IP LAW 101 FEATURED ON ALLTOP!!!!

Hello!

Welcome new and returning readers!  I must admit this blog is a year late.  My dear husband had been urging me to start a blawg (law blog) for a year. He felt I really had something valuable to share with the public.  See my husband thinks I am a pretty good attorney.  He may be biased though.  LOL!  I just really love what I do and I love helping people.  So you can imagine my absolute surprise and astonishment when IP LAW 101 was selected to be on Alltop in the Top Law News category!  Woot! What is Alltop? Alltop is an interent magazine of the BEST news and stories on the internet from blogs and other web sources.  Alltop displays the best of the best on various topics such as law, politics, technology, beauty, you name it!  The process for inclusion on Alltop is pretty selective, so if you are listed on Alltop, you are pretty hot stuff. LOL!  Seriously, I am so honored, thrilled, and humbled! You see I started this blog 2 months ago and the response I have received is overwhelming.  I know the information provided in this blog is helping someone.  So thanks Alltop! And thank you to my husband for making me start this blog! Woot!

Why You Should Hire A Trademark Attorney To File A Trademark Application

Hello!

Welcome Back! Now some of you may think that I am writing this article because I want you to hire me or one of my colleagues.  Now of course if you think I might be an awesome attorney, then please contact me.  LOL!  But this blog is purely to provide valuable information to people who need it.  I felt compelled to write this article because many individuals believe that the process to file a trademark application is simply filling out the application online and then Viola!, six months later you have an official trademark registration.  Is it that easy?  Well maybe about 50% off the time.  To be honest, a large portion of my client base are individuals who filed their own trademark application and it was subsequently rejected. Yes rejected. There are numerous reasons the USPTO rejects an application. The most common reasons are:

1. The proposed mark is too similar to a registered trademark.

2. The applicant submitted an insufficient specimen (trademark and/or logos).

3. The appliciant failed to prove the mark is currently being used in commerce.

4. Applicants submit items that should be sent to the US Copyright Office to the USPTO.

4. The applicant missed an all important USPTO deadline.

So what can a trademark attorney do to ensure the likliehood of success in obtaining a registered trademark that most individuals do not do?: They are the following:

1. Perform a comprehensive trademark search to ensure your mark does not infringe on a registered or unregistered mark that has priority rights.  Trademark attorneys hire trademark searh companies to do a comprehensive search of your mark.  This search will gather any information or trademarks that are similar to your trademark.   These companies search the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet. This cost for this type of search starts at $550.00.  This may sound steep, but who wants to do all of this research themselves? Remember, there may be an existing trademark that has priority rights over your trademark that is not registered with the USPTO.  A trademark that has been used in commerce first in its region has valid trademark rights even if it is not registered. I discussed this concept here.  So do not simply rely on the trademarks listed in the USPTO database.  It WILL NOT contain all valid existing trademarks that may compete with yours.

2. Analyze the contents of any comprehensive search and give a legal opinion regarding the likliehood of success of your trademark obtaining registration.  Once this information is gathered, a trademark attorney will use his or her knowledge of the trademark laws and determine whether: a) there is a competing trademark, 2) whether a competing trademark has priority (1st to use) rights over yours and vice versa, 3) whether you should pursue a trademark dispute, or 4) whether you should choose another trademark. 

3. File your application and ensure the application is worded correctly and that you have the correct specimens (evidence you are using the trademark in commerce) for submittal.  One of the top reasons trademark applications are rejected is because individuals do not submit the correct specimens.  A correct specimen for goods can be a label or a container.  A correct specimen for services can be a brochure or advertisement for services.  Often individuals simply submit the drawing (logos) or name as the specimen.  This is incorrect and your application will be rejected.

4. Make sure you do not miss any deadline for responses to a USPTO action. The USPTO reviews your application and subsequently provides several office actions before the application is offically approved and a registration issued. However, these office actions have very strict response deadlines.  If you miss a deadline, your application can be abandoned. What does this mean? You have to start over. Trademark lawyers are very careful about adhering to deadliens.  If we don't, guess what? You can sue us for malpractice. 

