Protect your brand in a digital world
If it feels like you face an uphill battle trying to protect your brand in today's high-speed and ever-expanding digital world, you're not alone. The pace created by our connected devices, social media feeds, tweets, apps, texts, clouds and crowd funding can be overwhelming. But don't fret! Brand owners, big and small, have many tools available to help keep things afloat in this tumultuous electronic era.
Federal trademark registration
While you do not have to own a federal registration in order to establish rights in a trademark, your rights without registration will be limited to the geographic area in which your mark is advertised and used. Registration of your mark provides substantial benefits, such as a presumption that your mark is protectable, and a nationwide scope of protection even if your mark is only used in a limited geographic area. Registration also puts others on notice of your mark, and after a certain number of years — typically five — the ability of others to challenge your rights in the mark becomes significantly limited. It is recommended that you consult with an experienced trademark attorney to assist you with the registration process.
Trademark watch service
Consider complementing your federal trademark protection with a trademark watch service, which monitors the U.S. Trademark Office for applications that are similar or identical to your mark. You may have a basis to file an opposition against the offending application.
Online monitoring tools
Set up a Google alert on your brand name. It's a free and easy way to find others who use your brand on their websites. You can then take steps to request the removal of any infringing uses of your mark.
Use domain name search tools such as www.domaintools.com and www.whois.net to identify potential acts of cybersquatting, i.e., someone using an identical or confusingly similar mark as part of a domain name with bad faith intent to profit. If you find a domain name that contains your mark or a confusingly similar term (such as a typo), consider whether a complaint is appropriate under the Uniform Domain Name Dispute Resolution Policy or Uniform Rapid Suspension System.
Bear in mind that dozens of new top-level domains are now coming online, presenting new opportunities for cybersquatting (e.g., yourbrand.clothing, yourbrand.guru, yourbrand.menu, yourbrand.buzz, yourbrand.email, etc.). Talk with your trademark counsel about using the Trademark Clearinghouse to further protect your brand from cybersquatting.
Twitter and Facebook
Visit Twitter regularly and search for your mark. Determine if anyone is using your mark as a Twitter handle/username (e.g., @yourmark), or in the text of any tweets. Do the same on Facebook, and search for any usernames containing your mark. You can review Twitter's and Facebook's trademark policies online for further information and instructions on how to submit a request to take down infringing content and deactivate infringing usernames. Bear in mind, however, that not every mention of or reference to your mark online is an infringement of your mark, and there may be implications for submitting an improper take-down request. If you aren't comfortable with the law in this area, it's a good idea to talk to legal counsel.
Search engine keywords
You should occasionally conduct a search for your brand on Google, Yahoo! and Bing to determine if others are using your mark in the text of any sponsored search engine advertisements. If you locate any objectionable uses, review the website's policy on submitting complaints and you should find it relatively easy to navigate and remove any ads containing your marks. Note, however, that the law on use of others' marks as keywords behind the scenes to merely trigger an advertisement for a competing product or service is still somewhat uncertain, and some courts have held that such activity does not necessarily constitute trademark infringement by the competing advertiser.
Attorney Jonathan M. Gelchinsky is a partner in Pierce Atwood's intellectual property and technology practice group. He can be reached at jgelchinsky@pierceatwood.com.
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