U.S. and International Trademark Marking: Use TM, SM, ®…or None of the Above?

Trademark marking generally refers to the use of the trademark designations “TM,” “SM” and ®, which are commonly accepted designations for identifying trademarks and indicating their ownership.

When brand owners use their trademarks within the U.S. – the issue of whether to use the trademark symbols TM, SM or ® is relatively straightforward.  The general rule is to use the designation “TM” for (federally) unregistered trademarks for products (Trademark™) and “SM” for (federally) unregistered marks for services.  Once a trademark registers with the United States Patent and Trademark Office (“USPTO”), however, the TM or SM may be replaced with the coveted “R in a circle” -- ®.

Once trademarks register with the USPTO and brand owners begin using the registration symbol “®” next to their marks on packaging, product sheets and/or marketing materials, what should brand owners do with respect to using the “®” symbol in countries where their marks are not registered? 

When U.S. registered trademarks are used in countries where the marks are not registered, the issue of trademark marking can be complicated, since many countries have their own trademark marking laws.  Understanding local laws and legal issues that may arise with respect to trademark marking is a first step to understanding and minimizing the potential risks of violating certain country laws and requirements. 

It seems clear that most countries recognize the trademark registration symbol ® - and common law trademark symbols SM and TM – in practice.  Their use, however, are typically optional and/or have no recognized legal effect as to protection of trademark rights in some countries.  Although the ® symbol has become well recognized, it is by no means universally accepted.  For instance, “Marque Deposee” is preferred in some French language territories and “Marca Registrada” or “M.R.” is preferred in certain Spanish or Portuguese speaking territories. 

Certain country laws including, China, Chile, Costa Rica and Indonesia, require the use of proper registration notice in order to maintain a registration and trademark rights.  Furthermore, other countries, including the United States, Bolivia, Denmark, Philippines, and European Union, require proper use of the registration symbol ® to recover damages and attorneys’ fees for willful infringement, while some other countries require proper use to protect against loss of trademark rights (such as the mark becoming generic). 

However, some local laws make it unlawful to claim trademark registration status when a mark is not registered in that country.  Countries, including Germany, China, Ireland, Italy, New Zealand, Pakistan and Peru, may actually impose penalties for mismarking of trademarks, such as fines, damages, injunctions and/or imprisonment. 

There are also a few countries that may impose penalties for use of the symbols “TM” and/or “SM” if consumers would perceive use of those designations as an indication that the mark is actually “registered” in that country; France appears to be one of those countries.

The dilemma for brand owners that have registered their marks in only some of the  countries in which they conduct business is that in order to conform to local trademark marking law requirements, they may need to develop tailored marketing and packaging materials to avoid violating those laws.  The main problems associated with such tailoring of marketing and packaging materials are - of course - costs and time.

Based upon the differences in local trademark laws, developing a “one-size fits all” trademark marking strategy is likely to prove difficult, as one strategy might violate - to a certain extent  - certain local laws or result in loss of certain trademark rights against an infringer, while others may not.  Adopting a global trademark marking strategy that is not tailored to each specific jurisdiction, however, should be one that seeks to minimize potential risks.  Although it is preferable for brand owners to tailor their trademark marking policies to conform to local law requirements, for most companies, however, business realities, such as cost and time, result in the implementation of strategies designed to minimize cost, time and risk. 

For discussion about the benefits of securing U.S. federal trademark registration and about global trademark protection considerations, please review my blog posts here, here and here.

 

Blogging Hiatus Concludes for the Trademark Titan Blog

Okay…so who said that finding time to blog is easy?  For the past year and a half finding that time for me has been nearly impossible due to the demands of my practice and not to mention the time taken to foster my 9-year old prodigy son with respect to his academics and his god-given talent for baseball and, of course, hockey; he was born in Maine… enough said. (What’s up with the Boston Bruins anyway?  Can we find some offense, please!?) 

With the addition of a new paralegal and new associates to support my practice and with the travel hockey season (and the construction of a hockey training room with synthetic ice in my basement) behind us! I am hopeful that my blogging hiatus has finally come to an end…at least for the foreseeable future…and at least until that special time of year…travel hockey season!

-Cheers

The .XXX gTLD Sunrise Period Has Set For Brand Owners: Should Trademark Owners That Opted Not To Participate Be Concerned?

