Trademark Mistakes: 5 Common Ways You May Be Losing Value

Whether you are just starting out or have a large portfolio of protected names, logos, and slogans you know the value of protecting your brand. However, it is common for businesses to overlook their intellectual property. When it comes to trademark registration, there are ways to get the most out of your IP strategy. Below are some of the most common trademark mistakes that may be costing your business:

Top 5 Trademark Mistakes

1. Not Choosing a Strong Mark:

Picking a weak mark that is descriptive or generic can result in consumer confusion and be difficult or impossible to register with the U.S. Trademark Office. A weak mark can set you up for a lifetime of headaches trying to protect and enforce your mark. However, a strong mark can make you stand out in the marketplace, and it is often easier for owners to register and enforce their rights in a strong mark. We can help you choose a distinctive mark that will set your business up for success!

2. Failing to Pre-Clear Your Trademark:

Pre-clearance is important! We can conduct a preclearance search for two reasons. First, it helps you determine the full scope of rights available to you for a mark. It also ensures that your mark does not infringe any third-party rights. According to the U.S. Trademark Office’s data from 2019, nearly 83% of trademark applications received an Office Action.  Having an attorney guide you through an initial preclearance process can reduce the likelihood of your trademark application receiving an objection.  Understanding the potential risk surrounding your use of a particular mark can decrease the chance of another trademark owner initiating an infringement action against you as well. As the saying goes, an ounce of prevention is worth a pound of cure!

3. Not Thinking About Future Expansion:

It is not uncommon for businesses located in different geographic areas (such as on the east coast vs. the west coast) to start using the same mark. However, when either business attempts to expand or to federally register its mark, conflict can arise.  Sometimes a business that initially starts using a mark in connection with specific goods and services later wishes to expand such offerings, only to find that someone else is already using and has registered the same mark in connection with the new goods or services.  Thinking these issues through with an attorney on the front end can make expanding into new territory, whether geographically or in the marketplace, much smoother.

4. Not Enforcing Your Rights:

The U.S. Trademark Office does not monitor for trademark infringement – it is up to owners to police and enforce their own marks. Failing to properly monitor your mark and to take action against potential infringers can lead to big problems. These include the potential for trademark dilution and even losing rights in your mark. We can monitor your marks and help you protect your rights!

5. Missing Maintenance Filings and Renewals:

Federal trademark registrations require maintenance filings after 5-6 years of registration, and renewal filings every 10 years to keep the registration “alive.” If you miss a maintenance filing or renewal deadline, your federal registration will be cancelled. We understand the time and expense our clients put into their trademark registrations, and can help track upcoming maintenance and renewal filings so that you never miss a deadline!

It can be tricky to know all the steps and possible hurdles in trademark registration. Although doing it yourself may save time and money in other instances, taking a “DIY” approach with valuable aspects of your business could lead to more headaches than it’s worth. Trademark mistakes may be common but it doesn’t have to happen for you.

Courtney Reigel, Esq. & Lily Taggart

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

If you’re ready to move your business forward, ask about our branding optimization session or trademark focused consultation!


Social Media and Your Intellectual Property

Popular social media services such as Facebook and Instagram have billions of active users. In addition to allowing companies to share their personality and brand values, online platforms also function as impressive e-commerce marketplaces. This provides an opportunity for businesses to reach an impressive number of users. However, when individuals or businesses use social media, they may not be considering the following issues related to intellectual property:

  • Trademark infringement
  • Copyright Infringement
  • Rights of Publicity/Right of Privacy
  • Licenses to the social media service (i.e., Instagram, Facebook, etc.)

In terms of infringement (whether trademark or copyright), there are two scenarios you may encounter on social media. One involves someone infringing your own intellectual property rights and the other occurs when you infringe a third parties’ rights, whether intentionally or not. There are often several layers of intellectual property involved in a social media post. Common examples include music, photographs, videos, artwork, and brand names and logos. Understanding intellectual property ownership can be complicated, and it is best that you consult with an attorney to protect your work and avoid infringing anyone else’s as well.

