For owners of trademarks, there is a concern that the .xxx version of their mark will be registered and used for a purpose that tarnishes their brand.  To address this concern, the .xxx registry is permitting registered trademark owners to place a permanent block on the registration of their mark in the .xxx domain name space.  Information on the process to place such a block is below:

• Who: Owners of registered trademarks in any country.
• What: The .xxx blocking option allows trademark owners to permanently prevent third parties from registering a .xxx domain name corresponding to their trademark.
• How: A block can be placed through a number of domain name registrars.  Basic information about the registered trademark at issue must be submitted along with a one-time fee of $200-$375, depending on the registrar chosen.
• When: The blocking period, also known as “Sunrise B” extends only until October 28, 2011.
• Why: Once the blocking period expires, third parties can register your trademark as a .xxx domain name on a first come, first served basis.  Retrieving a domain name at that point becomes a significantly more expensive proposition, frequently requiring an administrative proceeding costing upwards of tens of thousands of dollars from start to finish.
• Caveats: Adult entertainment companies who can show that they have trademark rights in the same trademark as that sought to be blocked can prevail over a block request.

Trademark owners interested in blocking the registration of their trademark as a .xxx domain name can proceed to place the block themselves through their registrar of choice.  However, Danielson Legal offers this service to its clients for a flat fee of $400 plus registrar fees.  Our flat fee includes responding to any challenges to the registered trademark rights or other grounds for objecting to the request for a block.

Clients and other parties interested in placing a block on the .xxx registry are encourage to contact us prior to October 25, 2011.

The Search

A trademark search is a critical part of protecting your trademark rights.  By searching various databases of trademarks, you’ll know in advance whether someone else has already tried to register your mark (or a mark that’s similar enough to be a problem for you).  If you know these things in advance, you can save yourself a ton of heartache and expense.  Rarely a month goes by when I’m not contacted by a business owner who has made the very depressing and disruptive discovery that a trademark they’ve been using for months or years has a senior user in another state or jurisdiction.  Legal fights of any kind are never cheap or easy and avoiding them by doing your due diligence up front is always worth the cost.

There are several different levels of trademark searching that can be done.  The more thorough your search, the better.  A very common way to do searching is by using a professional search firm that will assign a search expert to your mark, formulate a complicated series of queries on multiple different databases (e.g., federal trademarks, state trademarks, common law trademarks, domain names, industry news databases, etc.), and then organize the search results according to how similar they are to your desired mark.  Searches of this type generally start around $600 for the search alone.  You should also assume that an attorney will need to carefully review the results and then offer you advice on what they mean in terms of the risks you’d be assuming by moving forward with use and registration of your trademark.  All told, a thorough search of this sort is likely to cost between $1,000 and $2,000 depending on the mark and the number of different products/services that you want to use the mark with.

There are also less thorough and, correspondingly, less expensive search options.  In particular, there are private, commercial trademark databases that include both federal and state trademarks and that can be searched for a fee of around $150.  You would typically want your attorney to do the searching of this type because they are familiar with the way the database query structures work and the way you’d want them to be constructed in order to get the best results.  Generally, the total cost of searching in this manner is around $500 – $700.

The Trademark Application

Filing an application for federal registration of a trademark is a relatively straight forward process — if you know what you’re doing.  Many a trademark applicant has fallen prey to the many different options available when filing a trademark application: Do you want to make a standard character claim or use a special form drawing?  What international classes of goods and services do your goods and services fall under?  Should you apply in your own name or some other entity?  Should you file an Intent-to-Use or Actual Use application and what are the benefits of each?  These are only a few of the many questions you must be prepared to answer when you file a trademark application.  If you make an error, your application will receive a refusal called an Office Action from the US Patent and Trademark Office and you’ll likely need to hire an attorney at that point to correct any errors made in the initial application.

