Part 1 of 2
by: Benjamin Lindberg, CR
A trademark is a distinguishing name or symbol used for specific identification of brand or individual. It can be a logo or even odd phrase as in NBA player Anthony Davis’ “Fear the Brow”. As long as you are not using a plagiarized trademark, you can gain trademark rights by simply using it. However, registering a trademark with the U.S. Patent and Trademark Office can give you additional enforcement benefits. A trademark lasts for 10 years and can be renewed every 10 years indefinitely.
It is important to trademark your business name and logo to protect yourself. The explosion of online media has created channels for reputation trolls and corporate identity thieves to swoop in and co-opt a brand. While a trademark wouldn’t stop this immediately, it would give you a valid claim and a venue to pursue restitution.
Take for instance repeated cases of cyber-squatting on celebrity domain names. One of the most famous cases involved Julia Roberts and her rights to juliaroberts.com. She filed suit against a cyber squatter who had registered more than 50 celebrity domain names. Despite her lack of a registered trademark, an arbitration panel found that Ms. Roberts’ fame was sufficient to claim trademark. She prevailed in the case and the domain was turned over to her, albeit at great expense. Bruce Springsteen didn’t fare as well.
Cyberconflict may seem like a relic from the internet spring of the early 2000’s, but it has re-emerged as a barrier to people trying to get into the market. Look at the challenges Google has had in creating its new umbrella company Alphabet. Most experts say in order to be successful as a business, you need to have a .com domain. This is why so many start-ups have crazy catch-names like Lyft, Shopify, Kaggle or Zynga. I’ll write more later about how Google is blazing a new path by leaving .com in the dust with Alphabet.XYZ.
Another issue relevant to trademark is online shaming. We previously wrote about the money grab that came from the release of the top-level domain .SUCKS, mostly by companies trying to protect their brand from a reputation crisis. But it isn’t just domains causing concern, there are companies or individuals actively trying to influence brand presence. An example of a brand turned upside down by a few unhappy customers controlling a brand is the Pacesetter Corporation. Pacesetter was a franchised window replacement company in Omaha, NE with sales in excess of $130 million. The company ended up dissolving following a small, but effective, online campaign that began with PacesetterSucks.com.
Even though trademark rights wouldn’t automatically prevent anyone from obtaining an obscure, but related domain, it would give you some options when trying to remedy a bad situation.
All of these stories highlight the importance of registering a trademark for the protection of your brand.
In the second part of this blog series on trademarks, I’ll focus specifically on trademarks relationship with Google.