Lastly, many individuals use companies like Legal Zoom to file trademark applications.  These companies DO NOT perform comprehensive searches.  I repeat they DO NOT perform comprehensive searches.  They only check the USPTO database.  So you can pay this company around $550 which includes the $325 USPTO filing fee, and cross your fingers.  If the applications is rejected because the USPTO did their own research and found a competing right, you are basically out of luck.  

How Does Dilution Affect You as a Trademark Owner?

Hello:

Below is my continuation of Monday's post regarding Dilution.  

So how does Dilution affect you as a trademark owner or potential trademark owner? Well the law has recently changed. Now the law heavily favors owners of nationally knowned or recognized trademarks. Previously, an owner of a famous trademark had to show that a company that adopted their trademark but sold a totally unrelated product or service was ACTUALLY diluting their brand. Actual dilution could be shown by economic injury (loss profit or sales) via blurring (consumers began to confuse the two products) or tarnishment (the use of the famous mark by the subsequent company tarnishes the reputation of the famous mark). But actual dilution was hard to prove. Currently, the only thing an owner of a famous trademark has to prove is that there is a likliehood of confusion rather than actual economic injury. Trademark Dilution Revision Act (TDRA) This is much easier for a company to prove. One way a company can prove a likliehood of confusion is by simply doing customer surveys.

Second, a mark has to be recognized nationally by the general consuming public. TDRA. Previously, a highly distinctive or niche mark was considered famous even if it was only used in a specific geographic region. Now if your mark is famous or well knowned in the Southeast but not nationally, then you can not claim dilution by a subsequent mark.

Third, protection from Dilution is still afforded to trademarks that are satires, parodies, or criticisms of a famous mark. TDRA. This is called the fair use doctrine. So the website Perez Hilton, which is a satire or parody of the name, Paris Hilton, is protected from any dilution claim from Paris Hilton.

I want to close out this article with three key points:

1. If your mark is nationally known or recognized, be vigiliant in protecting your brand and trademark. The current law is on your side.

2. If you are a potential trademark owner, make sure you do not choose a trademark that is too similar to a nationally recognized trademark. Although you may not offer the same product or service, a company that owns a more famous mark can easily prevent you from using the mark.

3. Parodies or satires are protected. So if you have a website or an idea for a mark that parodies a famous mark, feel free to embark on that journey. Fair use is king!

Trademark Dilution: What Does It Mean?

Hello!

Note: When I initially wrote this article, it was very long. So to keep my readers engaged, I decided to split this article into two posts.  I hope you find this information helpful.

Today I am going to discuss Trademark Dilution.  I will explain what it means and in my next post I will discuss how Dilution may or may not afffect you as a trademark owner.

Dilution is when another company or individual uses your famous trademark or brand name on a totally unrelated product or service and their use of your trademark "dilutes" the distinctiveness of your product or service.  Dilution can occur even if the unrelated product or services is not competitive or may not cause a likliehood of confusion, i.e., consumers would confuse the two companies' product or services.  I will explain this concept in the example below:

Your company name is XYZ, Inc. You own a trademark for distributing tech gadgets.  You have built a brand name and reputation as a leader in distributing tech gadgets.  However, another company comes along and names their company XYZ, Inc. but they don't sell tech gadgets, they sell street clothing. Although, the products sold are totally unrelated, the consuming public can assume that company XYZ, Inc., which sells tech gadgets, has ventured into the business of selling street clothing.  XYZ, Inc., the tech company, does not want to be known for selling street clothing.  They want to be known as the leader in selling tech gadgets. And of course, XYZ, Inc., the street clothing company, wants to use the XYZ name because they can gain recognition off of the brand name and reputation of XYZ, Inc., the tech company.  Thus this is how dilution of a brand occurs and why well knowned or famous trademarks want to avoid it.

So how does Dilution affect you as a trademark owner? Stay tuned for my next post to find out.

Taglines and Coined Phrases are Trademarks Too!

Hello!

If you are new to this blog, welcome! If you are a returning visitor thank you so much for coming back.  