The long story short is that a seasoned trademark attorney knows how to answer all of the questions you’ll be confronted with when filing a trademark application.  Given the right expertise, all the requisite information can be gathered, compiled, and then drafted into an application in relatively little time.  There is a very good reason that trademark attorneys exist and it’s the same reason that auto mechanics exist — you can pay a trained mechanic to fix your car in an hour or two, or you can try and study manuals for hours and hours and then try your hand and hope for the best (and then pay a mechanic even more to fix the damage you’ve done).  Prudent business owners will always trust their valuable business assets to a professional.

So, what’s the bottom line?  To file a single class (i.e., covering one “type” of good or service) in the United States, you should expect to pay somewhere between $1,000 and $2,000, inclusive of the official government fee and the requisite time of an attorney to prepare an file the application.  Many law firms, including mine, offer a fixed fee arrangement that will cover all the necessary work to file the application for a set cost.  This type of arrangement can help you to budget your expenses, but may not always be the best choice in every circumstance.  You should definitely discuss your particular situation with an expert attorney to see what the best arrangement would be for you.

Prosecuting the Application

Filing a trademark application is an important step, but ultimately not the only one required to register a trademark.  Once a trademark application has been filed with the US Patent and Trademark Office, it will be reviewed by an Examining Attorney.  Most of the time, the Examining Attorney will object to some portion or another of the application.  Examples of issues that might be raised are potential conflicts with previously registered trademarks, allegations that a trademark is merely descriptive (i.e., it doesn’t function as a trademark because it’s just a description of the goods or services with which it is used), claims that the description of goods or services is too broad, and any number of hundreds of other objections.  Responding to these objections can be very complicated and an understanding of the relevant trademark law is often necessary.  Suffice it to say, an attorney should almost always be employed to respond to an Office Action.

Beyond Office Actions, there may be other procedural hurdles to achieving registration of your mark.  For example, if you filed on an Intent-to-Use basis, you would then need to prove that you’ve begun using your trademark.  Once the Examining Attorney has completed reviewing your application, it is approved for a publication period.  During that period, third parties may oppose the registration of your mark by filing a Notice of Opposition.  When this happens, you need to negotiate with the opposing party and either work out a settlement or proceed with the opposition process, which works much like, and can cost as much as, a federal litigation.

As you can see, there are many things that might go awry during prosecution of a trademark application.  It could also be the case that the application sails through the process with flying colors and little to no intervention is needed from an attorney.  Usually, however, at least some issues are raised during the process and some back-and-forth between your attorney and the US Patent and Trademark Office is necessary.  Because of the large amount of variance possible, it’s very hard to estimate costs of prosecuting a trademark.  A good ballpark, however, for an average U.S. trademark application, assuming no significant difficulties, is around $1,000 to $3,000 for the prosecution of the application (this is on top of the above-referenced costs to search for and file the trademark application).

Summary

For those who’ve never had a trademark registered before, the foregoing should give you a fairly good sense of the costs involved.  As with any legal matter, lots of things can happen to make costs greater or smaller than the “average.”  Finding an attorney whose expertise you are comfortable with and who is a good communicator will go a long way in helping you achieve sanity in your legal budgeting.

The cost of a single US trademark registration is only one small piece of the puzzle when considering how to protect the intellectual property of a growing business.  Trademark portfolio development, foreign protection, copyright, and patent protection are a handful of some of the other considerations you will face as a successful entrepreneur.  Nevertheless, a first trademark application is always a good starting point and the more information you have on the process, the better off you will be.

As surely as the phases of the moon change, I see some post in the blogosphere about a joker who is trying to “trademark”* a common industry term.  Fear not, good friends, there is little to worry about in such cases.  I’ll attempt to explain why.

First of all, simply applying for a trademark means very little unless the application actually proceed to registration.  And, in 99% of the cases where the joker applicant in questions is attempting to usurp some common industry term, there will never be a registration granted.

For the most part, trademarks in the United States (and, indeed, in most other countries) apply only to those goods and services with which they are used.  There is an exception to this rule for trademarks like FORD and GOOGLE that have achieve what in trademark law to called “fame,” and owners of those marks may prevent others from using them on goods and services unrelated to their own offerings.  But this famousness exception clearly has nothing to do with some fool trying to get a trademark registration for a common industry term.

