Trademark Law and Internet law

in Trademark

Can i register my individual name being a federal trademark?

The unequivocal answer for celebrities, athletes, published authors, speakers and individuals marketing goods and services under their individual names is, “Yes.”

A registration allows clients and counsel to do something quickly in order to avoid unauthorized usage of individual names for marketing of competitive goods and services, a practice and that is exploding on the web. In the same way major corporations build a “poison pill” to prevent uninvited control you attempts by competitors, people who have trademark rights in individual names may use a trademark registration to serve exactly the same purpose.

There’s two major top reasons to register an individual’s name as a trademark.

1. Provides access to speedy and fewer costly remedies afforded to trademark owners whose marks are contained in unauthorized domains; and

2. Creates a poison pill against competitors purchasing marks as search phrases and who use marks in Metadata.

The “right of publicity” is really a legal doctrine accustomed to prevent unauthorized using an individual’s name, image, or likeness for commercial purposes. Entry to remedies for such violations remains limited by traditional, more costly court proceedings. Moreover, the U.S. anti cyber squatting statute, 15 U.S.C.A. § 1129, offers up relief for theft of unregistered individual names only upon proof the registration appeared by having an intent to offer the reputable name an income, and doesn’t protect against competitive uses, that happen to be far more common.

California Business & Professions Code § 17525 is the one other alternative that affords protection for names of deceased celebrities. It eliminates the requirement that registration be produced with an intent to extort money. That’s well and good, but how do California residents sue a cyber squatter situated in Korea, that there isn’t any jurisdiction, i.e. a legal court does not have any authority to bind the party to its decision?

How Does a Federal Trademark Profit the Individual?

A review of the most typical varieties of brandjacking provides the answer.

Unauthorized Use of an Individual’s Name inside a Domain name. What are the results when your name ends up in the URL of a website owned and utilized by an unauthorised? There are two possible remedies.

Uniform Domain Dispute Resolution (“UDRP”). The arbitration could be filed prior to World Intellectual Property Organization (WIPO) or one of several other approved ICANN dispute forums. A conclusion is manufactured within 8 weeks of appointment in the arbitrator. Costs are substantially only a court proceeding since all proceedings come in writing.

One must prove three elements to secure return with the domain:

o The disputed domain name is identical or confusingly just like a trademark or service mark in which the Complainant has right; and

o The registrant doesn’t have legitimate rights within the mark; and

o Registration appeared in bad faith.

The initial element is made by giving a valid trademark registration. A federal registration proves the very first element without requirement for further proof trademark use.

Contrast the effect where there’s no registration and the individual, albeit well-known, loses.

David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514. David Pecker, CEO of yank Media, was unsuccessful in proving that they had “used his personal name for the goal of advertising or promoting his business and the sale associated with a goods or services.” Joacim Bruus-Jensen v. John Adamsen, WIPO Case No. D2004-0458.

Anna Nicole Smith c/o CMG Worldwide v. DNS Research, Inc., NAF Case FAO 0220007

“[T]the mere fact of getting an excellent career being an actress, singer or TV program star does not provide exclusive rights on the utilization of a reputation underneath the trademark laws. The instances require a clear showing of high commercial value and significant recognition with the name as solely that regarding the performer.”

Anti Cyber squatting Statute. The U.S. Trademark statute, Lanham Act § 43(d)(2) provides the U.S. District court for the Eastern District of Virginia can be purchased to launch against offenders global holding domains having an U.S. registry. This remedy is based upon in rem jurisdiction, an age old doctrine which allows a court to exercise jurisdiction in relation to the positioning of the property, and hails from settling property boundary and ownership issues, including notice to lost or unknown heirs. In the case of domains, utilisation of the § 43(d) anti-cyber squatting provisions can be acquired only if the plaintiff’s mark is federally registered with the U.S. Trademark Office.

The 1st use is clearly not objectionable. But as more people invest in the descriptive term, the cost climbs up making its use cost prohibitive. Competitors start to look for less expensive ways to get their message out using other terms, like the trademarks and individual’s names connected with related offerings.

Courts have ruled a competitor purchasing the mark, or locating a mark in metadata to secure optimization is liable for infringement under the thought of “initial interest confusion.” The controversial topic practice by Google of auctioning trademarks to competitors for sponsored listings may be the subjection of pending lawsuits. Google may be turning a deaf ear, leaving your client to pursue just the direct infringer. Allow me to share two examples:

A noted author’s name has purchased with a competitor in promoting 1 / 3 party’s books and seminars. The author and the publisher must pay Google more for working with their own names to promote as a result of competitive bidding by infringers!

A popular discount filing service for trademarks markets its services on the internet by buying trademarks owned by others. Our recent Google search of “XEROX trademark” turned up a sponsored ad by Legal Zoom, and that is purchasing the mark XEROX® like a key phrase to advertise its trademark registration services! Exactly what is the concern?

o The competitor is relying upon the excellent will existing in somebody else’s name to promote their product, thus gaining a free of charge ride to attract customers thus to their competitive product.

o The terms are bid upon through the Google auction process, forcing the author and the publisher from the books to bid against others to work with the author’s name! The competition drives up the bid price charged for an individual using her or his own name to market their own services, increasing Google’s profits and providing the trademark owner’s competitor which has a platform.

Next time you execute a Google search, note rankings for products which appear inside rankings aside from to the one you keyed in. Some competitors are routinely including also known competitor’s marks of their metadata to get ranking in the event the trademarked term is searched. It is deemed an example of infringement through initial interest confusion and is also illegal.

In sum, consider a federal trademark registration for goods and services sold and promoted under your name as being a poison pill for cybersquatters. Major corporations bring them to prevent unfriendly takeover attempts. Individuals ought to do exactly the same regarding unfriendly theft of domains. Over the web Age, in all probability you’ll be glad you did.

If you are in need of filing for a trademark on the internet, or need an affiliate marketing lawyer
then contact a intellectual property lawyer today.

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This article was published on 2010/12/29