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

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

The Cost Of A United States Trademark Registration

May 21, 2010 By Law Library Leave a Comment

How much does it cost to receive a U.S. Trademark Registration?  Here is what you need to know about the costs involved in registering a trademark in the U.S.

The ETEAS and ETEAS PLUS Systems

The United States Patent and Trademark Office (“USPTO”) charges either $275 or $325 per class of goods or services to file an application for a U.S. Trademark Registration.   Whether the cost per class is $275 or $325 depends upon system the applicant uses at the USPTO.

The traditional filing system, known as the TEAS system, permits applicants to write their own identification of goods or recitation of services with which they wish their trademark to be registered.  For instance, Nike would seek registration for a trademark using an identification of goods such as “athletic shoes” in International Class 25.  If Nike writes their own identification of goods using the TEAS system the cost is $325 per class of goods or services in which the application is filed.

We’ll explain below what “per class” means.

As an alternative to the traditional system, in recent years the USPTO initiated a new system known as the TEAS PLUS system.  The TEAS PLUS system is designed to both reduce the cost of the trademark process while speeding up the registration process.  In this regard, provided that applicants meet certain specific criteria and use only identifications of goods or recitations of services from a pre-approved list the cost to register their marks is reduced from $325 to $275 per class of goods or services.

Accordingly, the base price to apply to register a trademark with the USPTO is either $325 or $275 depending upon which system is used.

U.S. Filing Fees Are Per Class

Next, applicants should understand that the USPTO’s filing fees are per class.  U.S. Trademark Registrations are goods or services specific.  This means that when you seek a U.S. Trademark Registration you must specify the goods or services with which the trademark is, or will be, used.

For instance, Nike undoubtedly owns registrations for NIKE in Class 25 for running shoes whereas McDonalds retains registrations in Class 42 or 43 for restaurants.

There are currently 45 classes of goods and services recognized by the USPTO.  Goods and services are defined into these 45 specific classes to both create certainty for the USPTO in regard to the goods or services for which specific Trademark Registrations will apply but also  to allow for greater uniformity among international trademark offices of various countries as the world moves toward a unified global system of trademark protection.

As such, an application by a music band who also intends to sell CDs of their music would apply to register a mark in two classes:

Class 9:         Pre-recorded music CDs.

Class 41:       Live performances by a music band.

If they file using the TEAS system, their total filing fees would be $650 (2 classes x $325 per class).  In the alternative, if they are able to use the TEAS PLUS system their filing fees would be reduced to $550 (2 classes x $275 per class).

As such, prospective applicants must be savvy in regard to not only the system which they use but also the classification system and how many classes their requested application may fall into to understand the true cost of the U.S. Trademark Registration for which they seek.

The Distinction Between Use and Intent-to-Use Applications

Next, if your trademark is in use at the time of filing the application should be filed as a use-based application under what is known as Section 1(a).  However, if the trademark is not in use as of the date of filing it is required to be filed as an intent-to-use  application under Section 1(b).  If it is filed as an intent-to-use mark, additional fees will apply in order to get the mark registered.

In short, should the USPTO deem the application worthy of registration rather than receiving a Certificate of Registration like a use-based application, an intent-to-use application receives what is known as a Notice of Allowance.

The Notice of Allowance is akin to a permission slip which allows the applicant to complete the registration process and receive its Certificate of Registration upon filing what is known as a Statement of Use.  This subsequent filing, however, requires an additional charge of $100 per class of goods and services.

Accordingly, if you have a 2-class intent-to-use  application filed under the TEAS system the fees to register the mark would look something like this:

Application Fee = $650 (2 x $325);

Statement of Use Fee =  $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use Application = $850.

But it does not end here.  We mentioned above that to file the Statement of Use costs $100 per class.  Of note, from the date of the Notice of Allowance an applicant has only 6  months to file their Statement of Use establishing use of the mark.  If the mark is yet to be in use by this date an applicant may file for an extension of time in which to file their Statement of Use.  An extension of time to file the Statement of Use costs $150 per class.  An applicant may file up to 5 extension requests per mark or may extend the due date of the Statement of Use for up to 2 and one half years (5 x 6 months) following the conclusion of the initial Notice of Allowance Period.

