May 10, 2010

Businesses have been known do whatever it takes to protect their brand, including shut down another trademark that threatens to be the slightest bit akin to their own.

Historically individuals and companies fight to trademark even the silliest of names. The trademark for the almighty iPad, a name that most definitely does not conjure up images of the latest slick gadget from Apple, initially had issues with Fujitsu. Back in 2003, Fujitsu beat Steve Jobs to the iPad trademark, purchasing the name for use as a mobile phone.

This wasn't the company's first trademark dispute, either; the name Apple itself caused a multi-year battle with The Beatles’ record company.

Another extreme example is HBO's Sex and the City franchise, which has had its fair share of trademark issues. In one situation, a clever New York entrepreneur tried to start a health and fitness business called "Health and the City", but HBO told the owner to back off their trademark. "Health and the City", however, won that war.

1. Make sure your trademark isn’t already taken. Use LegalZoom or the US Patent and Trademark Office website to verify if anyone has it.

2. Register your domain name. It’s just a few bucks and it trumps all those cybersquatters who troll the Internet registering domain names similar to popular one to see for inflated sums of money.

3. Know your rights. Congress passed and former President Bill Clinton signed the Anti-Cybersquatting Consumer Protections Act into law in November 1999.

4. Bookmark ICANN for the "just in case" situations. The Internet Corporation for Assigned Names and Numbers (ICANN) authorizes a supervisor of domain name registrations and has an online adjudication system for settling domain name disputes if you find you need to take action.

5. You can still use a TM (trademark) or SM (service market) without registering with the USPTO. Registering the mark is what gives you protection under trademark law so that you can bring action in court if need be. 

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• IP Counsel OTC 1 year 5 months and 27 days ago

  

  Federal registration of your mark in the U.S. Patent and Trademark also provides several other important advantages, including:
  
  * constructive notice to the public of the registrant's claim of ownership of the mark;
  
  * a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  
  * the ability to bring an action concerning the mark in federal court and to sue for monetary damages;
  
  * the use of the U.S registration as a basis to obtain registration in foreign countries where competitors may be operating; and
  
  * the ability to file the U.S. registration with the U.S. Customs Service to prevent the importation of infringing foreign goods.
  
  Doug Gilmore
  Trademark Attorney
  doug@ipcounselotc.com