Jon’s note: I invited intellectual property attorney John C. Laurence to write this expansive Trademark guide for bloggers.
Nearly 30 years removed from its first public introduction in 1991, the Internet is more civilized and commoditized than ever. Yet because of its enormous size, it remains a digital wild west.
If you’re reading this, you’ve probably already taken a few steps toward growing your website: publishing your first 25 pieces of content, securing your first hosting package, and installing a premium theme as you get ready to let your first pieces of content age.
As you begin to look toward what’s next for your niche site, you should consider how you can protect your hard work and develop your brand with trademark protection. As your blog grows, so does the risk that someone will attempt to capitalize on your success by stealing your logo or domain name and passing it off as their own.[toc]
Why Your Blog Needs Protection
Choosing a name is an important step for any business, and a blog or website is no exception. A blog’s name sets it apart, and as the blog grows over time, readers will associate the name of the blog with the quality or style of content that they enjoy. Protecting the value of that association is why we have trademarks in the first place. So why don’t more bloggers have them?
As of Q4 2020, roughly two million trademarks are active in the United States. A quick search of the U.S. Patent and Trademark Office (USPTO) database reveals over 100,000 records for trademarks containing common TLD indicators.
With so many trademarks out there, it’s easy to infringe upon one accidentally when choosing your domain name. It’s just as easy for someone else to infringe on yours.
Benefits and Consequences
Having a registered trademark allows you to take advantage of a number of key legal rights and remedies for infringement, including:
- Definitive ownership rights;
- Nationwide protection against infringement;
- The ability to bring infringement suits in federal court;
- “Incontestability” of your mark after registration and use in commerce for five years;
- Recourse against cybersquatting, dilution, and other claims; and
- The ability to use the ® symbol to designate that the mark is federally registered.
Without a registration, none of these options are available. Website publishers who don’t register their domain names put their hard work at risk. By thinking about trademarks early on, you’ll be able to avoid spending time and money on a domain name that is not protectable because there is a likelihood of confusion with an existing trademark or does not qualify for trademark protection.
One famous example involved Hasbro and their Candy Land board game. Adult entertainment company Internet Entertainment Group (IEG) set up candyland.com in 1995, filling it with sexually explicit content. IEG reportedly paid over $20,000 for the domain name and spent another $150,000 on marketing. After discovering the website, Hasbro successfully sued on the basis of trademark dilution, forcing IEG to hand over the domain to Hasbro.
What Is a Trademark?
A trademark is a word or design that identifies the source of a particular good or service. One way to think of trademarks is as a visual representation of the goodwill that consumers associate with a particular brand.
Trademarks are separated into types based on what they contain. Basic word marks contain words only, while design marks contain a graphic element. The law ranks trademarks on a four-step scale based on their strength and protectability:
- Generic marks are common terms used to name or describe a good or service and are not protectable;
- Descriptive marks describe the quality of the product and are protectable only if they’ve acquired a secondary meaning (e.g., American Airlines);
- Suggestive marks suggest a quality of the goods or services and require a logical leap between the mark and the goods or services they represent (e.g., Skullcandy); and
- Arbitrary or Fanciful marks are arbitrary words that have no inherent relation to the goods or services they represent and are the strongest type of mark (e.g., Apple or Google).
The stronger a trademark is, the broader the protection afforded by that trademark. This is important since trademark infringement is based upon the likelihood of confusion with a protectable mark.
How Do I Get Trademark Rights?
Common law trademark rights are acquired simply by using your mark in commerce for specific goods or services. Common law rights are the easiest to obtain, but they provide only limited protection. Specifically, common law rights exist solely in the geographic areas where the mark is used or to which the owner’s business would naturally expand.
In contrast to common law rights, the broadest trademark rights are obtained by registering the trademark with the USPTO. Federal registration confers nationwide protection, “incontestable status” after five years of use in commerce, and the ability to use the ® symbol to show that your mark is federally protected, along with the other rights and remedies listed above.
Registration Issues and Likelihood of Confusion
Under the Lanham Act, trademarks must meet certain criteria to be eligible for protection. Most importantly, new trademarks cannot be confusingly similar to existing ones.
Compared to copyright infringement, trademark infringement does not require literal copying. Instead, trademark infringement depends whether one mark would confuse consumers about where a product originated. Confusion can be based around how a logo looks, how it’s spelled, or even how it sounds to repeat out loud. Keep in mind, though, that infringement is only a problem when there is an actual likelihood of confusion. When two businesses are in entirely separate industries, consumers are unlikely to get confused. This is why Hasbro brought a dilution claim rather than an infringement claim in the Candy Land case above.
Trademarking Your Domain Name
The process for trademarking a domain name is the same as for any other mark. This means that your domain name must serve as a source identifier for the goods and services provided under that mark. It also means that the mark cannot be primarily descriptive of those goods and services and cannot be a generic term used to identify those goods and services.