So let’s look back at our example above changing the situation slightly to reflect a need to file the Statement of Use 8 months after receiving the Notice of Allowance.  Recall, this would require one extension of time to file the Statement of Use as an applicant is only permitted 6 months to file the same following receipt of the Notice of Allowance.  Under that scenario the same would look something like this:

Application Fee = $650 (2 x $325);

Extension of Time in Which to File Statement of Use = $300 (2 x $150);

Statement of Use Fee =  $200 (2 x $100);

Total Fees to Register a 2-Class Intent-to-Use

Application with One Extension of Time = $1150.

As you can see, the base price to apply for a U.S. Trademark Registration can vary widely depending upon the (1) USPTO system used, (2) the number of classes for which the application is made, (3) whether the application is use-based or an intent-to-use, and (4) whether, if an intent-to-use, an extensions of time are required prior to filing the Statement of Use.

Law Firms and Filing Services

Lastly, we would be remiss if we did not mention the cost of assistance in the trademark filing process.  The cost to have a law firm and/or filing service file for a trademark on your behalf typically ranges from $149 to well over $3000 depending upon the size of the firm or company and the level of experience they retain in the trademark arena.

The obvious expense to using a law firm or filing service is the additional costs involved in employing the same.  The benefits, however, typically far outweigh the burden of the costs insofar as a skilled firm can not only reduce or minimize the costs involved as referenced above but also retain invaluable experience in what can be a complex system to garner a U.S. Trademark Registration.

Often the cost of the legal services are fully offset by the firm or company’s ability to have an applicant’s application filed in the TEAS PLUS system versus the TEAS system, reducing the number of classes filed for, and even working with the applicant to determine whether an application may be filed as a use-based application versus an intent-to-use or otherwise.

Moreover, as the USPTO’s filing fees are non-refundable most consumers prefer the added confidence of knowing that their application is being prepared and prosecuted by a seasoned professional.

Summary

In conclusion, there is much to know about the costs involved in filing for a trademark.  Whether it is that the costs involved are dependent upon the filing system used, the number of classes filed for, or whether the application is filed once use has begun or not will all affect the price of your trademark application.  Additionally, most consumers prefer to rely upon the experience of seasoned professional to sort through the filing costs, reduce filing fees whenever possible, and advise them as to the availability of their mark prior to incurring non-refundable filing fees.

Without assistance, the cost for a U.S. Trademark Registration can be as low as $275 for a one-class mark filed using the TEAS PLUS system.  However, if the applicant does not satisfy all of the requirements of the TEAS PLUS system additional fees will apply.

In the alternative, applicants may seek to assistance from an experienced law firm to assist in the registration process.  In that case they should expect the lowest cost to be in the nature of $424 for a One-Class Mark filed using the TEAS PLUS system ($275 for the USPTO filing fee, $149 for the law firm’s services).

Filed Under Trademarks Tagged With Cost, Registration, States, Trademark, United

4 Things Every Trademark Owner Should Know About Monitoring Use Of Their Trademark(s)

May 9, 2010 By Law Library Leave a Comment

If you are a trademark owner did you know that to maintain rights in your mark you are required to police the use thereof?

 

Unauthorized use of your mark, also known as infringement, diminishes the distinctiveness of a trademark and, correspondingly, reduces your rights in your trademark by diluting it in the marketplace for relevant consumers.

 

In short, the more trademarks there are out there that look like your mark, the less likely your trademark will be viewed by consumers as an identifier of the source your goods or services.

 

Whether you have a Trademark Registration or not here are 4 things every trademark owner should know about Monitoring use others are not infringing thereon:

 

1.     USPTO.gov

 

The United States Patent and Trademark Office (“USPTO”) maintains a moderately user-friendly web site located at USPTO.gov.  There users can search the USPTO’s records of pending and registered trademarks using the Trademark Electronic Search System (“TESS”).

