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Trademark Law - What Search Marketers Should Know, Part 2

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In our previous article, we covered the law fundamentals search marketers should know about online trademarks. Here we cover important tips and tactics by online intellectual property attorneys and legal counsels for the search engines, for both protecting your own trademark material and respecting the trademarks of others.

Trademark filing for search marketers

As with copyrights, there is no requirement that you register a trademark for it to be considered for protection. However, there are significant advantages to having a registered trademark, including exclusivity of display and use (in your industry), legal remedies (including enforcement) not available otherwise, and even protecting yourself from another's trademark infringement claim for the same mark.

The U.S. Patent and Trademark Office (USPTO) is where you go to file for trademarks that need to be protected. Thanks to the to the Trademark Electronic Application System (TEAS), trademark applications can be filed entirely online.

"It is a fairly simple process to file for your trademarks, but there are a lot of technical and legal terms," says Deborah Wilcox, co-chair of Baker Hostetler's national Intellectual Property Litigation practice. She suggest hiring an attorney to guide you through the filing process.

The process is a bit complex, and the mark must stand up to the scrutiny of the USPTO. Trademark registrations are often sent back to the filer with requests for specific legal information. Hiring an intellectual property attorney to review your application and help with filing can be helpful. Plan on spending an additional $500 - $1,000 for review and filing, to start.

SEMs should plan for these several steps prior to filing a trademark:

  • Criteria.
    Familiarize yourself with what can and can't be registered. Your trademark needs to clearly represent a distinguishable product or service (meaning, it cannot be too generic of a term), which no one else has used previously. For example, an Internet domain is not the same as a trademark, and cannot be registered as such.
  • Availability.
    Make sure that no one else has previously used or registered the mark, so you don't wind up wasting your application fees. While there are professional trademark search services available, experienced search marketers should be good with using the free public Trademark Electronic Search System (TESS) at the USPTO site. For more advanced tracking, there's Thompson Scientific's Trademark.com program.
  • Trademark fees.
    Take into account that you will have higher processing fees than for copyright registration, along with legal consulting fees. According to the latest fee schedule, filing fees for new U.S. trademarks start at around $375, and can be higher if you're looking to have your trademark protected in several countries.

First step to protecting your trademark – use the search engines

You will receive a confirmation notice from the USTPO once your trademark is registered. You now have the responsibility of actively monitoring how your trademark is being used online. If you're negligent, it may hinder your ability to exercise legal control over your intellectual property in case of a dispute. Fortunately, there are several tools which utilize the search engines that make this job simple and efficient.

  • AdGooRoo's Trademark Insight.
    This is an automated trademark monitoring service that reports on advertisers who are bidding on or using your trademarks in their ad copy on Google, Yahoo, and MSN in up to 12 countries. It automatically creates compliance letters to deliver to both the search engines and the alleged infringer. (You can also separate out authorized usage and users from unauthorized ones.) Pricing begins at $499 per brand.
  • Trademark.com.
    Provided by MicroPatent (a division of Thompson Scientific), this service double as both a research service and tracking tool. It checks U.S. federal, state, and international trademark databases, and then searches the Web for trademark usage. It can find exact or similar usage of your trademark, in both the body content of a page and in domain names. A 12-hour research session will cost between $50-110, or annual subscriptions are available.
  • Copy Sentry.
    This program scans the entire web as often as daily for copies of some of all of your web pages. The tool is widely used for copyright infringement and plagiarism detection. It is also a good means of gathering on-page evidence of trademark usage by others, and seeing what may have been modified from your original copy around it. Pricing starts at $4.95/month for weekly checks, and $19.95/month for daily checks of up to 10 pages.
  • Google Alerts.
    It's likely that you're using this free service already during the course of your search marketing efforts. Google Alerts allow you to manage search terms with automated pinging of Google's entire database or specific properties (news, blogs, web, video, groups), from an as-it-happens to weekly basis, with email notifications.

Reporting trademark concerns to the search engines

When you've encountered what you believe to be a clear case of trademark infringement online, the two immediate steps for you to take should involve 1) A notice to the infringer; 2) A notice to the infringer's web host service provider; and 3) Submitting a trademark infringement takedown request to the search engines.

The first two steps are necessary to attempt to have the trademark removed from the infringer's web copy, which would be updated in the next spidering of the search engine's organic results. For the third step, the major search engines all have designated agents or departments to deal with trademark claims in their paid listings, and provide instructions and a form for trademark infringement takedown requests. (Note: The major search engines prefer to stay out of issues of trademarks in their organic results, as the paid side is much easier for them to review, enforce, and monitor for future infringement.)

To file a trademark concern (takedown notice) with the search engines, you will need to fill out the search engine's own trademark claim form, which will typically consist of the following fields:

  • Name of company owning the trademark, and contact info
  • Description of the trademark, including countries of registered/claimed protection
  • Description on the infringing material and location
  • Reasons why there is a trademark infringement
  • Statement that you have a "good faith belief" and, under penalty of perjury, that all your information is accurate and you are either the trademark owner or authorized to act on the trademark owner's behalf
  • An electronic or physical signature
  • Best way to contact you.