An initial question is what part of the domain name to I do attempt to register as a trademark. This question is best answered by determining what part of the domain name are actually being used as a source identifier for the goods and services offered under that domain name. If you are using the combination of the first part of the domain name and the top-level domain indicator primarily as a website address, then you cannot trademark that domain name combination as it does not function as a source identifier. Rather, it is most likely that the first part of the domain name combination alone functions as a source identifier and it is that portion alone that should be trademarked. The first part of the domain name combination may your company name or some other designation that you include alone in your marketing materials to identify yourself to you customer. As an example, my company name is “John C. Laurence Law” under which I market and provide legal services. I may also have the domain name “johnclaurencelaw.com.” However, I market my legal services and my customers associate those legal services to the “John C Laurence” component alone without the “.com” component. As such the mark “JOHN C LAURENCE” functions as a source identifier and should be trademarked while “johnclaurencelaw.com” function solely as a web address that should not be trademarked.
Alternatively, if the full domain name combination is used as the source identifier, then both the first part of the domain name and the top-level domain indication in combination should be trademarked. Many companies today provide their goods and services primarily on the Internet and they market those goods and services to their customers in a manner that emphasizes that feature such as always including “.com” in company designations. One example that everyone seems to be familiar with is “Booking.com” and its Supreme Court case that changed the law concerning registrations that include top-level domain indicators.
The company Booking.com filed to register the mark BOOKING.COM for online hotel-reservation services. The USPTO denied registration finding the BOOKING component generic and applying a nearly “per se rule” that adding a top-level domain indicator to such a generic name renders the domain name combination also generic. The Supreme Court rejected this “per se rule” holding that whether such a domain name combination such as BOOKING.Com is generic depends solely on whether or not that combination, taken as a whole, signifiers to consumer a class of goods or services. A key point to understand is that simply adding a top-level domain indicator, such as “.com,” to a generic term, such as “booking” for online hotel-reservation services, does not alone cure the combination from being generic. Rather, the domain name combination will be evaluated as a whole to determine whether or not it generic. Moreover, the USPTO will evaluate the domain name combination as a whole when determining if a portion of the combination needs to disclaimed as generic or descriptive or if there are marks on the register which may cause a likelihood of rejection.
Another key point to remember is that the successful registration of a domain name as a working URL does not guarantee trademark rights in either that domain name combination or any of its components. This mean that some domain name combinations may be very attractive as web addresses but, as the same time, cannot contribute to the development of a brand. However, taking the time and effort to develop a domain name combination that is both a good web address and satisfies the requirements of a trademark does provide advantages. These advantages include protection against registration of confusingly similar domains names, purposeful misspelled domain names, and top-level domain indicator variations.
When Is the Right Time to File a Trademark?
The right time to file a trademark is as soon as possible. However, I understand that during development of a niche site, you have no idea whether it will work out. As a result, it’s difficult to commit to picking a name and developing a brand identity—often at significant cost—when you know it could all be for nothing.
Nevertheless, if you’re actively investing in adding content and further developing your site, in one sense you can’t afford not to make those choices. Even if you’re unsure about the long-term success, you should strongly consider protecting your domain name.
At the very least you should search for your chosen name. Trademark attorneys, myself included, conduct “knockout searches” for our clients to make sure the trademark they want isn’t already in use. You can do something similar for yourself: check to make sure there are no active trademarks for it just like you’d conduct a backlink search to see if the domain name has any toxic links pointing to it.
Online Trademark Services: Good, But Not for Everyone
Online trademark services offer trademark-related services for a fraction of the cost of a traditional law firm. But are they a good investment? While these services do work, they lack some of the service you will get by hiring an attorney.
Cost is the only major benefit an online service offers over an attorney. Online services are often much cheaper than hiring an attorney, but the types of services offered don’t equal what you get with an attorney. If budget is your biggest concern, then an online trademark service is probably the way to go.
While cheaper, online services may provide less for your money overall. Knockout searches may not be as thorough, and they rarely include advice from an attorney on how to differentiate your trademark from others. By using an online service instead of an attorney, you miss out on:
- Legal representation if someone challenges your trademark registration;
- Post-filing trademark portfolio management; and
- Legal advice on the results of your trademark search and the risks moving forward.
Registering a trademark takes more than just “filing and forgetting.” At various points after your mark is registered, you must file statements asserting that you are still using your trademark. Failing to do so can result in your mark losing its protected status.
Popular Online Legal Service Providers
Note: The below list is not in any particular order.
LegalZoom offers separate packages for their trademark search and trademark registration services, including specific searches for identical and very similar domain names.
TrademarkPlus.com is an online service dedicated exclusively to knockout searches and trademark registration. They offer registration starting at $99 and a U.S. basic search starting at $199.
