.Solid Article About Trademarking Web Products
Too many young web projects and companies put off considering and protecting their intellectual property with trademarks and wordmarks. It’s very easy for a project with no money and no background in legal issues to put such concerns towards the bottom of the list. I also know that many people think getting a domain name some how guarentees them the right to use that name. I think many people also think that the anti-squating laws in regards to domain names are equally just in regards to trademarks. They aren’t and it’s very easy for anyone with no product or company to tie up a mark for years.
If that doesn’t motivate you I can say that within 30 days of my submitting marks for Dogster, another company tried to get a mark in a related area which could have led to a ‘likelihood of confusion’ situation that may have blocked us from using our own name. Had I waited until Dogster was live for 4 months instead of 3, I could have lost usage of the term.
What I really should have done - and what everyone should do the minute they commit to a new project - was submit an Intent to Use request once there is a name, term or trademark you think you’ll be using. If approved that simple submission can give you right-of-precedence, even over someone with a nationwide product. Before committing to any name or term in the U.S. use the US Patent and Trademark Office’s excellent search engine to see existing usage near your words. You’ll have to get an expert to review any artwork your are comparing, but if you are really comitting to something, it’s worth the effort.
I was motivated to write this after reading one of the few thorough entires on the topic I have ever seen. Check out Stephen Nipper’s article ‘Trademark tips for your web app‘ at the excellent Think Vitamin site. He’s even answering direct questions in the comments so maybe he’ll hook you up.
Excellent points.
One thing I’d add is that if you do file your own trademark…there is a substantial chance you’ll receive an “Office Action” from the Trademark Office. Oftentimes (to a layperson) the “Office Action” can look like a total and complete denial of all trademark rights. I frequently see cases where pro se trademark applicants became overwhelmed at the sight of an Action and give up. However, no matter how draconian the Action seems…consult with a trademark attorney. More often than not, what seems like (on its face) is a total loss can be saved through use of professional help.
Thanks Stephen! I should make clear, that for the love of dog, please, find yourself an attorney or trademark person that can help you out. In your circle of friends there’s likely someone that will be interested enough to prepare your submission for you in exchange for some web services a bottle of wine or a chance to be your attorney when you need one on a regular basis.
Each U.S. mark is ~$365 to submit if someone can do pro bono for you. They amount may seem like a lot (it did o me when I had to submit 4 of them, but it is money well spent.)
A year or two ago, under complete paranoia, when registering my first domain, I thought what if someone has this as a trademark? After all, you can be sued for 30,000 for violations. I registered the tm, and the letter was pretty draconian. I have never seen a more legal and proper letter. For example, my mark contained the word, site. This was in the letter:
site
site (sìt) noun
1. The place where a structure or group of structures was, is, or is to be located: a good site for the school.
2. The place or setting of something: a historic site; a job site.
3. Computer Science. A computer or network of computers associated with a unique identifying number on the Internet and electronically accessible, as through a browser.
verb, transitive
sit·ed, sit·ing, sites
To situate or locate on a site: sited the power plant by the river.
[Middle English, from Old French, from Latin situs. See situs.][1]
When I registered it was 275. :)