CyberMark Smarts

By Marie D’Amico, 

Trademarks and service marks are words, phrases, pictures, symbols, or shapes which designate and distinguish your products or services from others in the marketplace. These marks are big business. Professor Paul Goldstein of Stanford Law School says trademarks constituted 95% of the $25 billion Kohlberg Kravis Roberts paid for RJR Nabisco in 1989. The $64K question now is: Can you protect your trademarks in cyberspace?

On a first come, first served basis, InterNIC registers domain names which aren't identical to preexisting names. On November 23, 1995, InterNIC 's registrar, Network Solutions, Inc. (NSI) issued a domain dispute policy statement . NSI now can withdraw your domain name, or place it on an unusable hold status, if presented with an identical, federal mark registration (state registrations are insufficient) owned by another and predating your cyberuse. To contest NSI's conduct, you must either own a federal mark registration on your domain name, and post a bond to indemnify NSI for potential damages, or settle your squabble in federal court or arbitration. Roadrunner Computer Systems , an Internet Service Provider, has challenged NSI's new policy in federal court as a breach of contract and intentional interference with Roadrunner 's contractual client relations. NSI's statement also has deluged the Patent and Trademark Office ( PTO ) with applications for these new cybermarks.

While the PTO recently said registration of cybermarks was chock-full of unanswered questions, they did give some guidance. To maintain your real world marks in cyberspace, register them as domain names with InterNIC (cost: $100 per name). To defend your domain names, file mark applications with the PTO (cost: $245 per class). You can save PTO filing fees and lengthy litigation by having a search firm investigate whether others use substantially similar federal, state, or cybermarks (cost: $340 per mark). In the real world, multiple marks can coexist if they cover classes of diverse goods or services. CFM is a mark for classes in forest management and an acronym mark for Continental Fan Manufacturing. In cyberspace, however, only one CFM.com can exist. If others use similar marks, choose a new name.

You should select a domain name which is arbitrary , fanciful, or suggestive. Arbitrary marks are well-known words applied to unrelated material ( Apple for computers, Dutch Boy for paint). Fanciful marks are invented words (Exxon, Kodak ). Suggestive marks are words requiring imagination to determine the referenced staples or services (Cosmania for cosmetics, HealthNet for health services). The PTO will not grant mark protection for descriptive or generic marks. Descriptive marks are words describing a function or feature of the materials (Breadspred for jam, Scholastic for test scoring). Generic marks are words defining the class of goods or services (Analog Devices, Bundt). Think Greek gods, flora and fauna, zoological species, anything but overused words like digital, media, or net.

The PTO grants mark applications in 34 categories of goods and 8 classes of services. Many marks for electronic content fall into Class 42 (miscellaneous services). After you select your cybermark and class, you must submit evidence showing your mark isn't contact information, but identifies your service. Business cards and stationery won't suffice. Your cybermark should appear on advertising, brochures, and other work product distinctly describing what you provide, not where you're located. If you haven't used your domain name yet, or don't have the proof printed, you can file an intent-to-use mark application, and not need submit specimens for about two years.

Can you file mark forms without counsel? Yes. The PTO has fill-in-the-blank forms, and explanatory brochures and manuals. Some study can save you hundreds of dollars. You also can consult with a trademark attorney for between $300 - $1000 per filing. File soon or you'll find someone else has registered your marks or desired domain names and it'll cost you to get them back.

Questions? Send me email .

Software

© 2006 NetGuide Magazine