Trademarks411 offers three pricing options starting at $249, each of which includes review, preparation, and filing of your application.
Trademark Engine offers several registration packages in addition to separate knockout search, registration, and monitoring options. This service offers a basic package including a direct-hit federal search and filing for $99.
MyCorporation offers trademark registrations with an optional knockout search option. This service offers a basic registration including a U.S. knockout search for $448.
RocketLawyer is a subscription-based service that offers premium and non-premium membership options. Trademark registration with RocketLawyer includes a knockout search and consultation with one of their attorneys.
Related: Best Online LLC Formation Services
How to File a Trademark Yourself
As important as trademarks are, the cost of hiring an attorney may be prohibitive, especially when you’re just getting started. Budgets are tight and the USPTO filing fee is already expensive.
Keep in mind that while filing a trademark yourself seems cheaper on paper, it may not be in practice.
Filing the application is not complicated, but knowing what to include in it is; mistakes in the application can make the process more expensive than it would have been to hire an attorney.
That said, if you’re going to file your trademark registration yourself, you can do so in three steps.
1. Conduct a Knockout Search
A trademark knockout search, also called a clearance search, starts with a search of state and federal databases to find trademarks similar to yours. A good place to start is the USPTO’s Trademark Electronic Search System (TESS).
Knockout searches also cover common law trademark rights that might exist in your potential markets. You can look for these by searching Google, trade magazines, business registrations, and anywhere else a business would use their trademark.
2. Prepare and File Your Application
The entire application process is online through the Trademark Electronic Application System (TEAS) on the USPTO’s website. Before you can complete the application, make sure you know which International Class you will need to include under your trademark.
International classes are groupings based of product or service types that are offered under the trademark. Classes 1-35 cover products, and Classes 36-45 cover services. The domain name for my law firm, for example, would fall under Class 45, which covers legal services.
3. Monitor Your Application
After filing, the USPTO assigns your application to an examining attorney. While the approval process can be relatively quick in some cases, it may take more than a year in others. If it’s approved, you’ll receive your trademark, at which point you’ll have to stay on top of post-filing deadlines to make sure your mark stays protected.
Hiring a Trademark Attorney
If you decide that you’d rather hire a lawyer, it can be overwhelming to choose. You might ask, how do I know if I’ve picked the right trademark attorney? There’s not really a right answer—but there are some things you can ask to help make your decision:
- What is their communication style and how responsive are they if you have questions?
- What is their reputation within the legal community?
- Is their personality a “good fit” with yours?
- What is their experience not just with filing trademarks, but with handling infringement claims or office actions?
While paying proper attention to the experience is a given, the importance of hiring an attorney you like should not be overlooked. Because it can take more than a year to complete a filing, your attorney should be someone you are comfortable working with for an extended period of time.
Specialists vs. Trademark Attorneys
Trademark specialists are non-attorneys who have experience preparing and filing trademark applications. Many trademark specialists can perform many of the same functions as an attorney with respect to filing a trademark application. However, they cannot practice law. Thus, they will be unable to help you with lawsuits or infringement claims should they arise.
What You Should Expect to Pay for Trademark Services
There are two main expenses for every trademark registration: legal fees and USPTO fees. As of January 2021, at an absolute minimum you will have to pay a filing fee of $250 per class for a TEAS Plus application. Alternatively, the USPTO offers a TEAS Standard option with fewer initial requirements at a cost of $350 per class. The USPTO may assess other fees, starting from $100, for additional filings like extension requests or application amendments.
Additionally, attorneys charge anywhere from a few hundred to a few thousand dollars for their services. For example, I charge $1,275 plus the filing fee for a knockout search and registration filing. Responding to office actions issued during the registration process are charged separately, and depending on the complexity or number of office actions issued, it’s not uncommon for businesses to pay thousands of dollars for a trademark attorney’s services.
How to Handle Trademark Disputes
Whether you’re suing or getting sued, you’ll have to hire a trademark attorney to properly handle the case. If someone is infringing on your trademark, an attorney can assess the situation and advise you of the best options going forward. When infringement isn’t the only issue, there may be other claims you can pursue, like trademark dilution or cybersquatting.
Similarly, if someone files a trademark infringement lawsuit against you, an attorney can similarly advise you of the defenses available. In addition to asserting that there is no infringement, you may be able to challenge the validity of the other trademark. A trademark attorney may also be able to avoid litigation altogether with a settlement.
Can I Hire a Trademark Attorney From Any State?
Yes. In matters of state law, attorneys may not practice law in a state in which they do not have a license. However, because federal law governs trademarks, the same restriction does not apply.
Images, Copyrights, and You: How to Protect Yourself From Lawsuits
Copyrights provide legal protection to certain artistic works. For website publishers, copyrights are most relevant with respect to the written content and photographs used on a website.