Now that the Sunrise period has set for brand owners to block their respective trademarks from being used in .XXX domain names, what’s next for brand owners that opted not to participate in the Sunrise period and how concerned should they be?

The Sunrise period for members and non-members of the adult community that have verifiable trademark rights or pre-existing exact-match domain names has closed. The next phase for registering .XXX domain names is the Landrush phase reserved only for those members of the adult community. Should there be competing reservations during that phase, those domain names will be auctioned to the highest bidder. That period is set to open on November 8 and close on November 25, 2011. The last and on-going phase will be the General Availability phase, which is set to open on December 6, 2011.

For those brand owners that participated in the Sunrise period to block their respective trademarks, it’s important to note that they were only eligible for blocking domain names that correspond to the exact spelling of their trademarks or pre-existing domain names. Should they decide to reserve defensive domain names for common misspellings of their respective marks – to keep them away from typo-squatters - they must do so during the General Availability phase.

For the past several years the intellectual property trademark attorney community and many brand owners have “sounded the alarm” with respect to the Internet Corporation for Assigned Names and Numbers’ ("ICANN") proposed plan to launch potentially hundreds of new generic top level domain names (“gTLD”), such as .garden, .books, .cars (and already approved .XXX), because, they argue, such launch would be catastrophic for brand owners since they would need to spend thousands and possibly hundreds of thousands of dollars on useless defensive domain name reservations and enforcement actions against squatters.

Recently, and interestingly, however, I have seen comments by some trademark attorneys that suggest that there may now be an emerging more realistic view on that issue. Those comments concern the new .XXX gTLD and suggest to me that the trademark attorney IP community view on gTLDs might be maturing. Those recent comments concern beliefs that the purpose of domain name sunrise periods is to “bilk” / “fleece” brand owners out of their money and there is no evidence that cybersquatters have any “real” interest in reserving new gTLDs – since those corresponding sites tend to receive less traffic than sites corresponding to .com domain names. That potential “maturing” view may be the result of new business realities and/or an appreciation for taking a business practical approach on the issue and not do what some people say many lawyers do best, “over lawyer.”

If there is growing sentiment among the trademark community that reserving or blocking .XXX domain names that correspond with brand owners’ trademarks may not be worth the expense (unless the marks are famous and/or coined marks or may have a certain connotation within the adult industry), perhaps the trademark community should not be overly concerned with reserving defensive domain names for the anticipated new gTLDs – especially those that would not correspond to a brand owner’s industry. I would certainly think that, for example, an automotive company would be more concerned with the .XXX gTLD than .garden or .pets.

I have blogged about the imminent deluge of new gTLDs, including HERE, HERE and HERE, and how that may affect the average brand owner. In one of those posts, I wrote:

In my opinion, the concerns raised by brand owners appear to be limited mostly to multi-national, well-known brands that would be most susceptible to domain name squatting issues. Small to medium-sized companies and many non-consumer products companies probably have little to worry about should ICANN’s proposed plan be implemented. All companies should, however, be keeping an eye on the process as it unfolds and, if implemented, be sure to monitor for misuses of their brand names in the new online “wild wild west.”

In another post, I wrote the following:

I cannot recall the last time that I had a client call or complain about a cybersquatter using its trademark or phonetically similar trademark with one of the more obscure gTLDs (i.e., .travel, .jobs). Why? My thoughts are that there is likely not any reason for the average consumer to visit most gTLDs. Would the average consumer think to type in www.xerox.travel when searching for Xerox’s web site? Of course not. If that's the case, then why would cybersquatters care to reserve domain names that don't generate web traffic and revenue?

I have also reported the following:

Minds + Machines' study reports that “Overall, the claims of brand owners that they will be forced to spend significant amounts of money performing defensive registrations in the proposed new gTLDs are not supported by the historical data, which shows that they largely do not undertake defensive registrations in new gTLDs, nor is there any extensive cybersquatting in new gTLDs.”

The Domain Name Wire™ recently reported that the ICM Registry has already received over 42,000 applications for .XXX domain names and has pocketed over 8 million dollars – with the General Availability phase yet to open. Domain Name Wire also reports that:

The sunrise applications are five times as many as ICM Registry anticipated. If trademark holders are like many other businesses, we can expect a flurry of applications before the sunrise period ends this Friday so the numbers will grow.

