Why You Should Register Your Trademarks

It is true that you can legally protect a trademark the moment you start using it. So why go for the extra effort to get a federal registration? Here are a few reasons:

1. Increased Certainty. Once registered, you can be relatively certain that you actually have a trademark. If you are relying on common law rights only, you may not actually have something that can be protected. It may be too generic, or already in use or have a number of other problems that will prevent you from actually enforcing it.

2. Automatic protection in all 50 states. If you don’t register, you only have a trademark in the areas you are using it. If you are in Minnesota and only sell in the upper Midwest, you may not be able to stop a competitor in California.

3. Customs enforcement. Once registered, you can record your trademark with US Customs who can monitor imports for infringing goods.

4. Monetary damages. Though they are not frequently awarded, it is possible to get damages based on the profits made by infringing goods.

5. It puts others on notice. Records at the U.S Patent & Trademark Office are public. Courts will assume that anyone using a similar name had known or should have known about your trademark.

6. You can more easily stop cybersquatters. If a domain name is registered that is infringing your name, one of the things you will have to establish is that you have trademark rights. Registration is not required, but it will be much more difficult to either in arbitration or in court without one. Same goes for search keywords, adwords, etc.

7. You have an asset to borrow against. Nearly every business needs to borrow money at some time. It is easier to do so if you have assets to use as collateral. A bank can much more easily obtain a security interest in a registered trademark.

8. ®espect. This one is a bit vague, but a company that knows and uses its legal rights signals to the world that it should be taken seriously. Trademark registration is one small piece of that, but its an important one.

Three Strikes Law Moves Forward in UK

I saw this article on Slashdot which was a bit troubling even for an attorney who has been on the plaintiff’s side of copyright disputes. Basically, the proposed “three strikes” law in the UK as well as similar ones in France and elsewhere would kick people off the internet if they are accused of infringing copyrights three times. That’s right even when simply accused.

This of course is a serious free speech issue which I don’t doubt others have picked up on already. The French law may be unconstitutional, and if a similar law were proposed in the US it would no doubt face First Amendment challenges.

The problem with efforts like the “three strikes” laws for the copyright holders is that its bad for business. Whatever business model overtakes distribution of physical copies in the future, the internet will be a major part of it. What those models will be is still uncertain. But it makes no sense to remove your customer base from the channels of commerce. It will be difficult to sell subscription services to people who cant access them.

Congratulations to the William Mitchell IT Moot Court Team!

I had the privilege of traveling to Chicago to coach Erika Overby and Bob Larson from William Mitchell College of Law at the John Marshall Law School IT and Privacy Law Moot Court this last weekend. Though our team didn’t advance, they did a great job and should be proud of the work they put in to their performance. Congratulations!

ISP ordered to pay $32 million for contributing to trademark infringement

This is an interesting story especially because the amount of damages awarded are so high. The ISP was a host to a number of sites that were selling counterfeit fashion goods like Louis Vuitton handbags. The ISP had claimed an exemption under the DMCA, however the court correctly concluded that that only applied to copyright not to trademark infringement. Something for any ISP or hosting service to keep in mind.

Here is the link.

Hat tip to @EvansIPLaw for posting a link to this article on Twitter.

Local branding or borrowing trade dress?

See this story from the SeattlePI.com.

This is a little bit of old news by now, but apparently Starbucks has been “localizing” its stores by minimizing the Starbucks branding an giving them an independent coffee shop look and feel. I have heard some people say that this is proof that Starbuck’s brand is toast, but I don’t think so. Its not uncommon for large businesses to diversify their products and sell them under different brands. Aldi and Trader Joe’s are the same company with different brands that reflect different portions of the grocery market.

Trade dress is the overall “look and feel” of a business. I can’t tell from the pictures, but if Starbucks did in fact copy the trade dress of another local store they could be in trademark trouble. The look and feel of a business can be protected as trade dress. See for example this classic case between two rival taco restaurants, Taco Cabana and Two Pesos. Anything that identifies your business, and your business alone can be protected because customers will come to associate that thing with your business. Names and logos are most popular, but trade dress counts as well.

Copyright damages and a new William Patry blog

There have been several commentaries on various blogs already about the jury verdicts against Jammie Thomas here in Minnesota and against Joel Tennenbaum in Massachusetts. My two cents: both verdicts were correct in that they both were infringing copyrights, but the amount of damages may be excessive when applied to individuals. We’ll see if the amount of damages can be limited on appeal.

That said it is great to see that copyright expert William Patry has started blogging again and he and Ben Sheffner have several great posts on these two cases and the broader issue of what is fair payment for creative works and fair punishment for infringing those works. Patry’s new blog is Moral Panics and the Copyright Wars.

ABA Annual Meeting – Cyberlaw Committee

I have been having a wonderful time this weekend at the ABA Annual Meeting in Chicago. I met a number of great people within the Cyberlaw Committee and have been learning so much from all the great presentations. In particular there were great presentations on bankruptcy and technology license agreements, anonymity and libel in social media, and the legal risks in cloud computing.