This weekâs blog entries will be on a subject near and dear to my heart. âCybersquatting.â
Cybersquatting (also known as domain squatting), according to the United States federal law (known as the Anticybersquatting Consumer Protection Act), is registering, trafficking in, or using a domain name with bad faith or the intent to profit from the goodwill of a trademark belonging to someone else. Frequently, the cybersquatter offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price.
The term is derived from âsquatting,â which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent or otherwise have permission to use. Cybersquatting, however, is a bit different in that the domain names that are being "squatted" are (sometimes but not always) being paid for through the registration process by the cybersquatters. Cybersquatters usually ask for prices far greater than that at which they purchased it. Some cybersquatters put up derogatory remarks about the person or company the domain is meant to represent in an effort to encourage the subject to buy the domain from them. Others post paid links via Google, Yahoo and Ask.com...
# Copyright* $35 Government fee.* $100 Attorney fee.# Trademark* $325 Government fee.* $495 Attorney fee.# Trademark renewalThe Trademark Renewals schedule including the fees and costs is as follows:1. Section 8 - Declaration of Use: Must be filed on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the date of registration. Filing Fee: $100.00 per Class.2. Section 15 - Declaration of Incontestability: To claim that a trademark registered on the Principal Register is now incontestable, you must file a Section 15 Declaration of Incontestability once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration. (Section 15 does NOT apply to marks on the Supplemental Register). This document is normally filed in combination with the Section 8 Declaration above. Filing Fee: $200.00 per Class.3. Section 8 & 9 - Combined Declaration of Use & Application for Renewal: Must be filed on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the date of registration; and then again every ten (10) years there after. Filing Fee: $500.00 per Class. We'll help with your trademark renewals.Cost to Renewal: Our fee is $300.00 per...
While my last article described the need for a strong mark as a necessary step in the trademark process, sometimes a cost benefit analysis causes us to be flexible when resolving disputes.
I recently had an interesting conversation with the Counsel for Converse, Inc. After filing a trademark application for a client, who included an 11-point star, Converse was apparently concerned about potential trademark infringement as a result of possible consumer confusion because my client manufactures athletic clothing. I find it is extremely unlikely that anyone would mistake an 11-point star for that of Converseâs 5-point star in a circle.
At the outset they filed for an extension in which to file objections to the application, however, they suggested that they would likely be satisfied if we would amend my clientâs application to note that my client will not place their mark on any shoes. As my client does not manufacture shoes, Converseâs request is of little consequence, however, this raises a much more important issue. The David and Goliath scenario.
What has become a common place practice, large corporations and the law firms representing them send out letters in which they demand a more restrictive filing or a cancellation of a...
The most prevalent area for trademark disputes is the Internet. In this area, trademark fights are a common place thing.
A significant trademark issue on the internet is that of geography. You may have the only business in your town that uses the same name as your business, however, online there are no geographic boundaries, so we must determine if there are similar registered or unregistered marks in your same industry, anywhere.
Regarding domain names, this has been a difficult issue as the internet continues to evolve, however, this thus far has been on a first come, first served basis.
Note: cyber-squatting (registering a domain with no intent to use it in commerce but rather retain it as an asset and sell it to someone who does, without the intent to use it in commerce is in violation of U.S. Federal law. The Lanham Act, provides strict penalties against such conduct regardless of the cottage industry, which has sprung up around this practice. I will be providing several blog entries on this subject at a later date.
However, there are also instances when the opposite is true, i.e., where the first to use in commerce is a small business and the company, which later is doing business under that name, causes confusion in...
Another question I get very often is: So Ted, Iâve made the decision to get my trade name or logo, or slogan, etc., trademarked, do I really need an attorney to complete the application or can I deal directly with the trademark office?
The answer, as with any such question is always, it depends. You are not required to have a trademark attorney, however, this is a question which in reality asks, what degree of risk am I comfortable with. A medical doctor is not required to perform surgery on you, however, I would not recommend having surgery without one. Similarly, I would not recommend attempting to register a trademark without an experienced trademark attorney.
The process of obtaining a trademark (or copyright) is not simply the filing out some paperwork (however, this is certainly part of the trademark application process). The trademark application process begins with an extensive search to uncover if your proposed name, logo, slogan is currently registered or unregistered but in use in your same industry.
Also there is the consideration that if during that name or logo search you uncover a similar mark. Now what? Do you have to change your mark? Can you still have your proposed trademark registered? The answer is...
Over the years many clients have asked me the same question. I have a new business which I plan to build and grow so I want to protect my brand identity, the good will associated with that. So, do I get a copyright or a trademark on my name, or slogan or logo? What does each protect? What are the differences between trademark and copyright.
The answer to this question is not always an easy one, however, as we delve into the labyrinth of intellectual property there are some very important differences and some clear guidelines which help us select the appropriate vehicle for you.
Copyrights are typically related to original works of authorship, like a book or poem or screenplay or music (lyrics or music), while a trademark relates to brand names, slogans and logos.
Once the appropriate vehicle has been selected the most important thing to consider is the use of the proposed trademark. Users of a trademark have rights whether a trademark is registered or not. Trademark registration will give you an exclusive right to use the trademark nationwide, certain overseas rights, and a legal presumption of ownership.
However, registration of your trademark is only the start of defending your company name and goodwill. For your rights to...
We also provide representation regarding trademark and copyright licensing. To ensure our clients compliance with trademark and copyright laws we regularly work with BMI, ASCAP, SESAC as well as the NFL, NBA, NHL, MLB and other owners of music and sporting trademarks and copyrights.
In the future, watch for a new "licensing" section of TMRoe.com. However, in the meantime, if you have questions please contact our office directly for a free consultation.
I will be updating this blog with articles I am writing on interesting trademark and copyright issues. Please feel free to suggest topics that are of interest to you and I will endeavor to write on those subjects.