One of the best ways to promote your art or your business is with a website. There, you can place your portfolio, build a market, and get your audience closer. Websites are also great tools to promote your brand or trademark online. That said, it is also important not to lose sight of the fact that, just because something is publicly accessible to others it does not carry responsibilities, especially legal responsibilities. This means, that any logo or design you use to identify or distinguish your website must be owned by you, here I'm talking about your trademark or any other trademark you display on your website.
What Is a Trademark?
Let's start from the beginning, what is a trademark? Trademarks are intangible assets subject to personal ownership. Trademarks are also content that identifies the commercial source of a product or service. For instance, with a strong trademark, the public will be able to know if a piece of digital art is yours and not of others. Trademarks exist in the form of a logo, slogan, or brand name. There are also smell, three-dimensional and sound trademarks, but those are less relevant for purposes of this post.
In the U.S., a trademark is the kind of content that the law protects as soon as it's used commercially. The rights that exist over a trademark, when no registration exists, are called Trademark Common Law Rights. The United States is a unique jurisdiction where the rights over a trademark may arise out of its commercial use. However, there are many advantages to the registration of a trademark. For instance, if your trademark is registered it is presumptively valid. If your trademark is not registered, you may have to go to court to defend the validity of your trademark and to prove the unlawful character of the conduct of a party who uses your trademark or a trademark highly similar.
What happens when your trademark conflicts with another registered mark?
If you have not registered your trademark, it is likely that you have not tested the strength or uniqueness of your trademark. At the Law Office of Giselle Ayala Mateus, we can help you with that, our trademark registration service includes the presentation of a clearance report for the client. Anyway, if you have not registered your trademark it is possible that the logo or combinations of words that you use as a trademark are similar to another trademark or brand.
If your trademark has one or more common elements with other trademarks, in the same industry or to distinguish the same kind of goods or service, it could confuse innocent customers about whether they're getting your products or services or another's. Consumer confusion is a huge issue in the US and it can raise many issues before entities such as the FTC or the FCC. Additionally, you could face trademark infringement charges. In countries like the United States where trademark common law rights are recognized, the exclusive rights for the mark go to whoever used it first in commerce. Accordingly, if a legal conflict exists, the later user will probably have to stop using the mark and may have to pay damages to the initial user of a trademark.
How can trademark infringement happen on a website?
Website trademark infringement may occur in three forms:
- When a domain name infringes on a registered mark or a name that a company is already using commercially, this is usually called cybersquatting.
- When a website owner or a website administrator uses another 's logo or brand without authorization.
- When a website owner or a website administrator uses another 's logo or brand without authorization, in a manner capable of causing dilution of the trademark's distinctiveness.
When a domain name infringes on a registered mark or a name that a company is already using commercially
One of the first steps that an unknowledgeable entrepreneur does when getting a website is selecting a catchy domain name without reflecting on the possibility of trademark infringement. I understand that the first step to building a website is to register a great domain name. However, it is important to consider the concept of trademark infringement before doing so. Keep in mind that this is the address that users will type to go to your site and to actually loo for you or your business, so it is big deal, for you and any trademark owner that the domain name doesn't infringe on another's trademark rights. Additionally, the domain name is an important asset, since it's an identifier of your products and services, it counts as your intellectual property.
To make it as clear as possible, when it comes to the domain name, trademark infringement occurs when you knowingly or unknowingly use trademarked content (or something that's too similar to the protected content). To address a situation of potential trademark infringement a trademark owner may issue a Uniform Domain-Name Dispute-Resolution Policy. Through this policy, a domain name trademark dispute can be resolved by:
- Reaching an agreement.
- Taking the case to court.
- Canceling the domain name.
- Suspending the domain name.
- Transferring the domain name.
Getting your website taken down, blocked, or suspended...
In the process of defending a trademark, a trademark owner may elect different strategies to address the issue, especially if the trademark owner business is in another state or overseas, and contacting you in the US feels burdensome. A trademark may go to whois.com or similar sites to get as much information as possible about your website. Some of the information that is publicly available is the name of the registrar or information of the server that hosts the website, with this information a trademark owner can reach out to Wix.com, Godaddy.com, or any other and commence a claim for trademark infringement. To proceed, a trademark owner will have to review and comply with their trademark infringement policy. However, that will not keep you out of trouble, so it is better to avoid these situations at all.
How does a trademark infringement policy look like?
