So, I bought www.mcdonaldsrocks.com... What's the big deal?

So, you've got this stellar idea.

You've seen this URL at the domain registrar that is similar to a national brand and you think, "I've got to have that! I'll put up a site about how much I love their product!"

So, you register it. You start talking to your buddy about it and he says, "You can't register that domain name. It's got a trademark in it. You're in big trouble, man." So, who's right?

Yum!  You know what this needs... Bacon!

Let's assume, for the purposes of this argument that you've registered, mcdonaldsforum.com. Your name isn't McDonald or anything like that. In fact, you own a small burger joint in Toledo where folks can order online to have the burgers shipped anywhere in the world.

You want to put up a forum that talks about McDonald's. You're planning to put some links to your site, but it'll be mostly to talk about McDonald's.

If you asked me for advice, this is the conversation that we'd have...

Hey, I cited the source. I'm safe, right?

There are an awful lot of misconceptions about copyright law that are floating around.  If you're reading this, you might even have some of them.

One of my favorites that I keep hearing over and over again is that people believe that you can use any copyrighted work that you want as long as you give credit to the original author.

Don't cry about it...
You still can't steal other people's copyrighted work.
(and, yes, I did pay for this image)

Ok, folks, this isn't school. Citing the source may have prevented you from being dinged for plagiarism when you were in school, but plagiarism isn't a violation of the law. Copyright infringement, on the other hand, is. 

I've said this before, but I'll say it again since it bears repeating. Any original expression fixed in a tangible medium is protected by copyright. There are very few exceptions to that rule. (And for my international friends, this applies not only to United States law. The Berne Convention, the Universal Copyright Convention and the WIPO treaties subject member nations to the same requirements when using works that enjoy copyright protection under U.S. law.)

How to lose your trademark.

You go through the entire arduous trademark process, you've been granted the trademark and you've received your pretty little certificate in the mail. You're all done but the framing, right?

Well, yes....

And no.

Business is all about juggling.  I hate to add
another item to the already crowded
"to do" list, but it's no fun to get it wrong...
 

For now, you've got nothing to do but to enjoy being a trademark holder. You need to defend your mark to keep it strong, but assuming that no one tries to infringe your mark, you're golden.

So what the heck am I talking about?

I'm talking about the requirements of Sections 8, 9 and 15 of the Trademark Act.

Did your brain just screech to a halt?

Wait a second! Don't hyperventilate.

I know you don't know what I'm talking about. I'm about to explain... Sheesh!

Do I HAVE to register my trademark?

It has come to my attention that seemingly a lot of trademark lawyers have been telling their clients that they "have" to register their trademark to protect it.  That drives me nuts. 

I can't stand when people tell half truths.  All the fine print garbage makes me crazy.  I'm a full disclosure kind of girl. 

I'm not going to say that federal registration of your trademark is not a good idea.  Of course, federal registration is certainly helpful in protecting your mark.

But is it necessary?

The answer may surprise you, but it's not necessary to register your trademark with the United States Patent and Trademark Office (USPTO) to protect your mark against infringement.

Under U.S. law, you gain trademark protection once you have used the mark "in commerce". This is often referred to as a common law trademark.

You can use the "TM" indication (or "SM" for a service mark) after your mark at any time after beginning to use it in commerce (though you can only use the ® mark once you have a registered mark with the USPTO).

So, why do people register their marks with the USPTO?

How Strong is Your Trademark?

A trademark is a trademark is a trademark.  Right?

Actually, no.

Everyone loves the day
when they can start using the
registered trademark symbol after
their newly registered mark.

Some trademarks are better than others.  Ok, well, not better... But certainly stronger and easier to register and defend....

There are five classifications of marks (four of which can be registered with the USPTO). (Actually, Famous marks are given extra protection, but let's assume that if you're starting out, you don't have one of those.)

They are (in order of strength):

What's the Difference Between Trademark, Copyright and Patent?

I've noticed over the last week or so of participating in discussions on various discussion forums that business owners seem to be really confused about what they need to do to protect their intellectual property. The biggest problem that people seem to have is that they don't understand the difference between copyright, trademark and patent.

I can't possibly go into every nuance here (maybe in later posts), but I want to give just some basic information about each:

Patents
First off, I would NEVER suggest trying this one on your own. You need to find a qualified patent attorney to help you through the process.

There are two types of patents, utility and design. A utility patents are for processes, machines, products or improvements to any of these. Design patents cover the ornamental design of a product. For your invention to be patentable, it must be novel and a non-obvious invention.

The advantage of a patent is it doesn't have to be something that you've actually reduced to a physical form. The idea is enough. For example, you have an idea for how an existing product can be improved that is novel and non-obvious. You don't have to take the product and actually make the modification to get a patent.

Patents last for 20 years from the date of registration.

Copyright
A copyright protects any "original work of authorship" (inlcuding sound recordings, graphic work, etc.) that is either published in a "fixed form" or registered with the copyright office as an unpublished work. It's not necessary to have a lawyer to register at the Copyright Office for you (though sometimes it makes it easier for you) and, if you do it online, it costs $35.

You don't need to register your copyright to have it be valid. As soon as it's fixed in a tangible medium, it's copyrighted. But you should make sure that you post notice that your work is copyrighted by using the year, the (c) symbol and the name of the copyright holder. However, if you want to enforce the copyright, you need to file it with the Copyright Office.

Copyright lasts for the life of the creator plus 70 years.

The following cannot be copyrighted:

"Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents

Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration

Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources)." - US Copyright Office.

Trademark
A trademark is a "word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others." (USPTO). They also don't need to be registered in order to have rights, but do need to be registered in order to pursue an infringer in Federal Court.

You can use the TM or SM mark whether or not your mark is registered, but you can only use the (R) mark once registration has occurred.

There is no requirement that says that you have to register your mark with an attorney, but there are recent decisions by the TTAB (which I will probably discuss in my next blog post) that can cost you in a big way if your mark is registered incorrectly. I would recommend using an attorney who is familiar with the latest rulings in order to make sure you are well protected.


I hope that this helps in your quest to protect your intellectual property.

Visit us at www.ebusinesslawgroup.com anytime to discuss your intellectual property issues.

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Welcome to the eBusiness Law Blog!

Welcome to the eBusiness Law Blog. It is the accompanying blog to the ebusinesslawgroup.com website. As such, this blog will be dedicated to commentary and discussion of issues affecting e-businesses. Sometimes, we'll talk about pertinent news; sometimes it'll just be my commentary on general issues.

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