Part of the problem the search engines have to deal with on trademark takedown notices, is that most people are confused about what actually constitutes a trademark and what abilities the search engines have to protect them. Eve Chaurand-Fraser, online compliance officer for Ask.com and IAC Search & Media, recommends first making sure that your takedown request definitely relates to a trademark issue, and not some other legal or business issue.

"We get about 10 trademark takedown requests a week. Some involve only one site and it's very easy, and some may have volumes of URLs and take longer to process. Of those 10, a third are copyright-related, a third are trademark-related, and a third are 'other,'" she says. "We do get a lot of frivolous takedown requests, but the ones that have merit we process quickly."

After reviewing the claim, the search engine's team will review the ads cited, remove any offending ads, and start watching your trademark going forward.

Deciding you want to pursue litigation

When all else fails, litigation can be costly and time consuming, "but there are reasons why you may need to pursue it," says Wilcox. Litigation allows you to learn what money the alleged infringer is making on your trademark through proper records, and a successful "judgment on the books" can be used as a legal ruling against other infringers.

Wilcox adds that even a lawsuit in the pending stage, where you may not ultimately prevail, still gets the attention of current and would-be infringers. It can often spur action, where before the problem might be ignored or unsatisfactorily dealt with.

Wilcox advises taking these important steps:

  1. Gather evidence.
    Take screen shots, since it might be hard to reproduce later. "We've had that issue with Google, where we've had to send in screenshots because they would say that [the infringement” isn't happening," says Wilcox. "You might consider using an outside source to document this, so you have an independent, neutral party that has seen and documented the evidence."
  2. Determine harm being caused to the business.
    Will it continue and proliferate if not stopped? Do you need to send a message?

Those tactics have been successful in receiving an injunction against a trademark infringer. But what if you're also looking for monetary damages? For that, the courts have grafted onto the trademark law certain other requirements, such as:

  • Intention.
    The infringer must be intentionally trying to usurp your goodwill in order to make a profit.
  • Consumer confusion.
    "You might have to show that actual consumers in the marketplace have been duped; and you have to bring them in as witnesses and give testimony, or survey the public to see what they're thinking, in order to obtain your monetary damages," says Wilcox.
  • Loss of revenue.
    "Is your business losing money? That's the real harm sometimes, and often it's very hard to prove and quantify. But the more you can assess all of the specific reasons, the more persuasive we can be in helping you make your case," says Wilcox.

Wilcox cautions that trademark cases can typically be more complicated than with other types of intellectual property cases to get monetary compensation (including your attorney's fees), and may even require the involvement of legal and professional experts giving testimony (including those of search professionals), adding to your court costs.

So if you are looking for a legal remedy beyond an injunction that involves monetary damages, Wilcox advises these three important questions to discuss with your counsel beforehand: "Am I going to get any money? What's it going to cost? And, can I recoup that?"

One unexpected, but very likely side effect of going to court over trademark infringement, is that it can also open your own trademark properties and activities up to scrutiny.Eric Goldman, assistant professor and director of the High Tech Law Institute at Santa Clara University School of Law, warns not to attempt to enforce your rights if you're potentially engaging in the same kind of infringing behavior. The most common example of this, according to Goldman, is companies buying third party trademarks as keywords.

One amusing and telling example of this, shared by Goldman, is the trademark lawsuit and counter-suit between the companies Humble Abode and Buying for the Home. When the smoke cleared, Humble Abode, the company that kicked off the litigation, ended up paying damages to the tune of $10,000 to the defendant to settle the case.

"I can't tell you how many plaintiffs who have sued for this have gotten their own hands caught in the cookie jar," says Goldman.

Goldman offers some alternatives to litigation, which may prove both more cost-effective and successful in getting the results you ultimately want: "You could decide to spend on some IP protection enforcement, or you could invest it in more marketing. You want to make sure you're making a good investment," he says.

Conclusion

To best protect your own trademark properties online, be sure to do all of the following:

  • Make sure your trademarks have been properly filed, are active, and legally binding.
  • Clearly and prominently display your trademarks throughout your website and other online properties with the appropriate trademark symbol. ("®" is actually the appropriate symbol for a registered trademark over a "TM" in most cases.)
  • Educate yourself on trademark law and ongoing trademark issues.
  • Know the available tools for researching, filing, and tracking trademarks online.
  • Know the proper places to submit your trademark concerns to the search engines and carefully follow all of their guidelines.
  • Litigation is costly and complicated, so make sure you meet litigation requirements and can recoup your expenses, and that you aren't engaging in any questionable trademark practices yourself.

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Grant Crowell is the CEO and creative director for Grantastic Designs. Grant also serves as a video production and optimization consultant, and produces documentary video content for Walking Eagle Productions.

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