Top Ten Internet Legal Mistakes-Privacy

9. Privacy Breaches

Liability: Failing to properly inform internet visitors of your company’s privacy policy, or using confidential information in a manner not stipulated in the policy, could lead to severe repercussions. Although the monetary damage may indeed be high, the majority of the liability typically stems from the bad publicity surrounding such breaches. While many internet privacy breaches go undetected and are, therefore, not associated with any direct liability, large-scale or egregious breaches can quickly devolve into a financial and public relations nightmare.

Solution: Companies must post a detailed privacy policy which dictates the disposition and security associated with various types of private information collected from users. As it is very difficult to retroactively broaden an internet privacy policy once information has been collected, it is critical not to adopt a policy which is too restrictive in scope. Your lawyer can even word your privacy policy to address how you might use the collected information in the future. Companies must also be sure that internet privacy policies comport with all legal and regulatory restrictions pertaining to the particular type of business, the type of user providing the information and how the company will use the information.

Top Ten Internet Legal Mistakes-Disclaimers

10. No Website Disclaimer

Liability: Liability associated with having an ineffective website disclaimer depends on the type of disclaimer needed and the resulting damage. Problems arise when a website reasonably leads someone to believe something that ends up causing them damage. If the website causes them to forego an opportunity or take some action based upon information provided on the website, the website owner can be held liable. Disclaimers typically relate to errors or omissions on the website, third party links and the website not constituting an engagement of any kind.

While it is a good idea to include all necessary disclaimers, too many disclaimers can lead to additional problems. In theory, nearly every legal issue could be the subject of disclaimer. Including irrelevant, redundant or non-applicable items in disclaimers can diminish the legal effectiveness of the most important disclaimers. This type of overkill can potentially destroy the liability insulation the disclaimers were designed to provide.

Solution: While some websites may not need any disclaimer, others may need very broad and detailed disclaimers. Determining the appropriate metes and bounds of the desired disclaimer, without going overboard is often difficult. Drafting proper disclaimers requires a thorough review of the information contained on the website, as well as the circumstances surrounding the collection, distribution and presentation of information in association therewith.

While there are millions of examples online, drafting a disclaimer that fits your company precisely typically takes an attorney knowledgable about your particular website and well versed in the dos and don'ts of online disclaimers. If you have any doubts about the applicability of your website disclaimer, contact your lawyer. The value of a professionally drafted online disclaimer in a lawsuit far outweighs the relatively minimal (in mostcases) cost. Tomorrow. 9. Privacy Breaches.

Should I Patent My Invention?

Yesterday we looked at whether you can patent your invention. This is a completely different question than whether you should. Can asks whether your invention meets the statutory criteria. This question is easily answered by even the greenest patent attorney. Should asks whether it is worth the money. Even the most skilled patent attorney will have difficulty with this question. Why? Well the answer to the first question relies on the patent attorney's skills at drafting, whereas the second relies on your skills as a marketer.

While no one can tell you for sure whether a patent is worth the money, your patent attorney may be able to answer many of the following questions, which will make your decision much easier:

1) How much will it cost to patent my invention?
2) How long will it take to get a patent?
3) What is the closest competitive item on the market?
4) Does my invention provide enough of an advantage over the closest competitor to demand a larger profit in the market?
5) How broad will my patent be?
6) How close will competitors be able to get to my patented product and still
not infringe?
7) Do I have the resources to market the product myself?
8) Do I have the connections to sell or license my patent?
9) Do I have the resources to defend my patent in court against an infringer?

The answers to these questions determine the costs and benefits needed to make your business decision. Most new clients ask the first two questions, but none have ever asked me the remaining seven. Your patent attorney will not have the answers to all of these questions, but likely will be able to assist in finding the answers.

Patent attorneys are there to help you and provide you with answers. Left to their own devices, however, they will answer questions for hours on the minutia of patent law (We are kind of funny that way). It is your job to get answers to the questions that interest you, rather than answers to the questions that interest the patent attorney. Deciding whether or not to patent an invention is not an exact science, but it is much easier with the right information.

Can I Patent My Invention?

