Of Blogs and Trademarks ...

In a post-Eastwooding world, all empty chairs have meaning

Dear Rich: I am planning on starting a blog that I might ultimately turn into a consulting/market research business (though in the beginning, like most bloggers, I will be providing only free articles and research). Since I might ultimately end up doing commerce under my domain name, and since I think the name is nifty and special, I am thinking of trademarking it right away. This raises a few questions: (1) If I am not actually selling anything yet, but merely advertising services or providing free online research services, is that enough for a full trademark, or merely an intent-to-use trademark? (2) Can I establish a trademark even if I don’t have an official business registration? Might this create any problems later on if I want to transfer the trademark from my personal name to that of the business? (3) Should I trademark the name of the domain or that of the business? If they are the same, does registering for one protect the other? (4) I have the business name and the domain, but I do not yet have a logo. Can I trademark them separately, or should I wait to trademark them all together? Sorry to slow things down but we have an obligation to remind readers that "trademark" is not a verb, so there is no such thing as "trademarking" a name. (We think you are referring to the registration of a trademark with the USPTO.)

1. To qualify for a registration, a trademark owner must be engaged in commerce regulated by the U.S. government. You can satisfy this requirement if you are writing the blog to attract clients, offer or advertise for services, or if you are leveraging the blog for income, for example, from Google Ads or affiliate programs. Note: this registration will only guarantee protection for use of the mark with your blog. Once you begin consulting services, you may want to file a separate application for those services. 
2. Yes, you can establish a trademark even if you don’t have an official business registration (that is, you haven’t filed a DBA, or created an LLC or corporation). You can always transfer the ownership and registration from your sole proprietorship to another entity. 
3. You should file an application for the name that consumers associate with your business. Usually that doesn't include the generic top level domain extension (.com, .net, .org, etc.). If you do seek to register the full domain name you will most likely have to disclaim the extension. (We discussed disclaimers in a previous post.) With a federal registration, you can stop others who use the domain name in bad faith 
4. Each mark should be the subject of a separate application. No, you don’t need to register related trademarks at the same time. Note: you must pay the fee (approximately $300) for each class of goods or services for which you want protection.

Forced to Stop Using "Fortune 500 University"

Dear Rich: I just read your posting about "Fortune 500" being used by an author and it gives rise to a question. Last year I started an online information service about business issues and registered a domain with GoDaddy as " Fortune 500 University". I designed an original logo and font style that looked nothing like theirs and even posted my picture in the masthead. Later, I was assaulted by an over zealous lawyer from Time-Life who intimidated me into taking my web site down for copyright or trademark violation. Should I have allowed myself to be so intimidated? Unless you're the kind of person who likes root canals, tax audits, or head lice, we think you did the right thing. If you hadn't capitulated, you would have received a series of abusive letters from lawyers, each escalating in tone, followed by a mandatory domain name arbitration or a civil lawsuit. Regardless of whether you would prevail in either of these battles (and if we were a betting blog, we'd bet on Time-Life), we doubt you'd want to deal with the hassle.
How come the previous post said ... Our previous entry on "Fortune 500" explained that informational uses, for example -- using the Fortune 500 trademark or logo in a book or magazine (or in a blog) -- do not require permission. However, commercial uses such as creating an online information service, will likely run into problems. We know the difference between informational and commercial uses is slippery, but one dividing line you can use is to ask whether the mark is being used to analyze or discuss the associated goods or services (for example to reflect on or discuss the "Fortune 500" phenomenon). In that case, it is more likely informational. Finally, the use  of "Fortune 500" as part of the domain name is going to set out a separate series of flags as it may be viewed as a form of cybersquatting.