As a trademark lawyer, I often notice that individuals create unique tag lines and coined phrases to describe their product or service, but do not trademark them.  Taglines or coined phrases usually describe your product or service and a business becomes associated with that phrase. Thus they are trademarks.  A trademark is defined as an intellectual property right that protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of goods. I can better describe this definition in a couple of examples:

Example 1. Coca-Cola is the trademark associated with the soft drink Coke. However, Coca-Cola recently adopted a coined phrase: "Enjoy the Coke Side of Life." You better believe Coca-Cola trademarked that bad boy as soon as it was conceptualized.

Example 2. Atlantic Station is the trademark associated with the Live, Work, Play Community here in Atlanta. Great concept. They also have a coined phrase, "Life Happens Here." This tag line or phrase is also a trademark associated with the community Atlantic Station.

So it is very important to trademark all tag lines or phrases associated with your product or service.  Here are a few practical tips to ensure you are protecting all names, words, and phrases associated with your brand:

1. If you already have a tag line or coined phrase associated with your trademark, make sure you include it when you complete and file your trademark application.  For example, you would submit your mark, XYZ Company, (name of co.), We Work for You (tagline) as one trademark.

2. If you later create a unique phrase or tag line that your company becomes associated with after you have already applied for and received a trademark for your company name, logos, etc., simply submit another application to trademark the phrase.  It will prevent others from using the phrase and protect your brand.

I hope this information was helpful.  If you have any further questions or concerns,  please email me.

Practical Tips for Bloggers when protecting your copyrighted works.

Now for the bloggers out there.  Use these practical tips to properly protect your copyrights on the internet.

1. Do place a copyright notice on your site.  This will not stop individuals from stealing your work, but it may give them pause.

2. Use Copyscape.  Copyscape will search the web for copies of your work on the internet. Having the DO NOT COPY widget on your blog will deter some infringers.

3. Register your copyrighted post with the US Copyright Office.  I know you are thinking that registering every post will cost you a fortune especially if you have been blogging for more than a year.  Well good news!  The US Copyright Office will allow an applicant to register collections of works.  So you can register your archives from a particular year as one collection.  The cost to register a collection of works is the same $45 fee ($35 online) as it is to register one work. For example, you can register all of your posts from the year 2007 as one collection. Entitle the Collection, "My Blog Name, 2007 Collection."

4.  Moving forward and if your budget allows, register small collections of your post every 90 days.  This will ensure that you can go after a recent infringer within the 90 day time period in order to receive guaranteed federal monetary damages. Read about this 90 day rule here.

I hope this information was helpful.  As always if you have any further questions please, contact me at lgivens@phillipsgivenslaw.com.

Pros and Cons of Registering your Copyright with the US Copyright Office

Hello!

Copyright protection is currently a huge issue on the internet.  As a blogger, I hear many complaints from fellow bloggers that this site, publication, or individual used their blog material as their own without giving the original author (blogger) credit.  This is very frustrating because writing is hard work and nothing is more deplorable than when someone takes credit for something you put your time and effort into.  Below I am going to discuss some basic rules and principles of copyright law and then in my next post, I will give you some practical tips to protect your work on the internet.

A copyright owner is one who can prove that the work is an indepedent original creation.  A copyright owner has the exclusive right to: 1) make the work, 2) copy the work, 3) sell and distribute copies, 4) make a derivative (book or movie) of the work, 5) perform the work publicly, and 6) display the work publicly. Any person who excercises any of the above 5 rights of the copyright owner, without the owner's permission, is a copyright infringer.  1976 U.S. Copyright Act. 

Once an individual creates an independent original creation, that individual automatically owns a copyright.  This copyright is obtained without registering the work with the Library of Congress, U.S. Copyright Office and is valid for the life of the copyright owner plus 70 years.U.S. Copyright Act.  However, in order to file a copyright infringement action against an infringer and take advantage of certain remedies (resolutions) established by the federal government for those who are victims of copyright infringement, a copyright owner MUST register their original work with the US Copyright Office. 

Remedies available to un-registered (US Copyright Office) copyright owners are the following:

1. Go to civil court to obtain an injunction (an order from the court) demanding that the infringer stop the infringement.

