Services

Trademark Infringement and Protection

Your trademark identifies your company to the rest of the world and is the culmination of your products or services, reputation and marketing efforts. If someone else co-opts your trademark, your company’s identity is not only diluted, but it could be lost or worse-yet, perceived negatively. Trademarks are especially vulnerable on the Internet.

Did you know that:

Companies can have their trademark co-opted in someone else’s domain name and if their website is optimized properly, can have a higher ranking in Google and other search engines?

Trademarks can be co-opted by the purchase of the trademark in Google AdWords and other Internet advertising programs?

Unlawful use of a company’s trademarks can be used to co-opt that company’s business almost instantly?

Companies need to register their trademark to enforce their rights in federal court?

Companies can recover a co-opted domain name from a cybersquatter without having to resort to expensive litigation?

A business’ intellectual property is oftentimes its most valuable and vulnerable asset making trademark law especially daunting for many practitioners. On top of that, the largely unknown area of the Internet complicates matters. Hiring a law firm that has experience with these complicated issues is of the utmost importance.

Centre can help you deal with your issue whether your business is being accused of violating another’s trademark or if your trademark is being infringed.

Why Centre?

Centre’s attorneys have experience with traditional intellectual property matters and experience as to how they relate to the Internet. This dichotomy gives Centre’s Internet law practice an ideal perspective on your trademark law issue.

Centre’s Capabilities and Experience

Centre’s attorneys have experience protcting trademarks and defending those accused of infringing on them. For example, Centre’s attorneys have:

Represented companies in multi-million dollar federal litigations in which one party was accused of unlawfully purchasing Google AdWords;

Written and responded to numerous demand letters regarding potential trademark violations;

Represented companies in multi-million dollar federal litigations in which one party was accused of unlawfully embedding another’s trademark in their web site’s code;

Represented companies in multi-million dollar federal litigations in which one party was accused of purchasing another’s trademark in a domain name; and

Represented companies in multi-million dollar federal litigations in which one party was accused of selling gray market and counterfeit products; and

Represented a company whose domain name was co-opted by a former employee.

Contact Eric S. Crusius, Esq.via e-mail at ecrusius@centreconsult.com or by phone at (703) 288-2800 for more information. Centre’s Information Centre regarding trademark law is below.

Information Centre: The Interface of Internet Law and Trademark Law

What is a trademark?

A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another. 15 U.S.C. 1127. Examples include the Nike “swoosh” and the name Coca-Cola.

What is a service mark?

A service mark is the same as a trademark, but identifies a service instead of a product.

What is trade dress?

Sometimes, a trademark can extend beyond a word, symbol, or phrase and include other identifying features of the product such as the pink color of Owens-Corning insulation. However, trade dress will not be protected if it gives a competitor a particular advantage – such as an easier-grip bottle. See Qualitex Co. v. Jacobson Products Co., Inc., 115 S. Ct. 1300 (1995).

Why are trademarks good?

Trademarks make it easier for consumers to quickly identify the source of a given good. For instance, a consumer can spot a can of Pepsi right away and know it is made by Pepsi or that a restaurant that calls itself McDonalds and has yellow arches is a McDonalds.

What are the limitations of trademarks?

Trademarks can be limited by category or geographic area. For instance, Delta is used for an airline and a faucet manufacturer.

What laws govern trademarks?

Trademarks are governed by both state and federal law. Originally, state common law provided the main source of protection for trademarks, but in the late 19th century, Congress enacted the first federal trademark law. Since that time, federal trademark law has consistently expanded, taking over much of the ground initially covered by state common law.

The main federal statute is the Lanham Act, which was enacted in 1946 and most recently amended in 1996. See 15 U.S.C. 1051, et seq. Today, federal law provides the main, and by and large, the most extensive source of trademark protection, although state common law actions are still available. Most of the discussion in this summary focuses on federal law.

What are the prerequisites to registration?

In order to register a trademark, it must be distinctive – meaning, it must be capable of identifying the course of a particular good. Marks are grouped into four categories: (1) arbitrary or fanciful; (2) suggestive; (3) descriptive; and (4) generic. The easiest types of marks to trademark are arbitrary or fanciful marks and the most difficult are generic.

How are trademark rights acquired?

If a trademark qualifies for protection, rights to a trademark can be acquired by either being the first to register it with the United State Patent and Trademark Office or by being the first to use it in commerce. For descriptive marks which must acquire secondary meaning, there may be a period after initial use necessary for it to qualify for protection.

Another way to acquire a trademark is to register it with the USPTO with a bona fide intention to use it in commerce.

What are the benefits to registering a trademark?

Registration enables nation-wide use. See 15 U.S.C. §1072.

Registration enables a party to bring an infringement suit in federal court and recover treble damages and attorneys’ fees depending on the circumstances. See 15 U.S.C. 1121.

After 5 years trademarks become “incontestable” by others seeking to invalidate it.

What are things I can do which would cause me to lose a trademark?

One can lose a trademark by abandoning it, improperly licensing or assigning it or it becomes generic.

If someone is violating your trademark, it is important to take action against the person/entity violating your trademark. Otherwise, your trademark could be deemed abandoned.

Connect with Centre’s Internet Law and New Media Practice

Visit Centre’s Internet Law LinkedIn Group. Stay updated on the latest news.

Visit Centre Law’s Internet Law Blog here: http://internetbizlaw.wordpress.com/.

Further Research

Digital Millennium Copyright Act: http://www.copyright.gov/legislation/pl105-304.pdf

Lanham Act (Trademark law): http://www.uspto.gov/trademarks/law/tmlaw.pdf

Domain Name Dispute Resolution (ICANN): http://www.icann.org/en/udrp/udrp.htm

Guide to the CAN-SPAM Act: http://business.ftc.gov/documents/bus61-can-spam-act-compliance-guide-business

Hacking statute: http://www.justice.gov/criminal/cybercrime/1030_new.html