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All
About Trademarks Many authors market their
services under a trade name or use websites to display, market and sell their
work. Some novelists use pen names or pseudonyms. What all these writers have
in common is the need to protect the goodwill and value of their most valuable
asset: their business name. To accomplish this, writers must understand an
admittedly lackluster part of intellectual-property law: trademark. What’s
a trademark? A trademark (TM) is
essentially a brand name: a word, phrase, symbol or design that identifies and
distinguishes the source of the goods of one party from all others. A service
mark (SM) is the same as a trademark, except it identifies and distinguishes the
source of a service, such as editorial consulting, rather than a product. (In
this article, the terms trademark and mark
refer to both trademarks and service marks.) Trade
name versus trademark Let’s say Melissa Q.
Freelancer writes promotional press releases and annual reports for
corporations under the name Corporate Words at Work. This is a trade name, and
Melissa has registered it under her state’s trade-name registration laws. Yet Corporate Words at Work
is not automatically considered a trademark or entitled to protection under
trademark laws. If, however, Melissa uses Corporate Words at Work to identify a
specific product or service produced by her business, the name (or logo) will
then be considered a trademark and entitled to protection, provided it meets
legal requirements for distinctiveness. For example, Apple Computer Inc. uses
its trade name, Apple, as a trademark on its products. At a minimum, Melissa
should use TM or SM next to her business name. How
do I acquire a trademark? You acquire trade and
service marks through consistent use of a mark. As with copyrights, there is no
requirement that you register the mark. There are significant advantages,
though, to registering your mark with the U.S. Patent and Trademark Office in
Washington, D.C. (http://wwwuspto.gov). The first advantage to
registration is confirmation that your mark is not being used by someone else,
potentially subjecting you to a
trademark-infringement claim. Once your mark is officially registered, the
registration acts as constructive notice to others who might use the mark. It
also gives you the exclusive right to use the mark in connection with your
particular goods or services. This is especially important with regard to
Internet domain-name disputes, because registered trademarks generally will give
you priority over anyone seeking to register a domain name using your registered
mark. In addition, having a registered mark entitles you to certain legal
remedies not otherwise available. Even if a mark is not registered, however, a trademark owner can sue
an infringer under a federal law that forbids use of “false designation of
origin,” but these cases are difficult, and damages are hard to prove. When
may I use the trademark symbols TM, SM and ®? The use of these symbols is
frequently misunderstood. Any time you claim rights in a mark, you may use the
TM or SM designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO.
But you may use the federal registration symbol ® only after the USPTO actually registers a mark, and not while an
application is pending. Plus, you
may use the registration symbol with the mark only on or in connection with the
goods and/or services listed in the federal trademark registration. How
do I register my trademark? The USPTO website contains
extensive help and FAQs on registration, and you can download forms and
applications.
The process is inexpensive relative to the protection it affords—the initial
filing fee is $325. You can even file for registration before you actually use
your mark if you have a bona fide intention of using the mark within the near
future. Your proposed trademark may
not be the same or similar to an existing mark in use for similar or related
goods or services; may not be on the list of prohibited or reserved names; may
not be generic (describe the product itself rather than its source; for
instance, “Computer Store” could not be a trademark for a store selling
computers); and must meet the USPTO standards for being distinctive. The issue
of distinctiveness is a major one, and beyond the scope of this article. Check
the USPTO and Internet legal sites, such as nolo.com, for additional information
about this. Bear in mind that the USPTO
can’t grant a trademark registration unless you use the mark across state
lines, in interstate commerce. Some ways to satisfy this requirement include
running an advertisement in a national magazine, working for an out-of-state
client or having a web page that customers in another state can access. If
you’re using your mark only within your own state, you can file a state
trademark application, at least until your business expands. Sounds simple, right? Before
you file, though, you must make sure no one else has previously developed and
used the mark. If this has happened, your application will be rejected by the
USPTO, and you will have wasted a considerable amount of time (trademark
approval or rejection often takes more than a year) and money. You can do your own search
using free web databases and public Trademark Office libraries, or you can hire
a search firm or a lawyer to do the job. Two search services are Thomson &
Thomson (www.thomson-thomson.com)
and MicroPatent (www.micropat.com), but
there are many other reputable search firms. Be certain you or your search firm
or lawyer searches not only previous registrations but also current applications
and trade publications. If you want the security of
having a lawyer handling your trademark registration, legal fees for a search
and an opinion letter are generally $500 to $1,000; additional legal fees for
preparing and filing an application will be in the same range. Can
a pen name be a trademark? Yes. If a pseudonym becomes
identified with the person using the name and/or the books and other products
authored under the name, it may be entitled to protection under trademark law.
If the pen name is also the name of a living individual, however, then you must
either obtain that person’s consent or file a disclaimer stating that the name
is not that of any real person. Pen names may also be entitled to protection
under state laws governing unfair competition and under the federal Lanham Act,
which prohibits “false designations of origin, false descriptions, and dilution.” Is
an Internet domain name the same as a trademark? No. Registration of your
domain name by the Internet Corporation for Assigned Names and Numbers (ICANN)
is separate from trademark registration. Yet you may be able to register your
domain name as a trademark, provided the name is being used in connection with a
site that is offering goods (such as books) or services. For information on
domain-name registration, see below, “How to Register an Internet Domain
Name.” What
if my domain name is similar to an existing trademark? This is a complex issue. In
general, legitimate use of a domain name may nevertheless be an infringement of
an existing trademark. In 2000, domain-name registrars (registration companies)
adopted the Uniform Domain Name Dispute Resolution Policy (UDRP), setting forth
certain priorities in the event of conflict between domain-name users. In
addition, Congress adopted the Anticybersquatting Consumer Protection Act (ACPA).
Under the UDRP and ACPA, trademark owners may be able to block the use of an
infringing domain name. How
to Register an Internet Domain Name Registering your domain name
(.com, .edu, .net, .org, .biz, etc.) is as easy as entering “domain
registration” in any Internet search engine—stand back and watch the hits.
Registration costs between $5 and $35 annually, depending on the company
with whom you register and the length of the contract, and not necessarily on
the service provided. Formerly a monopoly held by
one company (Network Solutions Inc.), domain-name registration is governed by
the Internet Corporation for Assigned Names and Numbers (ICANN), which has now
accredited dozens of registrars, the most popular being Network Solutions,
Register.com, NTT/Verio, Yahoo! and VeriSign. A registrar must check for
availability of the proposed name from a central database, then can enter the
new name into the database so it will be recognized on the web. You can get an official list
of these registrars at www.icann.org/registrars/accredited-list.html.
Be aware that some of these companies will give you the impression they
also must host your website; this is not true. Once you have your domain
registration, you are free to have your site hosted by any Internet service
provider (ISP). If you have an existing business name that isn’t trademarked,
it’s often wise to register all permutations of the name; for example, if your
business name is Pet Writers, you might register petwriters.com, petwriters.net
and petwriters.biz. It will cost you more per year, but you will prevent another
party from grabbing your business name. Daniel Steven is a lawyer practicing publishing,
entertainment, and media law in Rockville, Maryland. He helps writers with
contracts, general business law, employment issues, wills and trusts. He has
worked as an editor, counsel, and executive at a major publishing house and is
the author of two novels published by HarperCollins, plus a non-fiction book. He
can be reached at dsteven@publishlawyer.com
or by phone at 301-424-0677. |
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