That is the question I get most often. A client walks in, explains their new invention and then asks me whether they should try to patent the invention. Well, if time and money were no objects, the answer would be quite clear. “Yes” I would tell them all, “Why not?” Unfortunately, in the real world, time and money are considerations. More often than not, the question of whether to try to patent an invention is a business question than a legal question. You simply weigh the costs and benefits of patenting or not patenting and make a business decision based upon all of the available information.

A patent is merely a "safe" in which to store your valuables, your intellectual property. Whether you put the Hope diamond in your safe or a lump of coal is up to you. It depends on how good your invention is but, more importantly, how efficient and exhaustive your marketing efforts are. Researching the industry, tailoring your invention to that industry, getting the invention in front of the right people and delivering an effective presentation are all critical factors. Spending years spinning your wheels on the same marketing routes that get you nowhere or spending ten hours a year making calls to the right people are not going to get you a licensing deal. It takes time and efficiency (and a fair bit of luck) to turn your idea into gold. More often than not, overnight success takes years in the making.

The patent attorney’s job (or at least it should be) is to get you the broadest coverage patent for the least amount of money in the least amount of time. Patent attorneys are much more concerned with how can you patent your invention, than whether you should patent your invention. Use your patent attorney to find out:

If your invention has the potential for patentability:
1) New-not ever having been done before;
2) Useful-Not typically an issue; and
3) Not an obvious combination of existing products or methods

In addiction to being new, useful and non-obvious, the invention must fall into one of the following categories:
1) Process-Either real (assembly line) or virtual (one click online
shopping);
2) Machines- Either real (computer) or virtual (software-based machine);
3) Manufactured Products-bottle caps, hats, etc.;
4) Compositions of Matter-drugs, chemicals, etc.; or
5) Any improvements to the foregoing.

If your invention meets these criteria, the patent attorney will probably, and should probably, tell you to move forward in the patent process. The patent attorney, however, is telling you whether you can patent your invention. To find out whether you should patent your invention you need to different questions. Tomorrow. Should I patent my invention?

Is Your Invention Promotion Company Scamming You?

If an invention promotion comany contacts you, rather than the other way around, you should be immediately suspicious. Use this checklist to reduce the likelihood you are dealing with a scammer:

1) Check the company out against the United States Patent and Trademark Office complaint list;
2) Google the name of the company and the word “fraud” or “scam” to see what others are saying about the company;
3) Find out, in writing, how long the company has been in business. Be suspicious of any company less than two years old;
4) Get a written report listing during the last two years:
a. How many clients the company has had?
b. How many of those clients are subsidiaries of, or otherwise
affiliated with the company?
c. How many license agreements the company obtained for non-affiliated
clients?
d. How many clients received more royalties back from the company than
they paid the company?
e. How much of the company’s profit derives from non-affiliated client
royalties, as opposed to the up front fees paid by clients?

Typically, an invention promotion company will either refuse to give you this information in writing, or will give you different information in an attempt to cast their company in a better light. If this is the case, run, do not walk to the nearest exit. Unfortunately, there are a lot more inventions chasing dollars than dollars chasing inventions. If there was a company that could transform any invention into a profit center, the company would have tens of thousands of inventors on their doorstep the next day.

So how do you market your invention? You are the best marketer there is. You have to leverage your knowledge and excitement about the invention into sales. Before telling anyone about your invention, you should at least speak with a patent attorney to determine if the invention is patentable and what the cost of obtaining a patent might be.

After that, the best thing you can do is find an inventor who has been successful with a similar product and seek their assistance. If you cannot find a successful inventor to assist you, join a local inventors group and share your situation with others in the same situation. Turning a profit on your invention is more a question of action and perseverance than luck. More often than not "overnight" success comes from years of doing the legwork and research needed to meet the right people and make the best pitch. Good Luck!

Invention Promotion Scams

So, you’ve come up with the latest greatest flatulence powered toy rocket and you are all ready for people to start beating a path to your door. Sounds simple. You try to market it to a few manufacturers, but they apparently do not have the proper vision to see the boon to mankind your rocket really is. Just about that time, you get a letter from an invention promotion company. The pitch goes something “Pay us $10,000, we will market your product and take 50% of the profits. We really want the $10,000, but if you wish, you could pay us $500, but then we get 75% of the profit.”

