Internet Lawyer Blog
In general, trademarks are marks that are associated with a particular brand. Examples of trademarks include the golden arches for McDonald’s and the mermaid for Starbucks. Trademarks are important to businesses because they distinguish the business from its competitors. Businesses use these marks in marketing to gain consumer attention. Once a consumer is familiar with a brand, has developed a positive opinion on it, then he or she is more likely to buy products from the brand.
However, when a particular business becomes successful, competitors will often try to emulate the business’s model and possibly engage in deceptive practices. A common practice is trademark infringement. Trademark infringement is when a business takes another business’s trademark and creates a similar mark. What the infringing business is banking on is consumer confusion. It is hoping that consumers will be under the impression that the infringing business is associated, or possibly, even be the business that actually holds the mark. The infringing business is then taking away sales from the authorized trademark holder.
Dangers of Online Trademark Infringement
Trademark infringement can be seen in many ways on the Internet. The biggest area for trademark infringement is counterfeit items. Sellers are now able to sell items just as easily as it is to buy an item online. With that ease, counterfeiters have found a new medium to sell their counterfeit items. The infringing items are primarily designer items such as handbags, shoes, and clothing. The counterfeiters will take a designer mark (e.g., Gucci’s interlocking G) and print it all over the handbag. The counterfeiters will then sell the items on websites such as eBay, Amazon, or their own personal websites for a fraction of the cost. Consumers will then buy the item, therefore losing a sale for the original trademark owner. Not only will the trademark owner lose the sale, but he/she can find his/her brand name in the industry tarnished, and his/her reputation and good will affected. In an industry that is as fickle as the fashion industry, businesses cannot risk to lose standing.
Trademark Protection
There are several ways a business can protect its trademark. First, the business must create a trademark that is considered fanciful/arbitrary or suggestive. This allows for trademark protection under the United States Patent and Trademark Office (“USPTO”). Second, do research on the registered trademarks for the countries that the business may associate with to allow for easy registration. Third, register the trademark. Although, the USPTO does not require the registration of trademarks, it is recommended as a safeguard in case of infringement. Fourth, continue researching the intended trademark to determine if any opposition or cancellation of trademark is possible. By doing this, the business can create a bulletproof application that will most likely be successfully registered. When deciding on what country to register the trademark, the business should determine if registration is necessary. Each country has different registration rules and it may not be efficient to register in each country a business might do business in. Fifth, after doing the analysis, buy the top level domain name (e.g., .com, .net). Finally, monitor the trademark and possible counterfeiting websites. This is a crucial step in trademark protection. The only way a brand can protect its trademark is ensure no unauthorized seller is using it, and if it does find a counterfeit seller, monitoring allows for quick response.
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