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Trademarks

I have received an email originating from China informing me that another company is attempting to register my own company’s name in Asia as a domain brand name. Should I be concerned?

No. This type of unsolicited email is part of a growing trend in which U.S. companies who already have an Internet presence via an existing registration of a top level domain (TLD), such as yourcompany.com, are advised that if they do not immediately act, another entity will register their domain name in Asia. This third party attempt to register may not even be true, but the solicitor is hoping that you panic and decide to go through with the Chinese registration, which involves a nominal fee for the actual registration, but probably an exorbitant service fee charged by the solicitor for their “services”. The solicitor is hoping that you are unaware of the differences between a TLD and a country code top level domain (ccTLD), such as yourcompany.cn, which represents China. Having a ccTLD is usually unnecessary since web users from anywhere in the world, even those in China, can still access your company’s website via your TLD registration.

What is a trademark and what do the ®, SM, and ™ symbols mean?

A trademark identifies the source of goods or services. Simply using a mark gives an owner certain rights to prevent others from using it or similar marks. ™ is used with trademarks and SM with service marks to notify the public of an owner’s rights in the mark. A mark used in interstate commerce may be registered with the U.S. Patent and Trademark Office if it is distinctive (not descriptive) and not confusingly similar to any marks. Registration entitles an owner to use ® to advise and warn the public of the owner’s rights in the mark and to more easily enforce his/her rights in the mark. Marks used in intrastate commerce may be registered in a state registry, but may only use ™.

I had some photographs taken of my children at a photography studio. Can I have additional prints made at my local drugstore or scan the photograph and make my own prints without the permission of the original photographer?

No. You purchased and own only the particular prints supplied to you. All rights to reproduce the photographs (the copyrights) are retained by the photographer, who is typically an independent contractor. Some photographers make this clear by placing a copyright notice (©, owner’s name, and possibly year) on the front or rear of the prints, but their copyright protection exists even if the copyright notice is missing. The federal copyright law gives strong protection to creators of works, and no transfers of copyrights are effective (except under certain employer/employee work-for-hire situations) unless they are made in writing.

Someone registered my trademark as his domain name (URL). What can I do?

There are two main paths to “taking your name back” from the cybersquatter: the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA). Both actions focus on the confusing similarity between your mark and the URL, the URL owner’s use of the site, and the URL owner’s bad faith. In both actions, the bad faith factors are similar and center on why the URL owner registered the name. The URL owner has various defenses to these factors, such as preexisting rights or fair use. Due to ACPA jurisdictional requirements, the UDRP is particularly useful in connection with foreign registrants. While both actions provide for URL transfer, money damages are only available under the ACPA.

Is it possible to obtain trademark rights for something other than the brand name of my product?

Yes. Typically, we think of trademarks as words, whether found in a dictionary or coined by trademark owners. However, some of the best known trademarks do not involve words or letters at all. Trademarks can take the form of distinctive graphical designs or logos, the fanciful use of colors, non-functional product configuration or packaging, or even sounds. While it is difficult, time-consuming and costly to create an association between these types of non-traditional trademarks and the source of those goods, they are often more valuable in the long run. Non-traditional trademarks are also extremely useful in symbolizing the goodwill associated with an owner’s brand.

I would like to register a federal trademark for a product or service that I am planning to market in the future. What are my options?

Trademark protection in the United States is use-based, meaning that only goods, which are sold or transported and services which are rendered in commerce are eligible for protection. However, U.S. Trademark law allows applicants with a good faith intent to use the mark in commerce for specific goods or services to file an “intent-to-use” application. If an intent-to-use application meets the statutory requirements for trademark protection, the United States Patent and Trademark Office will publish the mark in the Official Gazette for opposition. If no opposition is filed, a Notice of Allowance is issued. The Office requires that a Statement of Use be filed within 6 months of the date of the Notice of Allowance verifying that the mark is in use in commerce in connection with an actual product or service. This deadline can be extended to three years from the mailing date of the Notice of Allowance to obtain a Certificate of Registration (with payment of the proper extension fees). A cautionary note: it is improper to file an intent-to-use application for the sole purpose of “reserving” or “staking a claim” to a mark. You may be required to show proof of your good faith intent to use a mark in an opposition, cancellation, or civil action involving a Federal trademark, which is based upon a bona fide intent to use the mark.