Category — procedure

Because of the cost of clearing several different marks, I am often asked how business owners can reduce the number of potential names to submit for clearance. As a pre-clearance procedure, I often tell clients to choose up to 10 arbitrary or fanciful names to search at the United States Patent and Trademark Office Web site. The PTO Web site lets you search for registered trademarks and trademarks that have been applied for by other companies.

As a business owner, you can run a pre-clearance search on your 10 chosen names and eliminate any names that conflict with your chosen name. Remember, though, that just because a name does not appear on the PTO Web site, does not mean the name is available for registration. Another person might be using the name, but has not registered it yet or perhaps they spelled the name with a slight change. For example, if you search for BUGS, you would miss every registration containing the word BUGZ. I’ve found that by conducting a pre-clearance search, you can narrow your original list of 10 names to 2 or 3. You can then submit these 2 or 3 names to your trademark attorney for full clearance.

Michael Atkins, trademark attorney and the writer of the excellent Seattle Trademark Lawyer blog, points to a story in the Seattle Times about a business owner who twice failed to obtain trademark protection for his goods (wine) before finally succeeding on the third try. The business owner chose to forgo the services of a trademark attorney and attempted to register his mark on his own. The business owner justified his decision by stating that he didn’t want to pay $10,000.00 to a trademark lawyer to register his mark.

Like Michael, I don’t know of any trademark attorney that charges $10,000.00 to clear, file, and attempt to register a mark. But the point is that $10,000.00 is cheap compared to the potential cost of procuring your own trademark without help or compared to the potential value of your brand. If your brand is eventually worth $1,000,000.00, then securing that brand for $10,000.00 seems like a good deal. And you don’t have to waste thousands of dollars in advertising materials and your time to deal with refusals. As a business owner, you should focus on making the best quality product or attaining high levels of service, not fooling around with the the Patent and Trademark Office.

I should also note that, in my experience, this situation occurs regularly and I often have to charge more to fix the problem than I would have charged if the business owner had simply come to me first.

In today’s world, business owners need to stay connected to the global economy. One way to do this involves operating a Web site to advertise your goods or services to your customers. To start the process, a business owner must register a domain name with a registrar such as GoDaddy. The selection of a domain name is tricky business, not only because of the lack of domain names available, but also because of the trademark issues involved.

That’s right: domain names can serve as trademarks and the bad faith registration or use of a domain name can be grounds for legal action. A trademark owner who believes that another registrant has registered or is using a similar domain name in bad faith has two options. The first option is to bring an action under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). When you sign up for a domain name, you agree to arbitrate any disputes regarding your domain name under the terms of the UDRP. The end result of a UDRP action may be the transfer of the domain name to the trademark owner. The second option for an aggrieved trademark owner is to bring an action in federal court under the Anti-cybersquatting Consumer Protection Act (ACPA). Under the ACPA, the trademark owner files suit in federal court and may seek transfer of the domain name at issue and damages up to $100,000.00 per domain name.

Marc Randazza analyzes several common defenses under the ACPA in this post. He also discusses the advantages to the UDRP process versus defending an ACPA claim, at least for those accused of bad faith registration or use of a domain name. Under the UDRP, the only relief available is the transfer of the domain name. Moreover, the process is conducted through an arbitrator or arbitration panel by way of pleadings only. There is no discovery or oral arguments. Conversely, in defending an ACPA action, not only are the options for relief greater (transfer of the domain name and statutory damages), but the aggrieved trademark owner gets to choose his venue. As such, you, the new business owner using your new domain name, may get haled into a far-off federal court. Defending such an action can be very expensive. In addition, an action in federal court would almost certainly require discovery, which only makes the process more expensive.

There are several other issues relating to domain names and trademark law, but they are beyond the scope of this post. Business owners need to be aware of the possibility of infringing someone else’s trademark with their domain name could subject them to legal action and choose their domain name carefully. With careful planning, however, you can avoid these situations.