Thursday, 14 October 2010

Why Trademark Registration has Become Critical in the Internet Age

Attorney Enrico Schaefer of Traverse Legal, PLC discusses the importance of registering your trademark with the USPTO and provides several trademark registration tips.

  • Trademark registration has become much more important with the advent of the internet because virtually every company's website is now global.
  • When trying to determine how to trademark a name, you should consult an attorney who specializes in trademark registration issues.  Trademarking your name correctly has become much more important in order to avoid attack later.
  • It is extremely difficult to find both a domain name and trademark available for registration given the shortage of words left in the internet age.

ANNOUNCER:  Welcome to Trademark Law Radio brought to you by Traverse Legal Internet Law Attorneys who can help you understand how to trademark a name and protect your brand reputation in the Internet Age.  Now here’s your host, Steve Quick. 

Steve Quick:  Hello and welcome to Trademark Law Radio.  My name is Steve Quick, and joining today on the phone is Enrico Schaefer, an attorney with Traverse Legal, PLC, specializing in Trademark Registrations, Brand and Reputation Protection, as well other Internet Law issues.  Hello, Enrico, and welcome to the program. 

Enrico Schaefer:  Thanks, Steve.  Glad to be here.

Steve Quick:  Enrico, I want to talk today about the importance of protecting your brand in the Internet Age. 

Enrico Schaefer:  Yeah, today is a brand new world compared to the pre-internet age, Steve.  The Internet has changed everything in terms of trademark protection, and that’s because of the ease of folks to have a web site, to go online, to post information online, to use your mark in a way that the rest of the world will see.  Essentially, there is shortage of words left in the world, and that’s because everyone who’s got a brand has got a web site and a domain name related to that brand.  So, whereas the Cherry Stop in downtown Traverse City may have only been a local or regional business, the moment that it put up a web site, it became an international business.  And there aren’t many words left in the world.  The other reason why it is so important today to get a trademark registered with at least the United States Patent and Trademark Office, if not other foreign trademark offices, is because it’s easy for competitors to imitate you online.  So, a competitor can register a variation of your brand as a domain name, a competitor can use your name on their own web site in order to divert your customers to them and do a variety of different activities which are all designed to steal your customers.  The third reason why registering your trademark is so important in the Internet Age is that there are some really bad people out there on the Internet, and they’ll seek to use your brand in order to do their own level of harm to folks using malware, cybersquatting, trying to get credit card numbers from your customers, these types of things.  So, online brand protection, online reputation protection is critical, and that starts with registering your trademark. 

Steve Quick:  So, when you’re working with your clients in helping them understand how to trademark a name, what are the tips you provide them?

Enrico Schaefer:  The tips are pretty straightforward, Steve.  Number one, you need to hire trademark registration and trademark protection experts.  You don’t want to dabble in some of these self-help services like Legal Zoom or other cut-rate operations that are essentially trying to cookie cutter your trademark registration or protection process.  Trademarks are always fact-specific and they always depend on who you are as a company and what your goals are, so you need customized services in terms of both trademark registration and trademark protection.  So, hire trademark experts who are going to help you along the way.  The second thing is that just because you get your trademark registered, doesn’t mean you win.  Registration is just the first step in the process.  And the third is that trademark value is directly tied to not only trademark registration, but post-registration activities such as monitoring online uses of your trademarks by third parties and enforcing your trademark rights against people who are infringing your trademarks in the online world. 

Steve Quick:  Can you give us some examples of how trademark registration can help protect you on the internet? 