You figure “Great. I will go with the second option. If they are going to put $10,000 of marketing behind me, they obviously feel that the only way they can recover their costs is to actually make a huge profit.” The problem is that all they want is your $500. Over the course of thousands of inventors, the $500 per inventor really starts to add up. Plus, once they have the inventor hooked, they can often squeeze a little more good money out to chase the bad. Now you are $500 or more in the whole and have wasted two years or more spinning your wheels.
Are there any good invention promotion companies? Well I am sure there are, but the odds that they would contact you, versus the other way around would be quite remote.

The first thing to do with any invention promotion company is to check them against the United States Patent and Trademark Office complaint list. As you can see, companies such as Davison & Associates Inc., Invent-Tech and Patent Trademark Institute of America have garnered quite a list of complaints. If your company is not on the list, that does not mean that they are reputable; it may just mean they are very new.

Recently a judge has ordered defendants in a lawsuit, which included Davison & Associates Inc. to pay $26 million back to consumers and has forbidden the company from making false claims to draw in inventors. Lydia Parnes, Director of the FTC’s Bureau of Consumer Protection, noted “This outfit is typical of invention promotion scams . . .They touted their ability to turn inventors’ ideas into profitable products, but fewer than one percent of the customers who invested in their services got royalties from their patents that amounted to more than they paid the promoters.”

Invention promotion firms are notorious for scamming inventors. Iowa has even enacted specific laws relating to invention promotion companies "to safeguard the public against fraud, deceit, imposition, and financial hardship, and to foster and encourage competition, fair dealing, and prosperity in the field of invention development services by prohibiting or restricting deceptive practices, misleading advertising, onerous contract terms, harmful financial practices, and other unfair, dishonest, deceptive, destructive, unscrupulous, fraudulent, or discriminatory practices which threaten the public welfare." Iowa Code Section 523G.2 (2005). The law mandates specific disclosures and warnings invention promotion firms must provide inventors when providing services in Iowa. Not surprisingly, I am not aware of any invention promotion firms providing services in Iowa. Tomorrow. How to spot a scam and turn a profit.

Outsourcing to Iowa

A good friend of mine, Rush Nigut, blogged today about outsourcing legal work to Iowa. Rush notes that for the same reason you outsource anywhere (cost, availability, expertise) you would be well advised to investigate outsourcing your legal work to Des Moines, Iowa. All of these reasons are especially true when it comes to outsourcing your patent work. Des Moines patent attorneys have the same or better credentials than most attorneys in larger cities. Des Moines patent attorneys, however, typically have billing rates less than half of their big city counterparts.

Des Moines patent attorneys accept substantially lower billing rates in exchange for an improved quality of life. The same reasons that make Des Moines attractive to patent attorneys should make Des Moines patent attorneys attractive to you. Do you want your patent attorney concerned about maximizing profits, or orchestrating the “big” picture? Do you want your work shuffled off to a law clerk? Do you want your patent attorney buried behind a wall of office staff? Or do you want the senior patent attorney actually doing work, at a reasonable price?

If you are looking for top quality, low cost, accessible patent work, consider outsourcing to Iowa. You may find yourself pleasantly surprised.

Lawyer Coloring Book

Lawyers are often funny, but all too often in more of a strange way than a “ha-ha” way. In an effort to show that lawyers do have a self-effacing sense of the sublime, the witty folks at Tech Law Advisor have put together a Coloring Book for your perusal. If for some reason you do not find this coloring book the least bit funny it could be for one of two reasons: 1) that it simply hits too close to home; or 2) that you have no frame of reference. In the first case I have no advice, but to consider doubling up on your lithium. In the second case, I would relish in the satisfaction that the aplomb with which you led your past life led karmic justice not to place you as a junior law partner in this one.

Domain Namenappers

You did not hear it here, but some domain name registrars have been accused of pumping extra money out of indecisive domain name registrants. How it works is this. You, as the looky-loo registrant go to a domain name registrar and query to see if the domain name is available. You are in luck! The domain name is available. You tell your people, get approval to buy and return to the registrar the next day to buy. What? Now the name is “parked”. You can still buy it, but now at a greatly inflated price.

