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Did you know that color, sound, scent, and hashtags can be protected by trademarks? 

Traditionally, trademarks are words or symbols used to identify the source of a product or service. Most trademarks are word marks such as COCA-COLA; or design marks/logos such as ; and slogans, such as Coca-Cola’s “It’s The Real Thing.”

However, the list of things that can be registered as trademarks under the Lanham Act is actually very broad. There are practically no limitations to the subject matter of registrable marks, so long as the mark is capable of acting as an identifier of source, whether because it is inherently distinctive, or it has acquired distinctiveness and the mark is not functional.

Here is a list of non-traditional trademarks: 

Color Mark

The registrability of a color mark depends on the manner in which the proposed color mark is used. Color takes on the characteristics of the object or surface to which it is applied, and the commercial impression of color will change accordingly. Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness.

Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. However, color can function as a mark if it is used in the manner of a trademark or service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. 

Sound and Scent Mark 

A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they “assume a definite shape or arrangement” and “create in the listener’s mind an association of the sound” with a good or service. Some famous sound trademarks include the iconic ticking of 60 Minutes’ stopwatch that CBS trademarked and the sound of a lightsaber, FYI, is described as “an oscillating humming buzz created by combining feedback from a microphone with a projector motor sound.”

Some scents that are protected by trademarks include the scent of Play-Doh, which is described as “a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough;” and the “flowery musk scent” in verizon stores.

A trademark applicant that wishes to register a sound or a scent trademark is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter.  For these types of marks, the applicant must submit a detailed description of the mark.

Hashtag Mark

A “hashtag” is a form of metadata consisting of a word or phrase prefixed with the symbol “#”. Hashtags are often used on social networking sites to identify or facilitate a search for a keyword or topic of interest. 

As hashtags became increasingly more popular on social media, in 2013 the United States Patent and Trademark Office (USPTO) recognized hashtags as registrable trademarks “only if [the mark] functions as an identifier of the source of the applicant’s goods or services.” The addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Some examples of hashtag mark the USPTO has granted registration include: 

#EVERYDAYMADEWELL for “online retail store and retail store services in the fields of clothing, footwear, bags, sunglasses, jewelry, watches, and fashion accessories”

#HOWDOYOUKFC for “restaurant services

#THESELFIE for “photography and videography equipment, namely, remote shutter releases

Unique challenges applicants of non-traditional trademarks face

Federal registration of trademarks generally confers certain benefits to the trademark owner However, non-traditional trademarks face unique challenges that traditional trademarks don’t face in registering with the USPTO. Non-traditional trademarks can take longer and cost more to register and in addition to the distinctiveness and non-functionality hurdles, challenges exist in clearing the marks for registration due to the complexity involved in searching Non-traditional trademarks on TESS; fulfilling technical requirements for registration involved in providing the appropriate drawing and specimens for marks that are not easily depicted on paper; and the unique unpredictability due to a lack of successful precedents to provide guidance. Even if it is registered, a non-traditional trademark may be difficult to enforce. Furthermore, the inherent challenges in searching non-traditional marks make it hard to monitor infringement of the mark. 

If you need help with your non-traditional trademark, contact us today to discuss your trademark protection strategies with an experienced trademark practitioner.

Answer: Only if you care about protecting your creative work.

We realize we set you up with a leading question, but the reality is, based on a recent Supreme Court ruling, it is more important than ever before to file for a copyright registration if you want to protect your creative work.

On March 4, 2019, the Supreme Court settled a split among U.S. Courts of Appeals regarding whether a copyright owner can sue for infringement before the Copyright Office grants registration in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC.

This decision underscores the importance for copyright owners who expect to enforce their rights through litigation take early action to register their works with the Copyright Office before any claim arises.

The Copyright Act of 1976 gives copyright protection to “original works of authorship fixed in any tangible medium of expression,” and copyrights vest as soon as the original work was created and reduces to a tangible medium (such as put in writing, saved on a hard drive, recorded on tape, etc.).

Copyright owners have the exclusive right to (a) reproduce their original work; (b) distribute such work; (c) publicly display or perform the original work, and (d) create derivative works of the original work. And they can prevent other people from exercising those rights during the duration of the copyright.

However, 17 U.S.C. §411(a) conditions that “no civil action for infringement of the copyright in any United States work shall be instituted until…registration of the copyright claim has been made in accordance with this title.” In plain English, this means that if the original work has not yet been copyrighted, the owner cannot sue for copyright infringement.

