want to do is damage your IP rights while trying to secure funding through crowdfunding. This is just a high level view of the general issues associated with crowdfunding. Depending on the project, the IP issues could be substantially more complex.
Additionally, potential investors should be worried about these intellectual property issues as well. Potential Investors must conduct a due diligence assessment of any venture they seek to invest in as the success or failure of the idea may hinge, at least in part, on the strength and protection of those IP rights.
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 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: