Innovation--Linking the World is the theme of World Intellectual Property Day today:
http://www.wipo.int/ip-outreach/en/ipday/2010/
 
 
According to U.S. News & World Report, cybersquatting (using a domain name that is similar to, or mimics, a brand’s domain name) is up 33% from 2007.  Cybersquatters can act against a brand in many ways, such as intentionally registering a domain name that constitutes a misspelling of the name of the brand or using the plural form of a singular name.   The resulting site or Web page may be leveraging your brand fame to collect pay-per-click ad revenues or to counterfeit your products.  The last thing you want to do is waste valuable business time sending legal notices to domain registrars, or filing complaints, or participating in costly arbitration proceedings.  To help avert the headaches associated with this kind of brand leveraging, think of all the permutations of your brand when reserving your domain names.  If you can come up with enough variations, you might qualilfy for a bulk rate purchase with your registrar.  Then re-direct all of the variants of your brand so that they point to your active domain name and Web site.  And what are your options against a cybersquatter if you fail to take any action?  There are two prongs of attack if a cease and desist letter doesn’t work.  The first option is to proceed with litigation against the squatter under the Anticybersquatting Consumer Protection Act.  The other option is to undergo arbitration of the domain name dispute with an agency such as the World Intellectual Property Organization in Geneva, Switzerland, the world leader in resolving domain name disputes.  And no, you don’t need to fly there to handle the dispute.  The required documentation may be sent to them in any manner permitted by their rules.  WIPO and other arbitral organizations like it have fixed fees for the undertaking of the arbitration, exclusive of other costs such as legal assistance in preparing the paperwork.  Costs of arbitration should generally be cheaper than litigation, but a suit under the ACPA allows for the opportunity to request and receive an award of damages from the squatter.  Conversely, arbitration only allows for the transfer or cancellation of the domain name in dispute.  Of course, regardless of the dispute resolution mechanism you choose, you’ll need to prove your case-–that is to say, that the disputed domain name is infringing on your trademark rights.
 
 
How much is too much?  When is it okay to parody a competitor’s trademark?  Unfortunately, there are no easy answers to these questions.  As with so many things in life, it just depends: on the state of law of the jurisdiction you live in;  on your own scruples, or that of your ad agency; on the message being delivered, whether public-service oriented or commercially driven.  Be sure of one thing:  to the subject of the parody, it likely won’t be a laughing matter.
 
 
Turnaround time in the U.S. for a straightforward, uncontested trademark application usually averages 12 to 14 months (or less, if you’re very lucky).  An interesting fact for you to file away is that the fastest turnaround time for registration is in—drumroll, please—Benelux.  An expedited registration procedure there will get you a registration number in a matter of days.  Thereafter, the mark could still be refused by the registry or opposed by a third party, but if you need to establish rights quickly somewhere, Benelux may be for you.

For more information on trademarks, read the book, Understanding Trademark Law: A Beginner's Guide, published by Oxford University Press.
 
 
By Linda Tancs

Here are seven steps in the U.S. trademark application process to use as a reference guide for monitoring the progress of a filing:

1.  Upon receipt by the PTO, the application will receive a filing date (if the minimal filing requirements discussed below are met) as well as a serial number that should be used in all correspondence with the PTO.

2.  The application will be forwarded to an examining attorney in the PTO in a number of months (the length depending on the staffing of the PTO at the time).  The examiner will review the application for compliance with the Lanham Act, the federal law governing trademarks.  Notwithstanding any conclusion by the applicant or its counsel that the mark is registrable, the application is ultimately subject to a determination by the examiner whether he or she believes that the mark can be registered.  If the examiner refuses registration of the proposed mark, a communication will be sent to the correspondent listed in the application requesting a response to the examiner’s conclusions within a six-month period, during which time a response should be filed unless the application will be abandoned.  If the application is not refused, or any objections to it are resolved, then the application will be approved for publication for opposition.

3.  All trademark applications are published in the Trademark Official Gazette.  A searchable database of Gazette entries is located at http://www.uspto.gov/web/trademarks/tmog.  Otherwise, a subscription can be made for paper editions.  This publication serves to put third parties on notice of the rights being claimed, and many parties, or their representatives, search the Gazette frequently for potentially infringing marks.  During the thirty days following publication of the application, anyone who believes that they may be harmed by registration of the mark may file a proceeding at the TTAB to oppose registration of the mark.

4.  After the mark has been published in the Gazette, and if no opposition has been filed, then the application continues to be pending until the mark is actually used in interstate commerce. 

5.  For ITU (intent-to-use based applications, the PTO will, upon publication without opposition, issue a Notice of Allowance (also known as an NOA).  The Notice of Allowance will contain a description of all the goods or services subject to the ITU and therefore should be reviewed (like all other notices from the PTO) for accuracy.  Any errors should be reported immediately to the PTO or the examiner in charge of the application.  The notice also gives the applicant six months to begin using the mark in commerce, during which time a Statement of Use (also known as an SOU) is filed.   If the applicant has not yet made use of the mark in commerce prior to the expiration of the six-month period, then the application will become abandoned unless the applicant files a request for extension of time to file a Statement of Use.  Applications based on actual use of the mark (as opposed to an application based on a bona fide intent to use the mark) are not subject to a Notice of Allowance and a Statement of Use (unless the application is converted to an ITU) because the required specimen of use of the mark is filed with the application or thereafter by amendment.  Once published for opposition, use-based marks proceed to registration if there is no opposition lodged against the mark or any such opposition is resolved successfully.

6.  A successful application will register in a matter of months through the issuance of a Certificate of Registration.  Registrations are published in the Gazette.

7.  After successful registration of a mark, there is a possibility that a party objecting to its registration will file an action at the TTAB to have the mark cancelled.  Provided that a mark is not cancelled, its registration will last ten years, at which time the mark can be renewed for an additional ten-year term (and subsequent ten year terms thereafter) so long as the mark is in use.  During the registration of a mark, it is necessary in most cases to file certain affidavits stating that the mark is still being used.  Trademark owners should be mindful of due dates for post-registration filings.  The PTO does not send out reminder notices for actions required to be taken to maintain a registration.

Applicants should also note that Eastern Time controls filing dates.  Regardless of PTO business hours, any filing made electronically before midnight, Eastern Time, will receive a filing date as of that date.

For more information on the trademark application process, read the book, Understanding Trademark Law:  A Beginner's Guide, published by Oxford University Press.