Fourth Estate Public Benefit Corporation (“Fourth Estate”), a news organization, sued Wall-Street.com and its owner (“Wall-Street”) for copyright infringement after Wall-Street failed to remove Fourth Estate’s news articles from its website despite having canceled the parties’ license agreement. Fourth Estate had filed applications to register the articles with the U.S. Copyright Office. Yet, the Register of Copyrights had not acted on those applications before Fourth Estate filed the suit.

The parties disputed the meaning of “registration” in §411(a). Fourth Estate argued but failed to convince both the U.S. District Court and the Eleventh Circuit court, that “registration” for the purposes of §411(a) occurs when a copyright owner submits the application, materials, and payment to the Copyright Office. Both lower courts held that registration of copyright hasn’t been made until the Copyright Office acts. Justice Ruth Bader Ginsburg delivered the opinion for a unanimous Supreme Court that affirmed the lower courts’ decisions, holding that “registration” in §411(a) “refers to the Copyright Office’s act of granting registration, not to the copyright claimant’s request for registration.”

However, the statute provides several exceptions to the general rule that registration occurs, and a copyright claimant may commence an infringement suit when the Copyright Office registers the copyright. For example, owners of material susceptible to pre-distribution infringement, such as movies or musical compositions, can apply for preregistration, a limited review of the application after which the copyright owner may commence an infringement suit.

Thus, this case clarifies that generally a copyright owner only may bring an infringement suit after the Copyright Office grants registration. If authors and content creators do not register their works early, they may not be able to enforce their rights in courts right away when infringement takes place.

By Judy Yen, Loyola Law Student and Law Clerk with Carbon Law Group

When it comes to building your brand, there is some confusion around what it takes to establish trademark rights. Clients ask, is filing a federal trademark application enough to protect me? What about posting on social media?

These are great questions often without clear answers.

To understand how to best protect your trademark rights, it is important to understand the purpose of trademark laws in the first place. Trademark law, codified under the Lanham Act, is fundamentally a consumer protection statute. It was created to protect consumers from companies that try to steal the goodwill of popular brands to sell their products or services (think of those guys selling purses in NYC with interchangeable brand names). Trademarks are used as a source identifier. They allow consumers to differentiate between certain types of goods and their sources.

When it comes to establishing your brand, trademark rights are fundamentally based on the first to use the mark. That means, filing an application alone generally isn’t sufficient to protect your rights to a mark against someone who may have used the name earlier than you. Establishing legitimate use is critical.

But, what is legitimate use, you ask? Great question.

Legitimate use of a trademark that amounts to commercial use that would cause the public to associate your mark with your goods or services. It could be social media posts, a website, products, or apparel. Legitimate use also varies based on what you are selling. If you are selling goods, generally, you need to show the use on the good in a way that shows your goods are in interstate commerce and can be purchased. For services, proper use amounts to advertising the services, among other types of use.

When it comes to establishing priority over another company regarding a possibly infringing mark, the party that can show the earliest legitimate use of the name along with the strongest engagement with the consuming public will most likely win a dispute. A federal trademark application is important to protect your rights and establish your rights federally against later users in other locations. But to protect your rights locally and early, make legitimate use as early as possible.

Key Takeaway: when it comes to establishing priority, make sure you are gettings your goods or services in commerce early and effectively.

Every year, about ten to eleven thousand trademark attorneys and service providers converge on a major city to network, exchange ideas, and review the previous years’ developments in the world of trademarks. It is an exciting time for a trademark practitioner.
 
I had the good fortune of attending this years’ INTA convention in Seattle, Washington. It was four days of shaking hands, meeting new colleagues, and enjoying the several social events taking place each evening. I must say, of the various specialties in law, trademark lawyers know how to have a good time.
 
Every INTA is different for a variety of reasons. The location makes a huge impact on how you will attend the event. This year, given the conference was on the same coast as me, I had little reason not to attend. In the past, I have made it a point to attend many panel discussions and “lunch and learns,” where we break out into small groups to discuss timely topics in trademark law such as “Protecting Well-Known Marks,” “Protecting Domain Names,” and more. The most popular panel, however, takes place on the last day of the conference and is hosted by Ted Davis and John Welch, all-stars in the world of trademarks. Mr. Welch always makes his review entertaining, with the crowd in stitches many times throughout his presentation. Some of the key takeaways from this year were:
 