Somebody Took My Dot-Org

Dear Rich: A company has copied our domain name but used it with a dot-org, not dot-com like we do. I thought you had to be a nonprofit organization to get a dot-org domain name. Can anybody be a dot-org? The Dear Rich Staff is sorry to hear that you are no longer the master of your domain ... and yes, anybody can be  a dot-org.
The skinny on TLDS. When top level domain names (TLDs) such as .com, .org, .gov, .net, and .edu were created by the Internet Corporation for Assigned Names and Numbers (ICANN), the intention was that each TLD would cater to a specific type of domain name holder. For example, .org was intended for nonprofits, and .net for network related entities. But only some TLDs are really restricted--for example, .edu for educational institutions, .gov for government agencies,  and .mil for military agencies. To get one of these you must qualify. But that’s not the case with .org, .net, and .com. all of which can be obtained freely by just about anyone, for any purpose.
What can you do about the interloper? If someone has taken your company’s trademark and is using it in bad faith to compete against your business as a .org, you can either sue for cybersquatting in U.S. federal court (very expensive), or you can request ICANN arbitration (approximately $1500 if you use only one arbitrator). We discussed cybersquatting in a recent post.
P.S. Coming Soon: Custom TLDs. ICANN has announced that companies can – commencing January 12, 2012 -- buy custom TLDS. For example, Nike can buy exclusive rights to .NIKE and Apple can buy .APPLE. Supposedly these custom domains will sell for $185,000, so it's for serious players only.

Snafu Caused Loss of Domain Name: Now What?

Dear Rich: I had a URL (domain name), connected to a network of 3 sites. Due to an email account error, the registration was lost. The day it went public and I found out it got bought. I have been running the domain name for a mortgage network and I've owned this site since 2004. I noticed the place-holder page put up for the domain is for a company that is in the Cayman Islands so I am sure it is a crook who bought it for cybersquatting or to steal it. I have sent the company a letter saying they must release it or they will get a cease and desist and I will file with ICANN. What are my rights, what can I do? We're sorry to hear about your domain name loss. Apparently there are companies out there who wait for domain names to expire and then snap them up. Sometimes, the purchase is made in order to sell it back to the previous owner (who is often unaware that the domain has even expired). Sometimes, it's purchased because the new buyer believes that the domain still has some SEO value and so, it can be sold to a third party who can milk it for a few percentage points in Google Analytics.
Is it cybersquatting? Cybersquatting is when someone buys and sells a domain name with the bad faith intent to profit from another company's trademark. (We explain it in more detail, here.) For example, it would likely be cybersquatting if (1) the company set up a site that diverted your customers, (2) the company, in advertising the domain name for sale, mentioned that the potential buyer could trade off your previous traffic, or (3) the company set up a page with Google Ads listing you and your competitors. If the company contacted you, unsolicited, after buying the domain and offered to sell it back to you at a much higher price, that would likely be cybersquatting, too. It would not be cybersquatting if the company set up a non-competitive site for another company or if the company did nothing but set up a  blank page. That's because there's no proof of bad faith intent. After all, it's not illegal to simply buy and sell domain names (without bad faith).
Should you proceed to ICANN? You are unlikely to get the domain name back by sending threatening letters. Most domain name dealers are not cowed by legal letters. They know you can only get the domain name back by (1) filing a federal cybersquatting lawsuit (probably way too expensive for you), or (2) by seeking domain name arbitration at ICANN. If you go the ICANN route, your filing expenses are, at minimum, $1500. It takes six months, requires a considerable amount of paperwork and documentation and may cost more if lawyers are involved. Remember, it's not enough to say that the company bought your domain name, you need to prove bad faith. And of course, there's no guarantee you'll prevail (although complaining parties prevail in 84% of the cases). Many people don't want the wait or the uncertainty of ICANN so they simply contact the new owners and pay for the domain name -- often forking over a sum between $2,000 and $3,000 because that's how much they would likely end up paying in time and money for an ICANN arbitration.

.MIL Websites: Public Domain?