With so many free photo sites available, it can be tempting to forego a license with a stock photo site. However, doing so puts you at risk of legal action. Here are some common scenarios and how to deal with them.
Your assistant uploads a copyrighted image they found on Google Images to your site, and an attorney for the copyright owner finds it and demands $1,500 in damages.
The first step is to remove the image. Next, you may want to hire an attorney to negotiate on your behalf. In this type of situation, neither side wants to go to trial, so a settlement is the likely outcome. Depending on your budget, it may be easier to pay the damages and purchase a license.
A seller falsely claims that all images on the website you just purchased were licensed from a reputable provider, and you get sued for copyright infringement.
As above, you should immediately take down the photos to avoid further infringement. Then, you should hire an attorney familiar with copyright claims. If they are unable to settle the matter out of court, they will be able to represent you during litigation. Additionally, depending on the terms of the sale, you may be able to hold the site seller liable for damages caused by their lie.
You download a stock photo from a “free” image site, only to receive a takedown notice or lawsuit from the photographer.
While this doesn’t happen very often, it is something to be aware of. There are a number of websites that claim to offer royalty-free images at no cost, usually with a brief attribution. However, it’s unclear how much moderation sites like these have. As a result, it is very easy for someone to upload a protected photo and incorrectly classify it as royalty-free.
If you are sued for infringement after using an image from one of these sites, you should remove the photo immediately and hire an attorney. Even if you think you could handle it yourself, hiring a lawyer is the most appropriate option no matter which of the above situations you find yourself in. Damages in copyright cases can be very large, and it’s not worth the risk to represent yourself.
DMCA Takedowns and How to Fight Back
The Digital Millennium Copyright Act (DMCA) is a federal law designed to provide legal recourse for copyright infringement in the Internet Era. Under the DMCA, copyright holders can send DMCA notices to the service provider hosting the infringing content. The DMCA “Safe Harbor” provisions protect the provider from liability as long as they comply with the notice by removing the copyrighted material and notifying you of the infringement.
DMCA takedown notices are a useful tool for website publishers who want to make sure their content remains exclusive to their website. In many cases, you don’t even need a lawyer to send one as long as the notice complies with the requirements of the DMCA. Unfortunately, unscrupulous people just as often use DMCA notices to harass other site owners even when there is no infringement.
How to Respond to a False DMCA Claim
If you receive a DMCA takedown, you have the option to file a counter-notice. A counter-notice forces the service provider to replace the disputed content. Counter-notices are also your opportunity to explain why the sender has no basis for their DMCA claim. Some common defenses are:
- No infringement,
- No copyright ownership by the sender, and
- Fair use.
People often mention fair use as if it’s the silver bullet solution to any copyright claim. In reality, determining fair use is complex. Whether a use truly is “fair” is highly fact dependent, and despite what many people think, simply adding material for “comment or education” on a copyrighted work is not necessarily enough to constitute fair use.
Expired Domain Names & Active Trademarks
Expired domain names are those that no longer belong to the original owner but maintain a substantial link profile. When a domain name expires, other publishers are free to buy that domain and point it toward a new address (301 redirect) or publish content on it directly for maximum rankings effect.
Older, expired domain names are a valuable resource for niche bloggers because they allow website publishers access to sites that already have high domain authority, backlinks, and exposure to Google’s search algorithms.
Using a Domain Associated with an Active Trademark
It might be tempting to buy an old domain that contains the name of a once-popular company. However, you could be sued for using a domain associated with an active trademark.
When someone registers a trademark, that registration protects them against all uses of trademark, including domain names. If you purchase an old domain name (or a new one) that contains a registered trademark, the trademark owner has the right to sue. This is true even if you set up the existing domain with a 301 redirect to your new website. Under the law, this is called cybersquatting.
What Is Cybersquatting?
Cybersquatting occurs when someone uses domain names of existing trademarks to drive traffic to an unrelated service or to sell the domain to the trademark owner for profit.
There are two laws that address cybersquatting directly: the Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Dispute Resolution Policy (UDRP). Trademark owners bringing a claim under the ACPA can seek both money damages and transfer of the disputed domain name, while the UDRP can only award a transfer of the domain from cybersquatters.
It’s hard to overstate the importance of registering a trademark for your logo or name. Too often, people file an application and jump right in without thinking about trademark issues. Fortunately, it’s easy to check if a trademark already covers the name of the company, the domain name, or a topic of advertising you want. Ideally, however, bloggers should take advantage of an attorney’s services. Doing so will serve you better in the long run against someone who says you don’t or can’t own your trademark.
John is the founding partner of John C. Laurence Law, a New York-based intellectual property law firm serving clients nationwide. John gives special care to his clients’ needs, and his background as an electrical engineer gives him the real-world experience necessary to provide knowledgeable legal assistance with a variety of patent, trademark, and copyright issues.