  • The number of 2(d) likelihood of confusion reversals granted by the Trademark Trial and Appeal Board was minuscule
  • Perhaps the most discussed decision was the Matal v Tam case which ruled that the prohibition under section 2(a) of the Lanham Act of the federal registration of potentially disparaging trademarks and service marks violated the Free Speech Clause of the First Amendment because the viewpoint was discriminatory and therefore subject to strict scrutiny.
  • The TTAB affirmed its refusal to register KLEER ADHESIVES for adhesives and mortar on the basis that the applicant’s goods were not transparent
  • In a case involving Dr. Dre, or Andre Young, the TTAB dismissed his opposition to Dr. Drai, an OBGYN and Media Personality citing there was no evidence of confusion between the marks and that the goods and services were unique enough to not cause confusion in the marketplace
The above highlights are but a few of the important decisions that change the way trademark practitioners must view and evaluate trademarks going forward.
 
Beyond a great review of current trademark decisions and meeting wonderful colleagues, we had a great time taking in the beautiful sights of Seattle.
 
For more information on how to create a strong brand and ensure it is protected, please email us at [email protected] or schedule an appointment to chat today!
 
P.S. I cannot forget to thank the awesome team at AltLegal for hosting me this year. If you are looking for a new docketing system for your practice, I highly recommend them. Yes, full disclosure, I am a recent investor, but I have been a big fan of what they are doing long before I decided to invest.

8.-Products-and-technology

My business holds a federally registered trademark, but someone else owns the “.com” domain containing my mark. Sound familiar to you or a “friend”? Domain names are arguably the most sought-after online property because of the ease and quickness by which any web user can acquire a domain name from popular hosts like GoDaddy. The common sense approach to this problem would be to search for the owner of the domain and reach out to them directly, but the likelihood of your receiving any response is small – with any action taken being even smaller. Fortunately, after having successfully filed hundreds of trademarks for our diverse group of clients, we have been able to identify and utilize effective means to obtain a domain name held by a “cybersquatter,” including the governing laws providing the grounds for our clients to obtain their rightful intellectual property.

 

What is “cybersquatting”?

Cybersquatting is the increasingly common practice employed by opportunistic individuals and entities of purchasing domain names in the hope of staking their claim to a popular company name idea or title. More often than not, attempting to access the domain through a web browser yields no result primarily because there was never any intent to utilize the domain for any commercial purpose. Fortunately, for federal trademark[1] owners and small businesses finding themselves having to pay lots of money for the domain name best associated with their mark, there are two routes that people or companies affected may take to combat this problem: (i) the Anticybersquatting Consumer Protection Act (ACPA)[2], and (ii) through the Uniform Domain Name Dispute Resolution Policy (UDRP) provided by ICANN[3].

 

(i) Understanding the Anticybersquatting Consumer Protection Act (ACPA)

Under the ACPA, cybersquatting is the “practice of registering, using, or selling a domain name containing language that is identical or similar to a current trademark owner’s mark with a bad faith intent to profit from the domain name.” Critical to this definition are the factors a court may use to determine if a domain name transaction is conducted “in bad faith”, counting for and against.

A domain name transaction is unlikely to be considered in bad faith if:

  1. the registrant herself has any trademark or IP rights in the name;
  2. the domain name contains the legal or nick- name of the registrant;
  3. the registrant used the domain name in connection with the good faith offering of goods and/or services; or
  4. there is lawful non-commercial or fair use of the mark in a website under the domain name.

On the other hand, a domain name transaction is likely to be considered in bad faith if:

  1. there is intent to divert a site that could harm the trademark owner’s goodwill-either for commercial gain or with intent to tarnish by creating likelihood of confusion as to source, sponsorship or affiliation, or endorsement of the site;
  2. there is an offer to sell the domain name without having used, nor having an intent to use, the domain in the bona fide offering of goods or services, or there exists a prior pattern of such conduct;
  3. the registrant intentionally provides misleading contact information in the domain name registration application, or has a history of such conduct;
  4. there exists a warehousing of multiple domain names that appear to be identical or confusingly similar to distinctive marks or dilutive of famous marks, without regard to the goods or services being provided; or
  5. the mark (not the domain owner’s mark) is particularly distinctive or famous.

Some of these factors are actionable under the Lanham Act, but that a softer qualification for purchasing or registering a domain is that there be a bona fide intent to launch goods, services, or a business – even if those plans never come to fruition. However, per subpoint D above, if a domain registrant sits on a mark that he or she knows to be famous and tied to another’s validly registered trademark, a claim for “bad faith” becomes stronger.