This scenario appears to be happening far too often to chalk up to coincidence. More likely, the registrar, seeing someone is interested in the domain name, parks it to reap a tidy profit when the interested party returns. If the registrar is a bit sneakier, the registrar might just slip your desired domain name information to a third party for a fee. The same net result, but the registrar claims ignorance.

Does this problem merely reflect the collective unluckiness of a multitude of would be registrants, or actual deviousness on the part of one or more domain name registrars? Does it matter? If you are interested in purchasing a domain name, is it really worth taking the extra time and trouble to be prepared to make the domain name purchase upon your first visit? The real question is, given the low cost of new domain names and the exorbitant cost of “parked” domain names, can you afford not to?

Internet Patents

Prior to 1998, patents were limited to things and methods for making or using things. On July 23, 1998, everything changed. That is the date the United States Court of Appeals for the Federal Circuit, the de facto "Patent Supreme Court," ruled in their State Street decision that a computer program may be patented. Now computer programs had been patented before, but only to the extent they manipulated something in the physical world: shut off a light, started a washing machine, or started a nuclear war. It was generally thought that methods of doing business were not protectable under existing patent laws. Under this new decision computer programs are patentable, even if all they do is manipulate numbers. This ruling not only applies to thousands of new computer programs, but also to thousands of methods of doing business online as well.

Subsequent to the State Street decision, business entities throughout the world have filed thousands of "business method" applications relating to Internet commerce. These filers hope to obtain exclusive rights to certain types of online transactions. Some of the most notable online business method patents include those issued to Amazon.com for secure credit card processing, Priceline.com for reverse auctions, Lycos for its spider technology, and Cybergold for paying individuals to examine advertisements. As a result of the landmark State Street decision, the United States Patent and Trademark Office identified several problems with its existing patent application review process.

Typically, if an inventor files a patent application on a novel mousetrap, the Examiner accesses the mousetrap patent file and compares the new application against the existing technology. The problem associated with business method applications is that, prior to 1998, no such applications were allowed. When an Examiner received a patent application for such a business method the Examiner attempted to access the associated business method patent file only to find, not surprisingly that the file was empty.

The empty file did not mean that the idea had never been practiced, only that there were no patents covering it or anything like it prior to 1998. Since the Patent Office had not adopted an efficient process to examine existing technology outside of the Patent Office, many such applications were summarily allowed. This included patents covering combinations of elements that had been in the public domain for many years.

In an attempt to address the problem of business method applications issuing on public domain materials, the United States Patent and Trademark Office has now adopted new protocols to more thoroughly examine such applications. These protocols appear to be eliminating the issuance of overly broad Internet related patents. They have not, however, retroactively eliminated any erroneously granted “overbroad” Internet patents. Additionally, these new protocols are slow and costly.

Unfortunately, for many information technology related businesses, these new protocols have proven too expensive and time consuming. Either the business runs out of money before the process is completed, or the patent fails to issue before the technology is outdated. The United States Patent and Trademark Office is working to correct these deficiencies, but it is unlikely the process will be streamlined anytime soon.

If you have a business method you wish to protect, all is not lost. Even if your patent application gets bogged down in the Patent Office for several years or even if the Patent Office eventually denies your patent application, you still have a safe bet of maintaining patent pending status for several years. Depending on how you file your patent application, it is possible to keep the filing date and the contents of the patent application confidential.

Confidential filing makes it difficult for competitors to determine if your pending patent will issue tomorrow, or three years from now. This uncertainty may be just enough to slow down a competitor or deter the competitor from entering the market altogether. Business method patents can be very beneficial; they just require a little extra analysis to determine whether the potentially larger benefits outweigh the extra time and costs involved.

Patent Infringement

If someone copies the functional elements of a patented device, they may be found liable for patent infringement. To determine whether an infringement has occurred, a court looks at each “claim” of the patent. A patent may have any number of claims, but each claim is a one sentence description of the invention. If you were to look at a claim in the abstract, you would probably have no idea what the invention was. That is because the claim lists only the essential elements of the invention, just enough to define a combination of elements no one has ever combined before. If anyone makes, uses, or sells something with every one of the claimed elements, they infringe the patent. If they can avoid using even a single element of the claim, they do not infringe that claim.

