April 26 of each year is World Intellectual Property Day. Established by WIPO (World Intellectual Property Organization), the day is meant to foster an appreciation for intellectual property and its effect on our lives. This year’s theme is Green Innovation. So celebrate and innovate.
I am pleased to announce the release of my book, Understanding Trademark Law: A Beginner’s Guide, published by Oxford University Press. Part of the publisher’s Law for the Layperson series, the book is a how-to for business owners and corporate marketing professionals, providing an overview of trademark law and featuring updated information on the U.S. application process, a discussion of how to apply for and defend a mark internationally as well as monetize and police trademarks, and guidance related to protecting trademarks on the internet. The book may be ordered through the publisher or online at Amazon.com.
2016 update: The book (along with a similar one on copyrights and one on patents) is now published by Thomson Reuters. See all of my books on Amazon.
By Linda Tancs
As has been reported previously on this blog, turnaround time in the U.S. for a straightforward, uncontested trademark application averages 12 to 14 months (or less, if you’re very lucky). An interesting factoid 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.
By Linda Tancs
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.
By Linda Tancs
In our last post, we addressed the rise in cybersquatting–the act of using a domain name that mimics that of a brand. So what are your options against a cybersquatter? 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 documents are transmitted via fax or mail, as required by the 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.
This post is not intended to be taken as legal advice. Readers should obtain legal advice that is particular to their needs.
By Linda Tancs
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 website.
By Linda Tancs
Franchising is a growth industry, accounting for $1 trillion in annual retail sales in the U.S. alone. A franchised business is one that operates under a marketing formula common to all franchisees, including a trademark or service mark. But that’s about where the similarity ends. Not all franchises are created equal. So how much do you know about evaluating, setting up, financing and operating your own franchise? Read on for some suggestions:
1. The first thing you need to do is to choose the right franchise. Once you have a general idea of the right kind of franchise for you, be aware of the purchase costs involved. Maybe a low-cost franchise is the best option. Whatever the case, investigate the industries that match your budget and interests by looking at franchise opportunity listings.
2. The next thing you need to do is determine the structure of the business you’d like to start—namely, a sole proprietorship, partnership, corporation or limited liability company. You might even decide to set up an international franchise.
3. Once you’ve determined the kind of franchise you’d like to operate and set up the best structure for your business, you’ll need to figure out how to cover your operating expenses. In most cases, you’ll need to finance your business to some extent through bank or SBA loans. A more established franchisee might be looking to boost business with trade credit or factoring arrangements.
4. You’ve selected your franchise, formed a business, and set up financing. Now it’s time to master the nuts and bolts of running a business. For example, your franchisor may assist you in negotiating the best lease for your business or renewing an existing lease. Your franchisor may also help you find employees. Or maybe you’ll need to find a second-in-command to give you some breathing room. Another important issue to consider is business insurance.
Operating a franchise is a great way to enjoy the benefits of business ownership under a unique system developed by the franchisor. The success of your venture is likely to rest on how well you collaborate with the franchisor to promote and protect its method of doing business.
By Linda Tancs
Licensing intellectual property is only one way to realize the value of your investments. Don’t neglect the possibility of collateralizing this property in asset-based financing. Most borrowers only think in terms of tangible assets–those that can literally be thrown across a room. Consider the value of your trademarks, copyrights and patents the next time you sit down with your banker. Any of these properties that already generate royalties can be securitized or turned into cash. Research major lending institutions or specialty lenders that recognize the value attributable to intangibles the next time you seek financing for your business.
By Linda Tancs
A recent case handed down by the U.S. Court of Appeals for the Second Circuit illustrates the sometimes sticky wicket encountered between ad agencies and would-be clients. Here’s the scenario: agent makes a pitch to credit card companies to personalize their cards with cardholder photographs using the catchphrase “My Life. My Card.” A credit card company passes on a business relationship with the agent but uses the catchphrase in its advertising to much success. Agent protected the phrase with a trademark filing. Can the agent claim trademark infringement on use of the phrase by the company? Court’s answer: No. Why? Because a trademark’s inherent nature is to provide direction as to the source or origin of a product or service. A slogan used as an attention grabber in a pitch letter is not being used for this purpose. The slogan’s use benefits the card issuer, the purveyor of the actual product or service to which the slogan attaches. Therefore, the card issuer has trademark rights to the phrase, not the agent. The court’s decision is in keeping with a long line of cases holding that one who creates a slogan for another’s use (as ad agencies do) is not the trademark owner of the slogan in connection with the goods or services to which it will apply and cannot claim rights to it as a trademark owner. So consider that the next time you fancy an attention-inducing pitch but not the agent pitching it. Of course, a signed waiver might even prevent a walk to the courthouse.
This post is not intended as legal advice. Readers should obtain legal advice that is particular to their needs.