Domain Name Wire author also comments that:

.XXX has benefited from some savvy (and expensive) marketing, lots of free press, and intellectual property lawyers selling fear to their clients.

I have provided a list of six actions that brand should consider to take now to ready themselves for the potential deluge of hundreds (and some argue thousands) of new gTLDs in my post HERE.

So what will it be for most brand owners? Take the business practical approach and defensively block and reserve only those gTLD names that make business sense or continue to do what most have done over the past decade plus, be “over-lawyered”?

Uniform Domain-Name Dispute-Resolution Policy (UDRP): To Catch a Cybersquatter

An issue that regularly arises for many brand owners is whether third party use of a certain domain name infringes their trademark rights. The analysis for each case of alleged trademark infringement may vary depending upon the facts. While some cases give rise to clear trademark infringement, some cases are not that clear and others verge on that fine line of “reverse domain name hijacking.”

Trademark owners concerned with third party use of their trademarks in domain names may utilize - what is known as - the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). The UDRP – as opposed to litigation – is a quick and economical procedure for seeking transfer of an “infringing” domain name. In many instances, respondents in UDRP proceedings tend to be domain name speculators and/or cybersquatters.

Domain name speculation is the practice of reserving or purchasing domain names for the purpose of later selling them for profit. Selling – or flipping – domain names are akin to what we saw in the real estate market several years ago. Those electronic “real estate” owners that speculate in domain names are known as “Domainers,” many of which have successfully built businesses around buying and selling domain names.

Domain name speculation should not be confused with cybersquatting. Domain name speculation is the practice of identifying generic or descriptive (not trademarks) domain names and utilizing them to develop web site traffic for purposes of generating revenue from what is known as “pay-per-click” advertising. Domain names may also be re-sold or “flipped” for profit. Much like real estate investment and speculation, Domainers evaluate electronic real estate and decide, based upon available information, what the “property” is worth. The goal: make a profit. No harm, no foul -- until Domainers use trademarks in domain names in violation of a trademark owner’s rights.

Cybersquatters on the other hand reserve or purchase domain names that use someone’s trademark. A cybersquatter may also engage in - what is known as - “typo-squatting” by reserving domain names of commonly misspelled trademarks for the purpose of capturing misdirected Internet traffic when a user misspells a trademark (www.Walmrt.com). The definition of a cybersquatter is one that registers, traffics in, or uses a trademark of another in a domain name with bad faith intent to profit from the goodwill belonging to that trademark owner.

When cybersquatters misuse trademarks in domain names, trademark owners may take action by filing UDRP proceedings. Complainants in UDRP proceedings must establish the following three elements to successfully compel transfer of a disputed domain name:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

2. The registrant does not have any rights or legitimate interests in the subject domain name; and

3. The registrant registered the domain name and is using it in "bad faith."
Below are a few considerations when contemplating the use of the UDRP process or determining whether your company has rights in a disputed domain name:

1. May trademark owners of non-registered, common law trademarks utilize the UDRP process and successfully compel transfer of infringing domain names?

Yes. As long as complainants establish that consumers have come to recognize their marks as being distinctive identifiers associated with them or with their goods and/or services, they may successfully assert common law trademark rights and potentially compel transfer of subject domain names – even if they do not own a registered trademark.

2. Do trademark licensees have rights for purposes of utilizing the UDRP process?

Yes. Licensees are generally considered to have rights in trademarks under the UDRP. Licensees must, however, establish their licensee status and/or provide evidence that the trademark owner has authorized the filing of the UDRP complaint.

3. Is a domain name that incorporates a trademark and a descriptive or generic term (as viewed in relation with complainant’s products and/or services) still considered “confusingly similar” to the complainant’s mark?

Generally yes. The addition of descriptive or generic terms to the complainant’s trademark would normally be regarded as being confusingly similar and thus sufficient to find confusing similarity under the first prong of the UDRP test.

4. Are domain names that use misspellings of trademarks (i.e., typosquatting) considered confusingly similar to complainants’ trademarks?

Generally yes. As long as the misspelling is obvious or common, the misspelled domain name will generally be found to be confusingly similar to a complainant’s mark.

5. Can resellers or distributors of trademarked products have legitimate rights with respect to securing domain names that incorporate those products’ trademarks?

