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Trademark Tutorial

    Trademarks are yet another form of intellectual property (IP) and in the U.S. protection is provided both by Federal statute (i.e. the Lanham Act) and state statutory and common law (see What Law Controls?). Under the Lanham Act, a seller of goods and services must register with the U.S. Patent and Trademark Office (USPTO) in order to get the desired protection. The registration with the USPTO can be done completely electronically and the agency's website provides many useful tools for conducting trademark searches, as well as providing other helpful information that guides the registration process. That said, the casual user should be forewarned that there is a "hierarchy of complexity" with respect to various Federal IP registrations, with copyright residing at the low end of the complexity hierarchy and patents at the high end. Trademark registration falls somewhere in between.

    Trademarks are generally distinctive symbols that sellers use to identify their goods or services. The initial purpose was to provide "clarity in the marketplace" (see History) by allowing consumers to readily recognize (via the mark) the source of the goods. While trademarks continue to serve this purpose, today they also constitute an important part of a "business/corporate identity strategy" as well as playing a significant role in marketing campaigns and brand building initiatives. The explosive growth of the Internet has unfortunately had the side of effect of providing incentives for the unscrupulous to "hijack" and otherwise abuse the exclusive rights of trademark holders through insidious, and often difficult to detect, schemes. Where appropriate this tutorial will illustrate the pitfalls that the unsuspecting and unwary may encounter.

    Unlike copyright, which attaches when the expression is captured in a fixed and tangible medium (see Copyright Tutorial), a trademark must be "used in commerce" in order for the "bundle of rights" to attach. In general, the holder gets an exclusive right to use to mark for the type of good and services under which it is registered, and the right to bring a cause of action against sellers that use marks that are "substantially similar." This latter point gives rise to complexities when attempting to select a mark. It is not sufficient that the mark be unique, it must also not be "substantially similar" to an existing mark in its class. As discussed in other sections of this tutorial, one way to mitigate this problem is to use a completely arbitrary and "made up" mark (e.g. analogous to the naming conventions, and trademark selections, of many so called "Web 2.0" companies). While this does not eliminate the legal issue (i.e. a search is still required) it does go a long ways towards reducing the risk.

As Internet Lawyers we focus on cyberlaw trademark issues.

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