The key therefore, and the point where skillful drafting determines the difference between a narrow patent and a broad patent, is to include only the minimum number of elements in the claim. This makes it difficult for a would-be infringer to eliminate any single element. In a patent infringement trial, the issue revolves around whether if each element of a patent claim, or its equivalent, can be found in the accused device. If the accused device does indeed include every element of the claim, the device infringes that claim and the infringer is liable to the patent holder for associated damages.

Regardless of the number of claims included within the patent, if the accused device infringes a single claim, the infringer is liable for the same amount of damages as if the infringer had infringed every claim of the patent. If the accused infringer is found to have infringed the patent, under the patent laws the court may grant an injunction and/or award the patent holder damages in the form or lost profits. By law, in no case may a court award compensatory damages which are less than a reasonable royalty. In the case of willful infringement, the court, by law, may award treble damages and attorney fees. Tomorrow, Internet Patents.

What is a Patent?

Patents protect inventions. Patentable inventions include new and useful processes, machines, manufactures or compositions of matter, as well as any new and useful improvement thereof. Patents can cover everything from a better mousetrap to a “one-click” online ordering system. Patent protection is not available under either state or common law. Patents give you no right to make, use or sell your invention. Patents merely allow you to prevent others from doing so.

Even though you obtain a patent, your invention may still infringe an earlier patent. Although rare, this situation typically occurs when your invention is an improvement of an existing patented invention. A patent on an infringing invention may still have substantial value. Obtaining a license from the prior patent holder or licensing the patent to the former patent holder are ways to overcome this unique situation and profit from such a patent.

Under federal patent law, an inventor can obtain the right to prevent others from making, using or selling a particular invention. While patents formerly remained in force for 17 years from the date of their issuance, patents now expire 20 years from the date of their filing. Bear in mind that a patent does not allow its holder to do anything, only to prevent others from utilizing the invention.

Patent protection is not available for all types of inventions. Patent law does not protect any ideas, any obvious combinations of pre-existing devices, illegal or immoral matter, pure research, or anything that is simply a novelty or curiosity. Items such as perpetual motion machines are summarily rejected by the United States Patent and Trademark Office.

Examples of patents can be found on the Patent Officewebsite. Patents typically consist of a brief description of the background and pre-existing technology, a detailed description of the preferred embodiment of the invention, drawings and/or flowcharts associated with the invention, an abstract of the invention, and one or more claims. The claims are each a one-sentence description of the invention which, preferably, are broad enough to differentiate the invention over any pre-existing devices or obvious combination thereof. The claims, however, must be narrow enough so as not to include any extraneous matter, which would serve as a limitation to the enforceable scope of the patent.

For more information on patents, check out Internet Laws Affecting Your Company. Tomorrow, Patent Infringement.

That Ol’ Black Magic

Apparently Google has plans to plans to cleanse itself of class-action “click fraud” liability to the tune of $90 Million. While that sounds like a lot of money, when you consider search engine marketing is a $4.2 Billion dollar a year proposition, $90 Million sounds like a steal. The number becomes even more manageable when you consider that Google may “pay” for the bulk of the settlement in “click credits” to advertisers.

What is “click fraud”? In the broadest sense, click fraud, or “black magic” as it was previously known, is charging advertisers on a pay-per-click basis for clicks on an onlie advertisement made maliciously by a non-customer. These clicks may be made by angry competition seeking to cost the advertiser more money, but are typically made by third party website owners. Google encourages these website owners to place ads on their websites. Google then pays the website owners based upon how many times people click on the ads. More clicks = More money.

The problem arises when the website owner clicks on the ads numerous times to increase revenue. There are even “click farms” where people are paid to click on the ads repeatedly. Although Google and other search engines vehemently assert they have protocols in place to reduce click fraud, even defining what is and what is not a fraudulent click can be daunting.

Understandably, search engines would rather pay a small fine than divulge information relating to their proprietary methods of detecting and defeating fraudulent click throughs. Not only would such a disclosure give their competitors a market advantage, they argue, but revealing detection methods would simply encourage malicious clickers to work around the detection systems. The most serious issue, however, is that this type of fraud, as well as other types of fraud, like fraudulent eBay transactions, generate astronomical amounts of revenue. Consumer advocates fear that if a company is faced either investing millions of dollars to decrease their revenue, or paying a relatively insignificant fine, there will be little motivation toward rigorous enforcement.

