What Trademark Owners Need To Know About The New .co Domain Name Extensions

July 2, 2010 By Law Library Leave a Comment

With the .COM inventory nearly exhausted, .CO domains will be a perfectly positioned alternative domain extension. Recognized universally as the abbreviation for “company”, .CO is the ideal domain to extend a company’s brand’s reach and expand its web presence.

However, there is a downside to the upcoming release of the .CO domains, a potential for typo-squaters – those who register domain names that are one letter off of famous or registered trademarks – to divert Internet traffic away from the trademark holders.

Here’s what you need to know about the release and registration process should you wish to extend your domain name holdings and preclude a typo-squater from diverting traffic away from your Internet presence.

April 1st – Local Sunrise Period for Colombian Trademarks Opens

The Local Sunrise gives holders of Colombian trademarks first priority before the Global Sunrise Period opens to all other trademark holders. Only those that hold a Colombian trademark may apply for registrations during the Local Sunrise Period. All applications will be validated, and in the event there are multiple valid applications for the same string, an auction will be conducted to determine which applicant is awarded the domain.

To apply under the Local Sunrise Period Colombian Trademarks must be registered on or before July 30, 2008.

April 26th – Global Sunrise Period Opens

The Global Sunrise Period allows all trademark holders to submit applications for the .CO domain names corresponding with their trademarks before the registration of .CO domain names are open to the public. In the event there are multiple valid applications for the same string, an auction will be conducted to determine which applicant is awarded the domain.

To apply under the Global Sunrise Period Trademarks must be registered in any country on or before July 30, 2008.

June 21st – Back Ordering Period Opens

The Back Ordering Period allows anyone to back order the .CO domain they want before the .CO Registry opens to the general public. All matching applications will be resolved at auction.

July 20th – General Availability

General Availability will open to everyone on a first-come, first-serve basis.

Filed Under Trademarks Tagged With About, Domain, Extensions, Know, Name, Need, Owners, Trademark

How To Protect Your United States Trademark Internationally

June 26, 2010 By Law Library Leave a Comment

First, it is critical to understand that there is no one trademark system which you can use to protect your mark in every country around the world.  Although certain treaties have been enacted in recent years which ease the ability of trademark owners to extend protection of their marks into other countries, the world trademark systems have simply yet to evolve to the point where there is a one-stop-shop for global trademark protection.

In regard to the current cooperative treaties, the most significant for U.S. Trademark owners is the Madrid Protocol, which allows the extension of protection of U.S. applications and registrations  into roughly 75 other countries and economic unions including the Australia, China, Cuba, Korea, the European Union and its member nations , Japan, the Russian Federation, Singapore, as well as a host of other nations.

Second, do you have a pending U.S. Trademark Application or an existing Trademark Registration?  If the answer is yes you can use the same to Apply for an International Registration through the U.S. Patent and Trademark Office into any or all of the countries who have signed the Madrid Protocol treaty.

Of note, given the non-refundable nature of the filing fees it is often advisable to have a Trademark Attorney assist you in the process.  Additionally, if you mark is refused registration in the foreign country for any reason local counsel may need to be retained in that country to respond to the refusal.

Third, if you do not have a pending U.S. Trademark Application or an existing Trademark Registration you can still register your mark in the Madrid Protocol countries and beyond, you will merely need to have original applications filed for in each of the countries you seek protection.  Of note, due to the complexities involved many applicants choose to retain one coordinating general counsel to oversee the international filings especially where multiple filings in various countries are involved.

Fourth, whether or not you retain a pending U.S. Trademark Application or an existing Trademark Registration the same is moot should you attempt to seek international protection in non-Madrid Protocol countries.  For instance, most countries in Africa, South America, the Middle East are not members of the Madrid Protocol.  As such you will need to file directly in these countries via local counsel.  In this instance it is highly recommended that you consult a coordinating general counsel to oversee the international filings especially where multiple filings in various countries are involved.

Filed Under Trademarks Tagged With Internationally, Protect, States, Trademark, United

5 Things Businesses Should Know About The Enforcement Of Their Trademarks

June 14, 2010 By Law Library Leave a Comment

1.  Your Trademark Does Not Need to Be Registered to Be Enforced.

As you are probably aware, a trademark includes any word, name, symbol, or device used in commerce to identify the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.

What you may not be aware of is that you do not have to own a federally registered trademark to enforce your rights in a trademark (i.e., stop someone else from infringing or knocking off your mark with a similar or identical mark).

Trademarks can be federally registered and the federal registrations are well worth the time and effort to acquire.  But trademarks also exist at what is known as common law.  In short, if you are using a trademark to identify your goods or services, even if you have never registered the same, you have acquired rights in that mark back to the date that you first used the mark selling the goods or services.

2.  You Need to Have Used Your Trademark First.

Probably the most important issue in trademark enforcement is to figure out who used their respective trademark first.  The general rule is that whoever used their mark first has what is known as Priority of Use.  The person who used it second has Inferior Use.   Accordingly, the party with the Priority of Use can enforce their mark against the party with Inferior Use (e.g., make them stop using the infringing mark).  With every rule there are exceptions.  But this general rule is a good guiding point if you are thinking about enforcing your mark.

3.  The Trademarks Need to Be Similar.

When you look at your mark and the other mark do you feel that they are very similar?  The general rule is that if the marks are similar in appearance, spelling, phonetic pronunciation, or simply present a similar overall commercial impression enforcement may be had.  So unless the marks are identical, this is generally a subjective sliding scale.