Additionally, users of certain media services such as Instagram grant the platform a non-exclusive license to any material they post. Many users are not aware that they are agreeing to such a license when they consent to Instagram’s terms of use and start posting on the platform.

Further, using someone’s image or likeness online without their permission could implicate rights of publicity and/or privacy laws. Being aware of these intellectual property issues on social media is a helpful first step. Your business’s social media presence is an important part of your brand that deserves legal protection. Additionally, avoiding actions that infringe other’s intellectual property rights can help prevent financial and reputational harm. We can assist you with your legal concerns regarding you and/or your business’s online presence.

Courtney Reigel, Esq. and Lily Taggart

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)


Domain Names Disputes and Delays at WIPO

Last month, attorney Courtney Reigel attended a webinar addressing ongoing delays at the World Intellectual Property Organization (WIPO).  Specifically, the webinar discussed the increase in the overall number of Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints WIPO has received since the beginning of the pandemic.

Domain name registrars such as GoDaddy are required to follow the UDRP. The UDRP establishes an expedited administrative process for resolving disputes involving the registration of internet domain names.  While other trademark-related legal matters must often be resolved through arbitration or litigation in federal court (which can be costly and time consuming), holders of trademark rights may file UDRP complaints with WIPO or another approved dispute resolution service provider to resolve issues involving abusive registrations of domain names (e.g., “cybersquatting”).  UDRP complaints generally offer an affordable, efficient, and straightforward option for us to resolve domain disputes for clients.

While UDRP complaints remain a useful tool for addressing domain name matters such as cybersquatting and “typo-squatting,” WIPO is currently experiencing delays in processing times for reviewing such complaints and issuing decisions.

Generally, the cause for the delay is the increase in overall number of UDRP complaints being filed with WIPO.  2020 was a record-breaking year for the number of domain name disputes filed with the organization.  However, this year is already on track to surpass 2020 in number of domain name disputes filed.  The increase in complaints is due to several factors, including the fact that there has generally been more internet activity as people shopped and worked from home during the pandemic. Additionally, the pandemic created new opportunities for cybersquatters to register and use domain names that contain a trademark plus the terms “coronavirus,” “covid,” or “vaccine,” for example.  The ICANN WHOIS service used to investigate registrant information for potentially infringing domain names no longer offers the same information it used to.  Due to privacy laws such as Europe’s General Data Protection Regulation, as well as the increase in number of privacy and proxy services registrants can use, registrant information (an individual or business’s name, address, and contact information) is no longer readily available.  In some instances, the only way for trademark holders to determine who is responsible for registering a domain that appears to infringe their intellectual property rights is to actually file a UDRP complaint and wait for the domain’s registrar to provide such information.  Further, the lack of registrant information makes it difficult to combine complaints involving several domain names that have the same registrant together into a single complaint (previously a common practice), which is also driving up the number of overall complaints.

Attorneys can help trademark holders monitor for potentially infringing domain names and enforce their rights, which often includes preparing and filing a UDRP complaint.  In light of the increase of bad actors online, such monitoring can be critical for preventing trademark dilution and avoiding the harm that can be caused by infringing domain names.  We can also draft complaints that clearly articulate trademark holders’ rights and address key issues to assist WIPO with reviewing complaints and issuing decisions as quickly as possible. The pandemic and changing laws compel a more strategic approach for handling domain name disputes, and we continue to monitor developments and are readily available to help clients with these matters.

Rina Van Orden, Esq. & Courtney Reigel, Esq.

Hidden Risks of the Side Hustle

If you’ve ever searched online for ways to make extra money, you’ve likely come across a multitude of “side-hustles.” The side hustle has become an increasingly trendy topic, especially with the recent changes in remote work. These ways of increasing your cashflow can be benign, but several popular avenues come with hidden risks.

Domain Name Marketplace

You may be thinking that it’s profitable to buy and sell domain names. That can be true! But you face risks in that process that you need to be aware of. Namely, if you are purchasing a domain name that is valuable specifically because it trades on the brand of a well-known company, you could be infringing someone’s trademark, violating anti-cybersquatting laws, and generally making a lot of people really angry.