Gassed by John Singer Sargent, 1918

Dear Rich: yesterday you wrote about a website that you characterized as public domain because it was part of the U.S. military. Does that mean that every website that ends with .mil is public domain and material can be used freely? Ahhh ... Our previous blog never said that the website itself was public domain, only that some of the material at the site was public domain. When a website ends with .mil, you can be sure of only one thing: the Department of Defense has certified that the site is associated with the U.S. Military. The .mil domain is known as a sponsored top level domain which means that only those parties that have been cleared by a certifying organization - in this case, to the DoD -  can use it. Other 'certified' domains include .gov, .edu, .aero, .museum, and .coop.

Trademark v. Domain Name: Can We Co-Exist?

Dear Rich, I have a situation similar to one in a previous post. I acquired a unique domain name in 2008 with much trouble. I was planning to build an online store. The name is related to fashion accessories. My website was built in 2009 and it was open to the public. People can see it on the internet but the product and payment part was not done so there was no transactions. But at the same time, I used the same name in a local funding rasing event in California in 2009. I generated some transactions there. I was not able to do too much since then. Two months ago, in June 2011, I found a U.S. software company tried to register a trademark for that exact name for some computer software. I also found that it is online downloadable and it became first in Google listing for that name. My questions are: 1) Will I lose the domain? 2) Can I still apply for trademark? 3) Can we co-exist? The short answers to your questions are No, Yes, and Yes (To save you some time, we've provided an explanation of eCommerce trademark basics.)
A classy distinction. Our big takeaway is that trademark law only protects marks in regard to the class of goods or services being offered under that mark. That's why you can wear American Apparel while you're flying American Airlines, or look for jobs at Monster.com while listening to speakers connected by Monster cables, or fasten Arrow staples to your Arrow shirt. Only those marks that are rock stars in the trademark world --  think Nike or Coca-Cola -- can claim a likelihood of expanding into a broad array of goods and services, and more importantly can prevent another company's use of their famous mark because a third-party use dilutes it.
Domain names and trademarks. A registered trademark owner can only dislodge a domain name holder if the domain name is identical or substantially similar, and the domain name owner acquired or is using the domain name in bad faith. That generally means the domain name holder is exploiting the trademark owner's rights. You won't have that problem because you have a bona fide intent to use the mark for fashion accessories not to compete or trade off the software company's name.

Had Domain Name First! Do I Own Trademark?

Dear Rich: In 2008, I purchased a domain name for a service business I wanted to start (abc-company.com). I'm based in the US and did a variety of small jobs under that business name for a while but due to life circumstances wasn't really able to give the business my full attention. Recently, I decided to refocus my energy on this business and begin building it again. It turns out in 2009, somebody else registered a similar domain name (abc-company.net). They are based in the UK but have a strong US presence, and they have published a book by the same name (ABC Company) and given several popular talks under the same name. While I have the company's name on LinkedIn, they have it on Facebook. The nature of our work crosses over in many ways but our service offerings are different. Their company clearly comes up in the search results before mine and is currently more established than mine. Would the fact that we are in different countries affect the rights to who has the best claim on the trademark? Do either of us have a right to that trademark?  The Dear Rich Staff suggests you consider the following questions.