For the present, the only way for a company to deal with the situation is to monitor revenue generated from the search engine advertising and make a cost/benefit analysis as to whether the campaign is more or less valuable than other types of advertising. Once the cost exceeds the benefit, the company should drop the campaign and not worry about malicious click-throughs. As with any business model, once the cost of fraud starts to become a cost for the vendor, as well as the customer, the problem will resolve itself very quickly.

A Blockbuster of a Lawsuit Over Netflix

With the pocketbooks of millions of customers at stake, Netflix and Blockbuster are going head-to-head in court. The issue is whether the new Netflix patent, issued on Tuesday, covers Blockbuster’s online business model. Netflix is no stranger to litigation, having settled a class action lawsuit for allegedly punishing high volume users, by sending them less popular movies, something which led me to cancel my own membership several years ago.

One particularly interesting aspect of the case is Netflix’s selective enforcement of the patent against Blockbuster, when other entities seem to be doing the same thing. Blockbuster has already attempted to spin the lawsuit as confirmation of Netflix’s fear of Blockbuster’s potential dominance of the market. A more likely explanation might be that all the press surrounding the lawsuit may benefit both companies more than the litigation costs, which are shaping up to be astronomical.

The stakes involved are large enough to spell the beginning of the end for either online operation. If Netflix were to succeed, the royalties owed by Blockbuster could be devastating; especially if the judge were to treble the damages and award attorney fees as allowed under the patent statute. If Blockbuster were to succeed, Netflix customers, disgruntled over being previously “throttled” at the hands of Netflix, may seek less costly, more responsive providers that will surely emerge once the threat of patent infringement has passed.

My hope is that this lawsuit will be a lightning rod for issues pertaining to online “business method” patents. My fear is that the lawsuit is merely a relatively cheap marketing tactic by both companies. The pessimist in me predicts that the suit will settle once litigation costs threaten to overshadow the marketing value.

There’s a New Marshall In Town

Marshall, Texas, that is. Since his appointment to the Federal bench seven years ago, Judge T. John Ward of the U.S. District Court for the Eastern District of Texas has tried over one hundred and sixty patent trials. Most federal judges see less than one their plate a year, and still treat that one like the liver they are waiting to dish to dog as soon as mom turns her head.

Attorneys for patent holders all over the country flock to tiny Marshall, Texas. Why? Well for a start, nearly ninety percent of the rulings are in favor of the patent holder. Another reason is the “rocket docket” Judge Ward demands makes litigation much faster and affordable for small inventors. Bear in mind that the “nearly ninety percent” number does not include the large number of defendants who settle, rather than face Judge Ward’s wrath. Given the average attorney fees associated with patent litigation at over one and a half millions dollars per side, many defendants choose to roll the dice and try to bleed the patent holder dry before a jury ever hears the case.

Judge Ward’s ruthless efficiency, detailed knowledge of complex patent concepts and digital filing system combine to make Marshall, Texas almost a boutique court. Patent cases that take three or more years to be heard in other parts of the country (I am presently involved in a patent case that was filed three and one half years ago and do not even have a trial date), take two years or less in Marshall. It used to be just over a year, but the pace of filings has outpaced even Judge Ward’s meticulous ability to govern the influx of big dogs from around the world.

Residents of Marshall welcome the big dogs to their small town. With legislation hogtying personal injury awards, personal injury cases, along with the lawyers and their money have dried up. While other Texas cities are feeling the impact, Marshall has become the new “it” destination, known and feared by infringers everywhere.

One problem associated with the system is that it attracts “patent trolls”, companies that purchase patents, but never manufacture them. The sole purpose of the patent troll is to wait until a large company accidentally starts using a technology in the patent troll’s vast portfolio and demand a settlement. What better place for a patent troll to up the ante than Marshall, Texas? Whereas large companies avoid such suits for fear of a retaliatory infringement counter-claim, patent trolls make nothing, and are therefore immune to an infringement countersuit.