2. The copyright owner's actual damages (professional harm, revenue, etc.) from the infringment and any profits made by the infringer.  However this has always been very hard to prove.  It is well known in copyright practice this is nearly impossible to prove.  So most copyright owners simply end up with an injunction and no monetary award.  Attorneys fees may also be awarded.

Remedies available for registered works with the US Copyright Office:

1. Statutory Damages.  Once you have established copyright infringement you can elect for statutory damages (monetary awards set by federal law that are automatically given to the copyright owner ) which are no less than $750 and up to $30,000.  Also the winning party is awarded attorney fees and costs. So you do not have to prove loss revenue, harm, or gain of profits by the infringer. So essentially, if you register your copyright with the US Copyright Office, and you can prove copyright infringement, you are guaranteed to receive some monetary award.  If your copyright is not registered, your likliehood of receiving any monetary award is very sketchy. 

So it is very good practice to register your copyrighted works as soon as they are created. Why? Guaranteed statutory damages are only available to those who register their original material within 90 days of publication of the work or those who register before the infringement takes place.  A copyright application only costs $45 ($35 on line) to file with the US Copyright Office.  Plus you can complete the application and file it yourself.  Click here for application information.  Just make sure you read the instructions for completing the application thoroughly and complete it as instructed. You can hire an attorney to complete it for you, but you will have to pay legal fees and the application fee.

I hope this information was helpful.  If you have any further questions or concerns, please email me.

Practical Tips in Fighting and Winning a Domain Name Dispute

Hello!

Thank you for coming back! In my previous post I gave an example of a common problem many companys and bloggers deal with on a daily basis. Here is the example:

Example: You go ahead and register your domain name, Wethepeople.com. Hey you own it! But then some company comes along and registers Wearethepeople.com. You both are in same business and when you do a google search, their name comes up first. You have built a brand name, reputation, and following with Wethepeople.com. They are diverting traffic from your blog and causing confusion. What can you do?

So what can you do? Below are several cost effective and practical tips in fighting and winning a domain name dispute:

1. Hire an attorney to write a simple letter conveying your right in the domain name and demanding that the offender transer the domain name to you, the rightful owner. You or an attorney can use the service, Whois.net to find out the name of the individual or company that registered the domain name; address and or phone number of the registrant; and the name and address of the hosting company.

From my experience, a letter from an attorney stating your lawful right to the domain name, i.e., you own a valid trademark in the domain name; and evidence that their registration of a similar domain name is diverting traffic from your site, is usually enough to scare the offender into doing what you want.

Hiring an attorney to write a 1-2 page letter will usually take about 1-2 hours.  2 hours of legal fees is peanuts to what you could be losing in lost traffic and sales.

2. If the cease and desist letter from an attorney does not work, you can file a domain name dispute with ICANN.  ICANN, the Internet Corporation for Assigned Names and Numbers, is the governing body for internet (domain) names.  ICANN has a dispute resolution procedure to resolve domain name disputes.  In order to file and be successful at a domain name dispute, you must show the following:

a. The domain name is identical or confusing similar to the trademark the domain name owner has in the domain name;

b. Demonstrate that the offender registered the domain name in bad faith, i.e., they registered the domain name to divert traffic from your site; to cybersquat (sit on the name in order to strong arm you into purchasing it); or the offender registered it to prevent you the rightful owner from doing so.

c.  Show that the offender does not have any valid rights or use for the registered domain name. For example, they do not own a business that includes the domain name or they or their company is not generally known by the domain name.

The cost to file a domain name dispute with ICANN is $2600 for a 3 member arbitration panel and $1300 for a single member arbitration panel.  

Also, remember to register your trademark which contains your domain name before filing a dispute with ICANN.  Registering a trademark with the USPTO can be costly but is so worth the cost and effort.  However, registering your trademark with your state is relatively inexpensive.  Trademark registration is good evidence that you legitimately own the trademark in question.  It definitely helps when presenting a case before ICANN.

I hope this article answered any questions you may have had about domain name disputes.  If you have any further questions, please contact me at lgivens@phillipsgivenslaw.com.

Our next topic will discuss how to properly copyright written material.  This article is especially for you bloggers!