 

(ii) Understanding the Uniform Dispute Resolution Process (UDRP)

The UDRP administered by ICANN currently applies to the top level domains (TLDs) of .biz, .com, .info, .org, .net, and a few country code domains like .ac, and .mx. The definition of cybersquatting provided by ICANN is a “bad faith registration of another’s trademark in a domain name,” so traditional trademark rules related to unregistered “common law” and federally registered trademarks apply.

One of the big differences between the UDRP and ACPA is that the entire dispute resolution proceeding is conducted online, is generally resolved within 60 calendar days of the first filing, and is mandatory for TLDs contracted with ICANN (including “.com”). Once you or your counsel determine that a UDRP action is appropriate or necessary depending on the responsiveness of the current domain owner, the process begins by filing a complaint and sending a copy to the respondent (the current domain holder). The UDRP is generally lauded for its effective and timely dispute resolution process, and we have found that our trademark clients value its efficacy.

 

For more information and personalized guidance based on your circumstances, or if you are ready to commence an action through the UDRP, please speak with our technology attorneys by emailing us at [email protected] or call our office at (323) 543-4453 to schedule a consultation.


[1] Note that unregistered or “common law trademark” holders may be able to assert similar claims, but that their rights are limited to the outcome of dispute resolution (with little basis in codified federal law).

[2] 15 U.S.C. §1125(d) under the Lanham Act

[3] For more information, see this link.

As any entrepreneur or business owner knows, building a website or online storefront to advertise, promote, or sell goods or services can be a detailed, time-consuming, and expensive process. The goal of attracting even the most discerning consumer on the internet makes those extra hours and expense worth it, especially when general marketing and branding goals include repeated visits, contact, and impressions to finally engage a customer or user. All successful businesses similarly understand that protecting the logos, content, design, functionality and, most importantly, the integrity of the website. An attorney-drafted “Terms of Use” or “User Terms and Conditions” page is extremely important because it provides, among other benefits, a mechanism 1) to prevent competitor copying or intellectual property infringement, 2) to legally bind users of the website, 3) to limit the business liability in certain contexts, and 4) to comply with federal law.

1. Prevent intellectual property infringement.

Valuable dollars and hours are spent building a website for goods or services, but the failure to secure or enforce proprietary intellectual property rules can nullify all of that value. A valid Terms of Use will enumerate the myriad of intellectual property present on the business website, and will make it clear to all users (guests or registrants) that the copying, stealing, scraping, or unauthorized use of proprietary information is grounds for termination of any user account, a claim for breach of contract, and claims of copyright, trademark, or trade secret infringement, and any other remedy available at law to the business. While the deterrent impact of a Terms of Use may be debatable, failing to have a Terms of Use removes any enforcement mechanism for a business owner against a rogue user.

2. Legally bind users of the website.

Having a Terms of Use section on the business website is not required by law in the United States, but consider that it has been (and may solely be) a binding agreement enforceable by a court between any user or abuser on the internet and the business (even if no transaction of money for goods or services occurs). Because the website is the property of the business, businesses may set user standards for use of the site as well as the penalties for failing to comply, including to terminate a user account or ban future use. Having this ability is extremely important for any online business to ensure smooth user engagement and process management.

3. Limit the business liability.

A legally binding contract may include disclaimers against liability – and in certain cases, even where liability would normally be imputed by law. This includes common issue situations like outdated or incorrect marketing materials (especially those quoting prices or fees), governing the interactions between users (especially in the context of harassers or trolls), and updating the features or functionality of applications or other products. Note that by failing to disclaim against liability in these scenarios, a business may become an easy target for traditional lawsuits over small errors.

4. Compliance with privacy laws and the “privacy policy.”

If the site collects personal data that may identify an individual (e.g., a user’s email address, first or last name, physical address, or social security information), legislation like the Americans with Disability Act (ADA), Children’s Online Protection Act (CIPA), and more mandate privacy policies according to these Federal Trade Commission guidelines.

From our experience, while every business and proposition is unique, businesses should consider the following broad issues when either self-drafting or having an attorney draft the Terms of Use:

  • Privacy policy (if collecting personally identifying information)
  • How the user accepts the Terms of Use
  • Account security
  • Intellectual property rights (trademarks, copyrights, licenses)
  • User-posted content and content standards
  • Infringement
  • Social media integration

For more information or guidance on your online business practices, or if you are ready to prepare a terms of use and privacy policy, please call our office at (323) 543-4453 to schedule a consultation and speak with our savvy attorneys.

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