Buying and selling domain names is also referred to as domain flipping. This is a side hustle because people can buy domain names from registrars such as GoDaddy and attempt to later resell them for a profit. Whether the flipper builds an actual website with the domain is up to them. “Domain parking” refers to flippers that do not build a site tied to the purchased domain(s). Another strategy is to invest in the site and increase traffic to make it more valuable. This practice can be lucrative – was sold for $2.45 million in 2012. But like most headline grabbing stories, it’s not as safe or simple as it sounds.

One of the major risks with purchasing domains is the potential to infringe on someone’s protected intellectual property. Even with research, you could purchase a domain name that is too similar to an existing brand and wind up paying the price. It’s a good idea to consult a lawyer to make sure a domain name doesn’t gain value from an existing source.

Finally, domain flippers must be aware of the dangers of cybersquatting. Although cybersquatting as a practice is often intentional, even unintending flippers can violate anti-cybersquatting policy. The Anticybersquatting Consumer Protection Act covers a range of domain buying and selling practices that could get side hustlers in real trouble.

Options for Trademark Owners

Cybersquatters – and potentially unknowing flippers – commonly obtain exact or confusingly similar domain names to protected marks. Since infringement is so frequent, it’s important to monitor your protected property. An experienced legal team can build the best strategy for your situation and help you keep an eye on the marketplace.

Trademark owners worried about potential infringers or cybersquatters have options. There are different types of actions mark owners can take if they find out a domain registrant is making money off of the owner’s mark. The general first course of action is to send a cease-and-desist letter. This addresses trademark ownership, how the domain name is infringing and causing damage, and your willingness to take the appropriate legal action if the infringement does not stop. If no action results from a cease-and-desist letter, you may wish to involve an attorney who can guide you and implement the correct course of action to stop the infringement.

Side Hustle Risk: Creative Infringement

People can make a lot of money selling and designing creative t-shirts, but you are better safe than sorry when it comes to designing shirts that are valuable because someone else has created the content it is based on. Using online platforms such as Etsy or Instagram means that your activity is subject to federal regulation. Goods that use characters, slogans, or even inspiration from protected works risk both trademark and copyright infringement.

Using the content of businesses commercially without express permission or license is trademark infringement. A common example is personalized goods with college or university logos. These are protected intellectual property so commercial use on your t-shirts without permission is infringement. Another example is fan gear for professional sports teams. A quick search of these online marketplaces shows plenty of stores using infringing material which might make you feel safe. However, just because other stores are selling these doesn’t mean it’s legal. Or the the trademark owner won’t shut that store down. The risk of infringement outweighs any potential gain from unauthorized use.

This type of side hustle also risks copyright infringement. T-shirts with popular tv characters or quotes from a new bestselling movie may fly off your shelves, but remember: their value comes from someone else’s work. And federal copyright infringement claims come with a hefty price tag.

Another common mistake is using pictures from Google. Without checking the source, it’s highly likely that you do not have permission to use that property commercially. No matter what good you’re interested in creating and selling, make sure it’s your original design. If what you’re selling gains value from established content – and you don’t have permission to use it – think twice. Like trademark infringement, copyright infringement can lead you into a mess of legal trouble.

To sell or not to sell

The public domain refers to a collection of works without exclusive intellectual property rights. For instance, the works of William Shakespeare are in the public domain. This means that if someone wanted to do a theater reenactment of Shakespeare’s work, they wouldn’t have to have a license or permission to do so unlike a copyright protected work.

Another type of side hustle involves publishing work from the public domain. There’s always a demand for classics such as Little Women, Treasure Island, or The Great Gatsby, which entered the public domain as of January 1, 2021. Entrepreneurial side hustlers have filled this demand by turning these public domain works into e-books on platforms such as Amazon Kindle. Due to the lack of copyright protection of works in the public domain, infringement can disappear if you are using or inspired by works in the public domain. There are enterprises which have successfully used this hustle – such as the man who sold 64,000 Anne of Green Gables e-books.