• Have You Established Trademark Rights? Your first question, regardless of the other company's use, is whether you qualify for a trademark. If yes, you may be able to claim a priority based on your earlier use of the name. Using a domain name doesn't create trademark rights. You have to use the domain name in a manner that customers associate with the business. For example, the original domain name for this blog was: patentcopyrighttrademarkblog.com, a URL that could never function as a trademark because it is the generic term for a blog about ... guess what? On the other hand, "Dear Rich" passes the test for "On-line journals, namely, blogs featuring commentary and information in the fields of patents, copyrights and trademarks." The fact that you stopped for a while may hurt you if you get into a spat and the other side argues that you abandoned the mark. But that's unlikely as abandonment typically requires three or more years of nonuse. 
• Have They Established Trademark Rights? The fact that you're in different countries may be sufficient to avoid a dispute, provided that each company caters primarily to consumers in their own country and is not concerned with what happens across the ocean. If your UK doppelgänger is expanding into American markets, they may file with the U.S. Patent and Trademark Office. You can periodically check Trademark Office records (here's a video explaining how) to see if the company has filed anything. You may object to the registration if you have sufficient basis.  Again, if the term is generic, it will be equally tough for the UK company to claim rights.
• Can You Both Claim Trademark Rights? That's possible if, like you say you offer different services. Many companies have the same or similar registered trademarks because the U.S. Patent and Trademark Office permits different companies to use the same mark if their services or goods are not likely to confuse customers (For example, nobody thinks that the people who make Arrow shirts also make Arrow staplers) 
• Do You Need a Registered Trademark? The longer that you both co-exist without any confusion, the more likely that things will stay that way and you won't have to be concerned about fighting over registrations. Here's a recent case about domain names where that issue came up. On the other hand, if  you're concerned about expanding your business or you just want to shore up your rights -- and you have $325 to file a federal application -- go ahead and file for a trademark but take a look at this information before doing so.

Reselling Apple Products Double Redux

Dear Rich: I saw in a previous post you wrote in regard to a question from a person wondering if it was ok to resell Apple products; your response was, ‘yes,’ as long as they weren’t grey market, the logo wasn’t removed, and as long as you don’t pretend like you’re an authorized reseller. My question comes from some of the recent penny auctions I’ve seen selling the items at a discount so to speak: 1. How are they allowed to sell these products for a ‘discount?’ 2. How are they allowed to advertise these products? 3. The last item I won from these auctions actually was shipped to me from Amazon.com. Is it possible for these auction sites to legally advertise Apple products, have an auction for them, and then purchase them from Amazon.com and simply have them shipped to the winner? 4. If a person wanted to sell Apple Products that they bought from craigslist or ebay, could they start a business with ‘Apple’ in the name and not get sued? Such as, ‘Great Apple Products,’ and then open a website called GreatAppleProducts.com? When you're in the business of answering questions, like the Dear Rich Staff, you sometimes feel "used" when someone refers to "my question" and then asks four questions. So, give us a second to regroup. Actually we've written about reselling Apple products three times before: our classic post, our expanded classic post, and our "re-selling loaded iPods revised classic post. That doesn't mean we're tired of writing about the subject. So here's our take on your questions:
1. How are they allowed to sell these products for a ‘discount?’ There's no law prohibiting discounting unless a merchant has signed an agreement to fix pricing (which has to be carefully drafted to avoid antitrust laws). A merchant can even give iPods away for "free" although such offers are often considered a form of identity scam.
2. How are they allowed to advertise these products? See above. As long as the merchant doesn't break the rules set out in previous posts, the merchant can advertise the discount.
3. The last item I won from these auctions actually was shipped to me from Amazon.com. Is it possible for these auction sites to legally advertise Apple products, have an auction for them, and then purchase them from Amazon.com and simply have them shipped to the winner? 
If a merchant obtained an authorized copy by legitimate means (buying it from Amazon), the merchant is free to dispose of it any way that's legal.
4. If a person wanted to sell Apple Products that they bought from craigslist or ebay, could they start a business with ‘Apple’ in the name and not get sued -- for example ‘Great Apple Products,’ and then open a website called GreatAppleProducts.com? If you're selling applesauce and apple pie, you're probably okay with GreatAppleProducts.com, (just as the MAC cosmetic company can sell its cosmetics under a "Mac" domain name). But if you're selling Apple computer and software products under an Apple-ish domain name, you may run into opposition from Apple. Using Apple (or the name of an Apple product) in the domain name could imply that Apple is associated with or endorses your site (or that you are in some way authorized) giving the company a basis to pursue you for trademark infringement. Not saying that will definitely happen ... just sayin'.