Maybe. If distributors or resellers use the subject domain name with the actual sale of the branded products and services, use the subject domain name for only the corresponding branded products and accurately and prominently disclose its relationship with the trademark owner, they may be regarded as having a bona fide interest in a subject domain name.

6. Can there be a finding of bad faith when a domain name has not been put to use and the domain name holder has not attempted to sell a subject domain to a brand owner?

Generally yes. Some panels have found that the act of holding domain names for years without putting them to a bona fide use - and even when there has not been an attempt to sell the subject domain name to a brand owner – does not preclude a finding of bad faith.

For read more about this topic, you can read some of my previous blog posts here, here, here and here.

Authors: A Title Of A Single Book (Works) Is Not Registrable As A Trademark At The U.S. Patent And Trademark Office - Or Is It?

While I was in San Francisco in May for the International Trademark Association’s annual conference, this issue raised its ugly head…again. So I thought it would make for a timely post - at least for this author and possibly others.  I also needed an excuse to use some of my San Francisco photographs.

An issue that comes up from time to time in my practice and one that I handled regularly when I was a trademark attorney with the United States Patent and Trademark Office (“USPTO”) is that of authors seeking trademark protection for titles of books or similar works. Seeking federal trademark protection for book titles or a portion of a book title (known sometimes as “phantom marks”) may be an import issue and branding strategy for some authors, especially if they would like to prevent others from using the same or similar title on competing books. Unfortunately for authors, however, the USPTO does not issue trademark registrations for a book title of a single work.

Section 1202.08 of the Trademark Manual of Examining Procedure (“TMEP”) (the trademark examination guide followed by trademark examiners at the USPTO) states the following (with emphasis added):

1202.08 Title of a Single Creative Work

The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990) (INSTANT KEYBOARD, as used on music instruction books, found unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (title of single phonograph record, as distinguished from a series, does not function as mark).

Authors, and even some practitioners not well versed in trademark law, are blindsided with this harsh reality when they receive Office actions from the USPTO refusing registration of their respective “trademarks” – or book titles. First reaction may be a sense of panic, since it may now appear that all of that hard work writing the book (believe me, I know…), obtaining the domain name corresponding to the title of the book and working with a somewhat disagreeable-at-times-publisher has not resulted in proprietary rights in the title – or a portion thereof - of my book! Second reaction may be to ask the question “what do I do now…!?” The frequent answer from USPTO trademark examining attorneys handling these cases - and even perhaps from legal counsel – is “write a second book!” Once you have written your second book, they say, (oh that’s easier said than done), you would have a book series, which may entitle you to trademark registration protection for your title. But what should be done in the meantime to keep others from using the same or similar title?

Ok. So, here you are. Not in a place you wanted to be. Was your situation avoidable? Doesn’t looks like it, right? The law is the law. One book, one title = no trademark registration. Series of books, one title = trademark registration. Wrong. Understanding the intricacies of trademark law and the TMEP before filing your trademark application could have avoided the rejection to registration.

The preparation and filing of a trademark application itself is only the administerial piece to the trademark registration puzzle, not the legal piece. Most of the work and strategy takes place before a trademark application is prepared and filed. Remember, as I have said before, there are attorneys that handle trademark cases and then there are trademark attorneys. Enough said. Trademark applicants should anticipate issues that may arise during trademark application prosecution and be equipped with a strategic “road map” for overcoming USPTO objections. Reacting to USPTO Office actions is a loser’s game. Anticipating those objections is the best way to ensure that brand owners have the best chances for successfully registering their trademarks.

Navigating this "Slippery Slope"

For authors seeking protection for a title of a single book, and assuming that it contains at least one distinctive portion or term, meaning that the entire book title does not simply describe the subject matter of the book (for information on that point, check out a couple of my blog posts here and here), they should work with the publisher to create a design logo (think of the logo for the publisher Penguin Group) that includes the book title. Once that logo has been approved by trademark counsel, authors should use that logo on the book itself, which would contain the title of the book. As long as the logo is used in an acceptable trademark manner, the logo – which includes the title of the book - should be registrable.

There are also other strategies for protecting (registering) a portion of a book title. That is especially important if an author intends to create a series of books surrounding a certain theme and wishes to modify the title slightly with each new book. Authors should also consider other important trademark (and copyright) aspects while creating their brands around their books and creative works. Putting all of the pieces together before a book publishes is the best strategy for building a successful brand and securing your intellectual property rights for the published work(s).