Here is an example of what a trademark infringement policy looks like:
GoDaddy supports the protection of intellectual property. If you would like to submit (i) a trademark claim for violation of a mark on which you hold a valid, registered trademark or service mark, or (ii) a copyright claim for material on which you hold a bona fide copyright, please refer to GoDaddy's Trademark and/or Copyright Infringement Policy referenced above and available here.
If you (the "Complaining Party") would like to submit a trademark claim for violation of a mark on which you hold a valid, registered trademark or service mark (registered with the United States Patent and Trademark Office on the Principal Register or, for foreign marks, registered with the appropriate intellectual property organization of your country; state registrations and registrations on the Supplemental Register are not considered valid for these purposes), GoDaddy requests that the Complaining Party substantiate such claim by either: (i) filling out the form available here, or (ii) providing the following information via email to [email protected]. The words "Trademark Claim" should appear in the subject line of the email. PLEASE NOTE: Filling out the online form is the quickest way to get your claim addressed.
To be considered effective, a notification of a claimed trademark violation must include the following information:
- The trademark, service mark, trade dress, name, or other indicia of origin ("mark") that is claimed to be infringed, including registration number.
- The jurisdiction or geographical area to which the mark applies.
- The name, post office address and telephone number of the owner of the mark identified above.
- The goods and/or services covered by or offered under the mark identified above.
- The date of first use of the mark identified above.
- The date of first use in interstate commerce of the mark identified above.
- A description of the manner in which the Complaining Party believes its mark is being infringed upon.
- Sufficient evidence that the owner of the website that is claimed to be infringing is a GoDaddy customer.
- The precise location of the infringing mark, including electronic mail address, etc.
- A good faith certification, signed under penalty of perjury, stating:
- The content of the website [identify website] infringes the rights of another party,
- The name of such said party,
- The mark [identify mark] being infringed, and
- That use of the content of the website claimed to be infringing at issue is not defensible.
Upon receipt of the appropriate information identified in Section 1 above, for trademark claims, GoDaddy will initiate an investigation and forward the Complaining Party's written notification to the alleged infringer. While GoDaddy is investigating the claim, GoDaddy, at its sole discretion and without any legal obligation to do so, may temporarily remove the allegedly infringing material from GoDaddy Auctions, notify the alleged infringer it will lock down the domain name(s), redirect the DNS, and/or if it is solely stored on a GoDaddy server, temporarily remove or deny access to the allegedly infringing material.
If GoDaddy concludes that the Complaining Party has raised a legitimate trademark claim, it may, at its sole discretion and without any legal obligation to do so, permanently remove the challenged material from GoDaddy Auctions, continue to suspend the alleged infringer's GoDaddy account and/or if it is solely stored on a GoDaddy server, deny access to the allegedly infringing material. If GoDaddy concludes that the Complaining Party has not raised a legitimate claim, GoDaddy will restore access to the allegedly infringing material.
The Complaining Party should understand that GoDaddy, an ICANN accredited registrar, and its customers are bound by the UDRP. Nothing in this Policy should be construed to supersede the UDRP, nor the obligation of GoDaddy and its customers to abide by it in the context of domain name disputes.
What happens if a user of your website is the one using the infringing content without an authorization?
When it comes to user-generated content it is important to understand two things, first, that your website is like another home of yours, you are the one responsible for keeping it under control. Second, unless you take measures to warn or spell those who act contrary to the law you will be held responsible for the conduct of users of your website.
Take away... so... Can your website be taken down as a result of a trademark infringement charge?
Yes. If your website is infringing on another's trademark rights your website can be blocked or taken down. Additionally, considering that on the internet geographic boundaries are not clear, nowadays internet participants, especially big ones like Wix or Godaddy are seriously concern about keeping themselves safes from liability in any jurisdiction where their users, website creators, are located. One of the main reason for this, as I briefly mentioned it, because trademark infringement has a direct connection with consumer confusion, and consumers' protection is at the core of many regulations in the world.
To avoid trademark infringement issues you may want to consider this checklist:
- Research domain names and trademark databases before selecting your own trademark.
- Research local businesses or local entity databases before selecting the name of your business or website.
- Consider the possibility of common law rights, especially if you are doing business in the US.
- Think like a consumer, could my trademark or brand create confusion?
Finally, if you feel this is an overwhelming task call the Law Office of Gisele Ayala Mateus, we can help with due diligence research, trademark clearance and registration, website policies and terms, and more. We will be happy to create a legal strategy that fits your needs and goals online.