When a trademark applicant applies for registration of a trademark, they must specify what goods and services are (or will be) used in connection with the mark.  If the trademark (or part of it) has some significance in relation to the industry in which the goods or services are offered, or the goods or services themselves, the applicant is typically asked to state that significance.  When the trademark (or part of it) has some meaning in relation to the goods or services and the meaning is descriptive in nature, then the trademark cannot be protected under U.S. law.

Seeing how this works in action, someone may very well wish to use the term SEO as a brand name for baked goods.  In that case, the term SEO has no relation whatsoever to the goods offered, so the trademark would not be rejected for descriptiveness.  Someone applying for registration of the mark SEO in connection with services that are clearly related to advertising generally and search engine optimization in particular, has got some problems on their hands.  It doesn’t matter one bit of the applicant claims (whether true or not) that the term SEO as they use it stands for something else — that is completely irrelevant.  The only question is whether consumers in the relevant industry would recognize the term in question and, if so, then does the term as recognized describe some aspect of the relevant goods or services identified in the application?

In the case of an application to register the mark SEO for services clearly having everything to do with search engine optimization, there is little to no hope that a registration will be granted.  Further, playing games with the US Patent and Trademark Office by arguing that you mean something else when you use the acronym SEO, even though it is obvious that your services are directly related to search engine optimization, is not going to win you any favors.

Lastly, I’ll also add that any discussion over who the first person was to coin the acronym SEO is moot.  Trademarks are not like copyrights or patents — being first to “coin” a phrase means nothing.  You have to use a trademark in connection with goods or services, in a non-descriptive way, in order to obtain rights in the trademark.  When some term becomes a widely known concept in a particular industry, the cat is essentially out of the bag — nobody will ever really be able to hold trademark rights in that term, within the relevant industry, because nobody within that industry would ever see the phrase and think it was a trademark rather than the term having a recognized meaning.  There’s still that possibility of SEO brand apple pies, however.

*For those of you who still use “trademark” as a verb, I’ll do my part on behalf of all trademark attorneys and tell you to stop doing so.  One does not “trademark” something.  One uses a trademark and thereby accrues trademark rights.  Often times, when people say that someone is trying to “trademark” something, they tend to mean that someone is trying to prevent everyone else from using that term in any way whatsoever — this is actually not possible under the law.  One can try to register a trademark, but that is a very different thing.

Given the popularity of the iPhone app store and the still-exploding growth of development activity around it, we thought it would be useful for developers to get a sense of some of the legal pitfalls to avoid in creating a new app.

The iPhone Developer Legal Guide is available for download here.

This week, news of LaRussa’s withdrawal of his lawsuit has been made public.  This, before any real activity in the case was undertaken.  LaRussa’s camp claims that his objective of having the offending account removed was accomplished and, accordingly, the lawsuit was no longer necessary.  Critics say that the lawsuit was never meritorious and was withdrawn before having to spend time and money substantiating the claims.

For observers who have their own online businesses that allow user comments or other content, this lawsuit is a good reminder of a few things.  One is that there is, on the books at least, a fairly good set of protections for publishers of user data that may run afoul of the law.  As mentioned above, the CDA (Section 230) provides such protection for non-IP claims.  For copyright related claims, the Digital Millenium Copyright Act provides its own safe harbor provisions that also employ a “notice and take down” procedure that requires publishers to respond to complaints received from content owners.  However, despite these protections, third parties certainly may threaten and even file lawsuits against online publishers of user content.

For publishers of user content, the potential risks are many.  The best advice is to foster a community that is unwelcoming of illegal activity of any kind.  Beyond this, a site’s terms and conditions should certainly allow for summary termination of accounts for any illicit or even “ojbectionable” activities, as defined by the site owner.  If and when a threat does come, experienced legal counsel should be relied on for determining whether a claim is baseless or solid, and quick actions should be taken, if necessary.