Month: December 2016

Fighting Internet Infringement

The vast scope of the internet can have major implication when addressing trademark infringement. If you find yourself on the wrong side of an internet infringement case, there may be several avenues available to overcome a detrimental outcome. One of the most common defenses is using the descriptive fair use doctrine. This doctrine allows for a defense when a registered trademark is used with good faith only to describe your goods or services. Use may also be allowed if it is nominative fair use, which means it was only used to refer to the registered trademark. In addition, commentary, parody, noncommercial use, and criticism are allowed as they are protected by the right to free speech. It is imperative to ensure that you are not using a registered trademark to attract customers. Many times this can boil down to whether the use was in bad or good faith. Always be sure you know not only your rights, but those of another trademark owner if their mark appears on your website in any capacity.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Can I trademark a domain name?

Yes, it is possible to trademark a domain name so long as it is used in the same way all trademarks must be used, as an indicator of source and to distinguish your goods or services from your competitors. This means that it cannot be used solely as a domain name to access a website. It is important to note that just because you have a trademark it does not mean you are entitled to use that domain name. Someone may already own it and if that is the case then the only way to obtain it is to purchase it from the owner. The similarity of domain names can be taken into account when determining whether there is a likelihood of confusion with another trademark. In addition, using a registered trademark in a domain name be considered dilution. Such cases are generally resolved through the Anticybersquating Consumer Protection Act or the Uniform Domain Name Dispute Resolution Policy (UDRP). It is important to know your rights both as an owner of a trademark and owner of a domain name.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

The Internet and your Trademark

There are many important aspects of trademark law that can be applied in cyberspace. False advertising claims can be brought online so remember to be just as careful about what you say regarding your products and those of your competitors as you would normally. Using your trademark on the internet could constitute as use in commerce depending on how exactly it is used. It must still be used as indicator of source on your goods or services. Using your trademark in an internal fashion such as a keyword purchase or sponsored content may not be enough to show use in commerce. Likelihood of confusion and dilution can be found for marks used on the internet with the same standards as normal being weighed. However, the internet as a marketing channel must be taken into account and can add factors like initial interest confusion. Initial interest confusion occurs when consumers are attracted to a website that is using a registered trademark. This diverting of traffic can infringe on the rights of the trademark owner. The use of the internet is essential to success in this day and age and knowing your rights and responsibilities as a trademark owner in the digital age is imperative.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is false advertising?

Advertising is considered false when the things such as origin or description or representation of a fact are false or misleading during promotion or advertisement. False or misleading means that it is likely to cause confusion or deceive. False advertising can apply to a claims about a person’s own goods or services or to a claims about a competitor. For a false advertising claim it must be shown that a false or misleading statement was made in regards to advertising or promoting goods and there was deception that would likely influence a consumer’s purchase and cause injury. If both parties are competitors then there should not be easy to demonstrate that injury is possible, however if they are noncompetitors then probable injury may be tougher to prove. A possible defense to a false advertising claim is “puffing.” This is the idea that advertising usually involves exaggeration and that is acceptable to a certain extent and does not necessarily make the claim false. Before making claims make sure they are properly vetted and cannot be misconstrued.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Dilution Law

Dilution is when another trademark would infringe on your trademark’s reputation or identity. This can occur even without a finding of likelihood of confusion. The goal of dilution law is to prevent damage to a trademark owner based on the name. The two main forms of dilution are blurring and tarnishment. Blurring occurs when a trademark would weaken the standing of a registered trademark by “blurring” the mental image consumers and others have when they think of the registered mark. This has the potential to diminish the mark’s uniqueness. Tarnishment is when a registered trademark could be linked to other products which would harm the way the mark is perceived. An example could be low quality or unsavory goods. The goods do not need to be related to tarnishment. There are many other factors to be considered as well such as fame of the mark and recognition, distinctiveness, and degree of similarity.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Counterfeit Products

A counterfeit is a form of infringement where someone using a spurious mark that is either identical or indistinguishable from a registered trademark. There are criminal penalties, which can include hefty fines and even imprisonment, and civil remedies for counterfeiting. Counterfeit goods and even facilities and equipment used to counterfeit may be subject to seizure. For a mark to be found counterfeit it would have to be have been used on the same goods or services as the registered mark. Something may be found to be a counterfeit even if the infringing party did not know the mark was registered. Other factors include the point of view of the average person and whether or not the intention was to deceive purchasers. It is also very important to note that counterfeit may even be found with the original mark if it is found to be used in a way that deceives the public. Take steps to ensure that not only you, but those you have allowed to use your trademark are using it properly.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Reverse Confusion

One possible outcome of a likelihood of confusion fight is reverse confusion. Reverse confusion is when the infringing newer trademark is more well-known than the senior trademark. This can happen if the younger mark was the subject of an advertising campaign and potential customers are more likely to recognize it than the older mark. This finding can of course be detrimental for the owner of the older mark as consumers may pass when purchasing their goods because they think the older mark is the infringer. Reverse confusion may also be bad for the younger mark if it is found that they used or advertised the new mark with disregard for the older mark’s status. This bad faith move can result in damages. Reverse confusion can add complications and risks for both sides. Like regular likelihood of confusion, it is best avoided through careful searching and selection of a trademark prior to filing.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Purchaser Sophistication

One factor that is taken into account when determining likelihood of confusion is how sophisticated and knowledgeable the customers purchasing your goods or services are. The more sophisticated they are the less likely they would be to confuse conflicting trademarks. This is something that should be considered as you begin your new trademark application. If you are selling goods or services to professionals rather than the general public the sophistication may be considered high. If you are only selling to the general public, then it may be low. Ordinary purchasers are less likely to have as much specific knowledge in regards to what they are purchasing and a professional is more likely to discriminate between trademarks. The amount of attention a potential purchaser will pay when considering. Will they think about the various products available or just grab what they see first? Is this in an impulse purchase or would it involve careful consideration? These are all important questions when analyzing a conflicting mark this is for similar goods and services.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Intent and Trademarks

Your intentions can come into play when trademark infringement is being determined. What would be looked at is if you were actually intending to compete with the conflicting mark or if you were attempting to deceive possible customers. To determine this, things such as similarity of trade dress like packaging or colors and font used for the text can be analyzed. It is also always important to demonstrate that you were operating with good faith. Good faith can be shown by ensuring a complete and thorough search for conflicting marks was done, you did not believe there was a conflict, and that the mark you selected accurately reflects your goods or services. Bad faith may be found if styles and other elements were copied or there is no credible reason to adopt such a trademark. Before filing make sure you are operating with good faith and not trying to infringe on the rights of another trademark owner.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.