However, if you’re thinking this is the new trick for you, don’t dive in too fast. Calculation of the time a copyright is active can be complicated. One version of a work may be in the public domain, but another is not.  It’s important to err on the side of caution and contact a lawyer to be safe if you feel conflicted. No matter what side hustle you’re thinking of pursuing, always do your research and be aware of the hidden risks. If you’re a trademark or copyright owner worried about potential infringers, remember you have options.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Kat Gavin, Esq.

Intellectual Property of the Galaxy Far Far Away

May the 4th Be With You

Any casual fan of Star Wars would assume the that the words “Star Wars” are registered trademarks. What many people may not realize is just how much of the galaxy is protected intellectual property.

Lucasfilm, the film and television production company responsible for creating and producing Star Wars, has a long history of protecting its brand and securing its intellectual property. George Lucas himself opted for future merchandising rights over a rise in salary in the 1970s (Fieldfisher). The Star Wars universe has continued to expand and evolve, especially since Walt Disney Studios acquired the production company in 2012.  As of 2019, Lucasfilm has over 1,100 federally registered trademarks and 3,952 federally registered copyrights (Suiter Swantz).

Many people contribute Disney’s and Lucasfilm’s widespread financial success to their merchandising strategy. Their expanding involvement beyond television and movie production leads to an increased need for intellectual property protection. Whether you want Star Wars themed clothing, household goods, games, books, or entire theme park experiences – there’s an officially licensed option for you.

Are these the droids you’re looking for?

It’s no surprise that STAR WARS is trademarked, but what else of the galaxy far far away has been protected? Due in large part to Lucasfilm’s, and now Disney’s, penchant for merchandise, many sayings, slogans, and design elements have been federally registered.  For instance, the cast of recognizable faces may not all be on the same side of the force but they do share this in common: characters like Darth Vader, Chewbacca, Princess Leia, and R2-D2 all have their own trademark registrations. These are used in connection with goods such as toys and costumes.

One registered trademark that may not be as obvious as the protected title or characters is the word “Droid.”  Lucas himself developed the phrase in the original 1977 film.  It refers to the humanized machines such as C-3PO and R2-D2.  Although now a common word, other companies have to pay Lucasfilm to use “droid” due to its trademark status. If other companies avoid this license, they must be prepared for possible legal action. Both Lucasfilm and Disney are no stranger to infringement disputes.

I got a bad feeling about this

While many times a cease-and-desist letter informing the infringer about his or her mistake is all it takes, some other cases require further action.  In 2016, after multiple cease and desist notices, Lucasfilm filed a lawsuit against Michael Brown.  Brown operated multiple businesses such as New York Jedi and the Lightsaber Academy.  His services included training, classes, and even certifications centered on lightsaber combat.  Further, the design of his logo was “confusingly similar” to the trademarked JEDI ORDER logo.

Brown’s webpage did include a disclaimer that his operation had no affiliation with Star Wars, Lucasfilm, or Disney.  However, disclaimers do not protect companies from trademark infringement.  It’s a common misconception that including this type of language will protect you from legal trouble.  Additionally, as Star Wars has become a household name and brand, many of its trademarks have almost certainly risen to a level of fame that protects them from trademark dilution, a claim that can be brought against any infringer of a famous mark, even if the infringer is using the mark with unrelated goods and services.

There are many instances where entities infringe upon Disney’s protected material.  Small businesses and fans often unknowingly use protected IP in unauthorized manners.  Such a large company cannot shut down every case of infringement, but they have an obligation to try. It is intellectual property owners duty to police their trademarks and copyrights.

To be continued…

With a decades long enterprise, thousands of devoted fans, and an ever-expanding universe, it’s likely the number of registered copyrights and trademarks for Star Wars will continue to increase. When it comes to both Star Wars and intellectual property, we have you covered. Rina Van Orden is not only an IP expert, but is also a huge Star Wars fan. If you’re concerned about infringement or curious about protecting your own work, Gavin Law Offices has the answers for you.

May the 4th Be With You!