Enrico Schaefer:  Sure, there are dozens and dozens of different ways, Steve.  The most common call we get is when there’s been a falling out between, say, partners in a company, or the web development company that builds your website and registered your domain and yourself, they say that they’re owed a lot of money and you contest the amount that they’re putting in play.  If someone else controls your domain name and all of sudden takes over your web site, whether it’s an ex-partner or your web employee or a third party, the number one thing you need in order to get that domain back under your control is a trademark.  And by registering your brand as a trademark, you’re going to be in a much more powerful position. The second thing that we see an awful lot on the Internet is the phenomena of cybersquatting.  Cybersquatting is when a third party registers your brand as a domain name or a variation of your brand as a domain name in order to divert your customers.  Again, the number one thing you need in order to protect yourself and shut down those cybersquatting websites is a registered trademark.  The third thing is malware.  We’ve all seen the spam that comes into our email inboxes inviting us to provide our credit numbers or go to a web site link, a hyperlink which may have viruses or other malware installed in it.  And if they happen to be using your brand in order to attract those customers, it’s going to make you look really bad and potentially provide an avenue for your customers to have their credit cards stolen, etc.  So, trademark registration is both a starting and ending point of your online brand protection.  You need to get your trademarks registered, and you need to protect those marks online. 

Steve Quick:  So, what is the return on investment for a company that seeks to trademark a name and goes through the trademark registration process? 

Enrico Schaefer:  Great question, Steve.  In many instances, your trademarks are an incredibly valuable asset to your company, meaning that if anyone were ever to try and buy your company, if you were to sell your company, if you were to take investors in your company, a significant part of the overall value is going to be your brand, is going to be your reputation.  And how valuable your brand is depends on such factors as, whether or not you’ve got a registered trademark, how many countries you’ve registered your trademark in, and how well you’ve protected that trademark from infringement.  So, we’ve seen instances where upwards of 60 or 80% of the value of the company was actually the trademark itself.  So, it can be an incredibly valuable part of your business and you need to treat it as an investment.  The return on investment for getting trademark registration and putting a trademark protection system in place can be huge.  For instance, it costs about $1,500 to get a trademark clearance opinion from an attorney and then run your trademark through the registration process at the United States Patent and Trademark Office, and that includes the filing fees to the trademark office.  So, for $1,500 that registration is going to bump the value of your marks up appreciably.  It’s probably one of the easiest returns on investment propositions that any company will ever have. 

Steve Quick:  Well, thank you very much for joining us today, Enrico, and explaining the importance of protecting your brand in the Internet Age. 

Enrico Schaefer:  You’re welcome.  It’s my pleasure being here, Steve. 

Steve Quick:  You’ve been listening to Trademark Law Radio.  My name is Steve Quick.  Have a great day.

Announcer:  This netcast is powered by Vertio.net.  Vertio.net, optimizing your brand and web presence worldwide.  Vertio.net. Be Heard.  Be Seen. Be Found.

COMMENTS

Registering a company has become very important these days. It helps the company to have a legal hold, it lets company to have its own website. So it has become very important in the present scenario. Nice article, the information will surely make a difference.

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Trademark Infringement: Cease & Desist Letter Help

  • Trademark Threats: 6 Reasons To Take Them Seriously
    Trademark attorney Enrico Schaefer explains what you should do when you receive a trademark cease and desist letter. Listen as he reviews 6 reasons why you should take any trademark threat letter seriously, and what you should do when you receive a cease and desist.
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How to Trademark A Name?

  • How to Register a Trademark - USPTO Stopfakes.gov
    You can establish rights in a mark based on legitimate use of the mark. However, owning a Federal trademark registration on the Principal Register provides several advantages ... here is how.
  • Types of U.S. Trademarks - USPTO Stopfakes.gov
    Specific types of trademarks include: Service marks which identify and distinguish the source of a service rather than a product; Certification marks are used by someone other than its owner, to certify quality or other characteristics of such person's goods or services; Collective marks are trademarks or service marks used by the members of a collective group or organization.
  • Definition of a "Trademark"- USPTO Stopfakes.gov
    A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
  • How To Copyright and Trademark a Catchphrase!
    Wondering how to trademark a catchphrase? You should also think about how to copyright a catchphrase. Some intellectual property can be protected by both a trademark and copyright registration.

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