Will another city step in to take the title away from Marshall? With the disdain most federal judge’s show for patent cases, Marshall’s title seems safe for the time being. Will Marshall become a Mecca for patent trolls or struggling inventors? Only time can tell. Whatever happens though, there is no doubt that this little town will remain quite big in the eye of patent holders for quite some time.

Beyond Mere Words

Trademarks are not limited to words, but include logos and symbols. Trademarks may even be color, in the case of pink fiberglass, sound, as is the case with the NBC chimes, or scent, in the case of floral scented yarn. Trademarks also take on special attributes when used on the Internet. There are currently tens of thousands of trademark applications pending for .com domain names, animated browser icons, “e” marks (for electronic), “i” marks (for Internet), and “o” marks (for online) marks.

As with any other type of trademark, the types of protection available range from common law protection, which attaches to a protectable mark as soon as it is used in association with a good or service, to state law registration, to federal law registration. While state law protection provides some added benefit over common law registration, it is no substitute for full, federal registration, which provides constructive notice of the trademark rights and the availability of treble damages and attorney fees in the case of willful infringement

In determining whether to register your domain name as a trademark, it is important to be sure that your domain name is not merely an address, but acts as a source identifier for your particular good or service. To be registered as a federal trademark, the domain name must not primarily be generic or descriptive. The domain name must also not be offensive or primarily a surname (unless it has demonstrated a “secondary meaning” in the marketplace).

When registering your domain name, it is important not to register the http://www portion of your domain name. It is also advisable to leave off the top-level domain name, such as .com or .net from any registration. Such top-level domain names do not add additional uniqueness to your registration sufficient to overcome a similar mark, but may be held to limit the scope of your protection against subsequent infringers.

Are all Trademarks Created Equally?

The answer is “no”. The protection afforded a particular trademark depends in large part on how descriptive the trademark is of the particular product or service provided in association with the trademark. For example, if the product is apples, the trademark “APPLE” would be deemed “generic,” and would not be protectable at all. Similarly, the trademark “RED” would be deemed “descriptive,” and would also not be protectable. The trademark “DEVIL’S FRUIT,” however, would be “suggestive,” and would, therefore be protectable. You do not know what the product is from the name, but after you hear the product, the trademark makes perfect sense. The trademark “ROYAL” would be “arbitrary,” the mark “QWIPPLE” would be “fanciful,” and both would be protectable. The question to ask is “would a competitior likely use the word in their marketing of the product? If so, the trademark is likely protectable, if not, then the trademark is likely not protectable.

Descriptive trademarks fall into two categories–the descriptive and the merely descriptive. Descriptive trademarks, while often not registerable in and of themselves, may be registerable if the owner can demonstrate that consumers have attached a “secondary meaning” to the trademark. Secondary meaning attaches when, in the minds of consumers, the trademark is associated more with the particular product than with the word’s ordinary meaning. If a trademark is determined to be “merely” descriptive, however, the trademark is not protectable. The courts have determined that in such cases the descriptive nature of the trademark is such that no amount of advertising or sales would be sufficient to override the consuming public’s descriptive association with the trademark. Tomorrow . . . Beyond Mere Words.

What is a trademark?

A trademark is a word, name, phrase or symbol used to identify the source or origin of a good or service provided through commerce. Trademark rights arise through USE of the trademark in association with a good or service. Without use, there is no trademark.

As soon as a trademark is used in commerce in association with a good or service, common law rights to the trademark attach. These common law rights can be effective in obtaining an injunction or a judgment against an infringer, but do not provide all of the benefits associated with state or federal registration.

State laws provides both trademark registration and enforcement. These state protections, however, are more costly, yet often not much more valuable than common law rights. Accordingly, most trademark owners opt for either more inexpensive common law or more valuable federal law protection.

Federal trademark registration provides several benefits, including treble damages and attorney fees for willful infringement. Federal registration allows use of the ® symbol and provides national constructive notice of the owner’s trademark rights. While federal trademark registrations must be renewed every ten years, trademark rights themselves are indefinite, lasting until the mark becomes abandoned, or in rare cases, generic. Tomorrow, are all trademarks created equally . . .