Accepting Guest Blog Posts

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 thedigitalcounselor@gmail.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!!

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.

Quick Tip: Trademark Protection In Cuba

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.

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).

I have a Trademark, Now What?

Congratulations you’ve successfully secured a federally registered trademark for your business, blog, or creation!!!  

Go ahead and celebrate but remember this is not the end of your obligation. In addition to policing or searching for unauthorized use of the brand, you must maintain your trademark rights with the United States Patent & Trademark Office (USPTO). 

Trademarks require regular maintenance to continue to enjoy the use and protection of the mark. As the owner, you must complete and submit certain filings and fees with the USPTO at specified intervals.  Failing to submit these filings and fees will result in cancellation of the trademark by the USPTO. Additionally, there is an extra filing option that can further strengthen your protection. Knowledge of these intervals and timely adherence to the deadlines are a major part of maintaining a strong mark.

Required Maintenance Filings

All trademark maintenance filing deadlines are measured from the date that the mark was officially registered with the USPTO. There are two required filings, the Affidavit of Use and the Renewal Application.

Affidavit of Use – The USPTO requires the owners of registered trademarks to file an Affidavit of Use between five and six years after registration to prove continuous use of the mark in commerce.  After this initial filing, a trademark owner must submit an additional Affidavit of Use before the end of every ten year period.

Renewal Application – Additionally, at the end of every ten year period, a trademark owner must file a Renewal Application.

**Warning: If the Affidavit of Use and Renewal Applications are not filed in a timely manner, the registration will be cancelled.  Registrations that are cancelled because of a failure to file an Affidavit of Use and/or a Renewal Application cannot be revived or reinstated.

Timing: As you can see, the initial maintenance filings must be completed between the fifth and sixth years of registration and subsequent filings are completed once every ten years.

** Warning: All maintenance filings have a six month grace period where the filings may still be completed, but at a higher price.

Cost:  Renewal Applications are $400 per class. The additional fee for filing during the grace period is $100. Filing Affidavits are priced between $100 – $200. The additional fee for filing during the grace period is $100.These prices are subject to change so consult the USPTO.gov website for current pricing.

How to file:

  1. Visit the USPTO site and navigate to “Registration Maintenance/Renewal/Correction Forms”.
  2. Navigate to Declaration of Use and/or Excusable Nonuse of a Mark under Section 8 or Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9 if you are filing both at the same concurrently.
  3. You must supply your registration number, then answer questions as to who is filing the declaration
  4. You must provide information as to the entity that owns the mark
  5. You must upload a specimen showing the mark as used in commerce
  6. You must execute the declaration as to whether the marks have been in continuous use on the same goods or services as originally declared when the applications was file. If not, you must supply the appropriate information.
  7. You must provide electronic signature
  8. You must pay for filing

Recommended Additional Filing

Declaration of Incontestability – This filing while not mandatory is extremely beneficial in defending and protecting your trademark rights.  A Declaration of Incontestability will make your mark’s registration conclusive evidence that the mark is valid, that you own the mark and that you as the owner have the exclusive right to use the registered mark with the goods or services on the registration in commerce.

Timing: A Declaration of Incontestability should be filed with the initial maintenance filings between the fifth and sixth years or as soon as you have five years of continuous use.

Cost: $300 per class. The additional fee for filing during the grace period is $100.

How to file:

  1. Visit the USPTO site and navigate to “Registration Maintenance/Renewal/Correction Forms”.
  2. Choose 2. Declaration of Incontestability of a Mark Under Section 15 (unless you plan on filing a combination declaration including Section 8).
  3. You must supply your registration number, then answer questions as to who is filing the declaration
  4. You must provide information as to the entity that owns the mark
  5. You must execute the declaration affirming incontestability (see above).
  6. You must provide electronic signature
  7. You must pay for filing.

Protect your investment and make sure you keep up with your maintenance fees! Consult an attorney for help with the filings.

 

Will it be Hard to Register My Trademark?

Registered-Trade-mark-symbol
Photo from pinnacletms.com.au/difference-between-trademark-symbols/​

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. ​

O​nly 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.
TM registration-table
Photo from http://www.patent-usa.com/trademark/


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.
Get Help!
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.
Good luck!!

 

Trademark Holders Beware of the Generic Curse

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
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

New gTLDs as a Branding Tool for Entrepreneurs

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:

.guru
.consulting
.cooking
.ventures
.photography
.active 
.expert 
.coach
.lifestyle
.shopping
.bar 
.pub
.events
.buzz
.solutions
.careers
.company
.management
.enterprises
.technology
.holdings
.rocks
 
Visit my older posts for more information on this launch: What do you know about the new top level domains?Will You Be Confused When The New Generic Top Level Domains (gTLDs) Launch?​; &​ Five things you should know as the new gTLDs launch.  And as always ask questions in the comments and share your successes and observations re: new gTLDs!​