 

For individuals not trained in the more advanced techniques of searching the USPTO’s databases, use of the “New User Form Search (Basic)” is the most user-friendly.  Although it may not bring up all of the results that a “Free Form Search (Advanced)” may (e.g., phonetic equivalents (Coco Cola vs. Koka Kola) or foreign translation equivalents (Red Shoes vs. Zapatos Rojos), it is a nevertheless a great, basic, and cost-effective (i.e., free) manner to monitor filings before the USPTO to make sure others are attempting to register trademarks too similar to yours.

 

2.     Search Engines & Google Alerts

 

Monitoring your trademark(s) on the USPTO will only pick up a fraction of the trademarks that are actually out there and in use.  Many entities and/or individuals never file to register trademarks that they are using with the USPTO.  As such, to expand your view of trademarks that are actually in use in commerce you should also examine trademarks in use in cyberspace.

 

In short, monitoring of your trademarks should include regular checks of the major search engines to make sure others, and in particular your competition, have not adopted or are using trademarks similar to yours.  There are far too many search engines out there to mention and repeatedly search them all.  However, for the purposes of this article we suggest routine searches of the three biggest in the U.S.: Google (@45% of search traffic in the U.S.); Yahoo! (@21%); and Bing (@12%).

 

Searching for your trademark(s) using these three search engines may identify others wrongful use of trademarks identical or substantially similar to yours.  It is also important to note that monitoring of these search engines should not simply be limited to whether someone else has adopted use of a mark which is identical or similar to yours.

 

Checks should also be conducted to make sure a search of your trademark(s) do not bring up competitor’s sponsored ads (i.e., pay-per-click advertising) which may indicate that your competitors are bidding on your trademark as a keyword.

 

Moreover, if a competitor and its dissimilar mark ranks highly in non-sponsored or organic search results when you search for your trademark you should examine their html code for their web site to make sure they have not embedded your mark in their html code so that their site appears in search results when consumers are seeking you out online.

 

Of note, if you do not wish to spend your days fixated searching the Internet for wrongful use of your marks try Google Alerts.  Google Alerts allow you to set alerts, delivered via email as frequently as you choose, for any term or combination of terms when Google’s discovers while performing its routine indexing of pages posted on the Internet.  It’s a great low-maintenance tool to monitor use of your mark, or wrongful use thereof, on the Internet.  Note, it will not alert you to the pay-per-click or html issues referenced above.

 

3.         RSS Feeds & Twitter

 

Another way to monitor the use of your trademarks online is to follow RSS feeds of relevant blogs and other information in your industry as well as monitoring the use of your trademarks on social media sites like Twitter.

 

To do this simply identify the most relevant blogs in your industry and monitor them for use of marks similar to yours by subscribing to RSS feeds for these blogs.  Additionally, you can set search terms in Twitter and have the same downloaded to your RSS feed as an extra level of protection.

 

4.         State Trademark and Corporate Databases

 

One final level of monitoring you may wish to undertake is the monitoring of state trademark and corporate databases for filings of new business names or state trademarks which may infringe upon your rights.  The good news is that almost every state has an online portal where you can search for business and state trademark filings for free.  The bad news, the state web sites are not linked and to search every state’s databases on a routine basis would be quite time consuming.

 

There are subscription services which allow for the monitoring of all state databases at once.  If that is not feasible for you we suggest periodic searches of those states in which your business maintains its most active presence.

 

As always, there are companies which offer Trademark Monitoring services.  However, if you choose to monitor your marks on your own these tips above will provide you with a great road map to get started.

Filed Under Trademarks Tagged With About, Coco Cola, Distinctiveness, Electronic Search, Every, Free Manner, Google, Know, Kola, Monitoring, Owner, Patent And Trademark Office, Patent And Trademark Office Uspto, Red Shoes, Rojos, Search Engines, Should, States Patent And Trademark Office Uspto, Their, Things, Trademark, Trademark Electronic Search System, Trademark Electronic Search System Tess, Trademark Owner, Trademark Registration, Trademarks, Translation Equivalents, United States Patent, United States Patent And Trademark, United States Patent And Trademark Office
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