From new domain names to 3-D printers, developments in technology and elsewhere pose new challenges for trademark owners and their lawyers. Here are 10 issues that trademark attorneys can’t afford to ignore in 2013:
Domain Name Explosion: This year generic top-level domain names are poised to increase exponentially, from the 22 that include .com, .biz, and many country-specific domains to almost any word in almost any language. The Internet Corporation for Assigned Names and Numbers (ICANN) received 1,930 applications to establish new domain names before its June 2012 deadline. Trademark owners will want to record key marks with ICANN’s new Trademark Clearinghouse, says Sally Abel, an intellectual property partner at Fenwick & West. That will help them block other domain-name applicants from registering their marks and give them priority on domains matching their marks during various sunrise periods, she says.
Storing Social Media: A company’s social media marketing affects whether it can enforce trademarks down the road, says Douglas Masters, who cochairs Loeb & Loeb’s intellectual property practice. Evidence of consumer reactions to the marketing messages can play a major role in legal disputes about whether a mark is protectable or whether confusion or dilution is likely, he says.
Lawyers should review proposed campaigns to look for red flags and opportunities for future enforcement, Masters says. Additionally, "counsel needs a strategy for addressing consumer responses that pose risks to brand protection and enforcement," he says.
Trademarking Goes Mobile: Trademark disputes are likely to spring from the branding of mobile technology icons, says Deborah Peckham, cochair of Boston-based Burns & Levinson’s IP group.
The recent ruling by the U.S. Court of Appeals for the Second Circuit in Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc.—which allows Louboutin to trademark a red outsole on his women’s shoes if the rest of the shoe isn’t red—suggests that brand holders could theoretically trademark a single color for a mobile application, she says. "Clients need to think about whether the best use is going with standard characters or whether they can use other combinations that involve more than just a letter or a letter and a single color," says Peckham.
Mixed Messages on Social Media: Companies can lose control of their brand messaging on social media sites when third parties use their trademarks, says Julia Huston, who chairs the trademark, copyright and unfair competition practice group at Foley Hoag in Boston. Trademark owners should develop their presence on social networking sites favored by customers, employees, and other key contacts, and monitor use of their trademarks on those sites. When violations occur, using the sites’ takedown procedures is often "far quicker, cheaper, and more effective than sending a demand letter," she says.
Infringement in Three Dimensions: The plummeting costs of 3-D printers, which make 3-D models using digital technology, is the most interesting trademark issue of the near future, says Marty Schwimmer, a partner at Leason Ellis in White Plains, New York. "[Three-dimensional] printers are about to cause shape-protection cases," he says. Practitioners should "be prepared to understand the intersection between design patents, copyright protection of three-dimensional objects, and trade dress protection for three-dimensional objects," he says.
No Rote Fix for Rogue Sites: Cracking down on offshore websites that sell counterfeit goods or infringing items requires a savvy, flexible approach, says Ian Ballon, a partner at Greenberg Traurig. First, figure out if it’s a legitimate outfit involved in misconduct that it’s willing to change. If not, seeking overseas relief works best in some countries. Remedies include asset freeze orders and domain-name seizures, but there’s no one-size-fits-all playbook, Ballon says. Overly aggressive tactics could draw the wrath of a judge or bad press. "Too many people who work in this area do not approach these issues strategically, leading to overreaching, missed opportunities, and the development of bad law," Ballon says.
Global Protection Program: While the United States has strong case law that allows trademark owners to attack alleged dilution, many other jurisdictions don’t, says Cynthia Walden, who leads the trademark and copyright practice at Fish & Richardson. Unlike the U.S., though, many countries do allow trademark owners, for a three-year period, to ­register a trademark for more products than they’re actually using the mark on. "[Such trademarks are] only an effective weapon in the first three years," Walden says, "but in countries like China, that may be a very worthwhile and important benefit to get."
Key Marks: Although cases involving trademarks as keywords in online advertising have been litigated, there "hasn’t been a decision on the full merits," Fish & Richardson’s Walden says. Currently, the law allows other parties to use a competitor’s trademark as a keyword as long as it is not in a search link sponsored by advertisers, Walden says. She advises clients that they can use others’ trademarks in that limited way—"with the understanding there are some other cases in the pipeline, and there may be a change."
Circuits Run the Gamut on Search Terms: Stephen Luther, a partner at Orlando’s Allen, Dyer, Doppelt, Milbrath & Gilchrist, notes that several federal appeals courts have wrestled with the use of trademarks as ­purchased search terms, such as Google’s AdWords, but that some circuits haven’t created case law because they’ve resolved keyword advertising trademark cases on other issues. "If you have a number of jurisdictions in which you could bring the case, it may make more sense to bring it in a jurisdiction that has decided that AdWords cases can be litigated," he advises.
Nontraditional "Trademark Trolls": Like their patent counterparts, typical "trademark trolls" use trademarks to force licensing fees from alleged infringers. But nontraditional trademark trolls try to protect content popularized by recent social or political events, says Andrew Berger, an intellectual property counsel to Tannenbaum Helpern Syracuse & Hirschtritt in New York. One example: the "Linsanity" applications filed by people other than professional basketball player Jeremy Lin.
Such proposed marks usually don’t meet the traditional test of telling consumers about the origin of a product or informational value about its quality, Berger says. Trademark lawyers might want to pause before taking an overly aggressive position on trademarking cultural touchstones, he advises. "Both legitimate mark holders and those who claim marks in an effort to profit from social, political, or cultural events often err on the side of overaggression," he says.