4.  The Goods and/or Services Need to be Similar or Related.

Also, to enforce your mark against another the goods and/or services need to generally be similar enough that the average consumer encountering the respective trademarks would think that they originate from the same source.  To put it another way, few would argue that if we started seeing frozen hamburger patties in our grocery store with the brand “McDonalds” on them we would think those nice people from Illinois are now making frozen food as well.  Although they have never delved into the frozen food market, there is a strong enough association between the two that the assumption would be logical.

In the alternative, let’s say you are in your local car parts store and see head gaskets with the brand name GATORADE on them.  Few of us would think that the drink manufacturer has expanded into the machine parts arena. Why? It’s just not a typical expansion you see in the marketplace.  So like the subjective rule of reason we talked about with the similarity of the marks, this is also a subjective exercise.

5.  Is Enforcement a Good Business Decision?

This is one that attorneys don’t often speak about with their clients but we like to bring up – Does enforcement of the mark make good business sense? Yes you are angry someone is knocking off your mark.  Sure it is nearly identical to yours.  But does a single mom and pop store opening in California affect your bottom line in the New York / New Jersey area where you distribute your products?

We look at it like this.  At the end of the day when you are deciding to enforce your mark you need to make a BUSINESS DECISION as to whether enforcement makes sense.  If it is going to cost you a gazillion dollars to stop a mom-n-pop store in California that is not affecting your sales whatsoever is that a good business decision?  On the flip side, if you are an Internet retailer and your competitor is stealing from you every day by using a copy of your trademark you need to act immediately.

For every situation there is a different answer.  It is a factual analysis the business owner must make.

So the answer depends upon you and your business.  There are, of course, other considerations to include such as the dilution of your mark which occurs when you do not enforce the same or setting up a defense of acquiescence (i.e., if you let people use similar marks others can later claim this as a defense that they too should now be permitted to use a similar mark to yours).

But at the end of the day we like to remind those that we advise that this is business, nothing personal.  And if it does not make business sense to enforce your mark do not.  If it does, do.  But always keep an eye on the bottom line.

Filed Under Trademarks Tagged With About, Businesses, Enforcement, Know, Should, Their, Things, Trademarks

What Every Trademark Owner Needs To Know About The Relationship Between Trademarks And Domain Names

June 8, 2010 By Law Library Leave a Comment

We are often approached by trademark owners concerned that their competition has registered a domain name that is similar to their trademark and is using the same to divert customers away from their own businesses.  Here is what you need to know about the relationship between trademarks and domain names and what you can do to protect your trademarks from being used against you in competing domain names.

Registration of a Domain name is Not Trademark Use

As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce.  Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.

Many people believe that the registration of a domain name in and of itself creates trademark rights.  Simply put, it does not.  Look at a domain name like a phone number.  It is merely an address on the world wide web where a web site may be located.  So the address by itself is just that – an address.  It is not a trademark.

Of note, this is not to say that domain name cannot become a trademark.  Amazon.com has one of the web’s most recognized trademarks.  But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.

Cybersquatting

Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.

There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).

Both systems generally have the same requirements.  A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:

1.  The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;

2.  The registrant does not have any rights or legitimate interests in the domain name; and

3.  The registrant registered the domain name and is using it in “bad faith.”

In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:

a.  the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;

b.  the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;

c.  the registrant’s providing misleading false contact information when applying for registration of the domain name; and

d.  the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.

The UDRP and Its Remedies

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.

In short, if you register a domain name with one of these TLDs, you are subject to the policy.

Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name.  These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.

Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership.  There are no money damages.

One significant benefit to the system – speed.  From start-to-finish cases can often be completed in roughly 8 weeks.  In light of the current state of our court systems that is about as fast as you are going to get.

The ACPA and Its Remedies

The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S.  Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.

Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system.  Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.

However, the remedies under the ACPA are much broader than those under the UDRP.  Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.

Summary

So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you.  If you just want the domain name pursue the matter under the UDRP.  If you want more, a claim under the ACPA will be required.

Filed Under Trademarks Tagged With About, Between, Domain, Every, Know, Names, Needs, Owner, Relationship, Trademark, Trademarks

5 Things Every Business Owner Should Know About Trademarks

June 2, 2010 By Law Library Leave a Comment

We are often asked what is a trademark, do I have to register it before I use it, and other rather straightforward questions about mark usage in the U.S. and abroad.  In our experience here are five (5) simple facts every business owner should know about trademarks:

1.  What is a Trademark?

A trademark includes any word, name, symbol, or device used in commerce to identify the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.

2.  Can I Reserve a Trademark Before I Use It?

Yes. A trademark can be “reserved” with the U.S. Patent and Trademark Office by filing an Intent-to-Use Application for the trademark. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.

3.  Should a Trademark Search Be Performed to Make Sure my Trademark is Available Before I File an Application to Register the Trademark or Begin Use Thereof?

Yes, although a search is not required. Trademark Research allows you to verify that your proposed mark is not in use by another and is available for you to use.

4.  Do I Have To Register a Trademark to Use a Trademark?

No. However, federal registration has several key advantages which make it important to obtain a registration especially to Enforce a Trademark and preclude others from using your mark or similar marks thereto. A federal trademark registration provides:

* Constructive notice nationwide of your claim of ownership of a trademark;

* Evidence of ownership of the trademark;

* Jurisdiction of federal courts to Enforce a Trademark may be invoked;

* Registration can be used as a basis for obtaining Registration in Foreign

Countries;

* Registration may be filed with U.S. Customs Service to prevent importation of

infringing foreign goods.

5.  Is a U.S. Federal Registration Valid Outside the U.S.?

A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the U.S. Patent and Trademark Office can extend protection of that trademark into over 71 other countries through a treaty known as The Madrid Protocol.

The Trademark Company

Filed Under Trademarks Tagged With About, Business, Every, Know, Owner, Should, Things, Trademarks
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