Ever wondered why you should seek registration of your Trademark with the USPTO?
0 Comments
In a prior blog post, I discussed protecting trademarks with the emergence of new generic top level domains (gTLDs). In this post, I discuss obtaining trademark protection for the gTLD itself, when that gTLD consists of a trademarked term. On June 1, 2014, a new law went into effect in Maryland. Section 11-1605 of the Maryland Commercial Law Annotated, “Bad Faith Assertions of Patent Infringement” is a frontal assault on so-called “patent trolls.” The law prohibits making an assertion of patent infringement against another in bad faith. It then sets forth various criteria for a court to consider in determining whether an assertion of patent infringement is made in good or bad faith. First among these considerations is whether the demand letter provides basic information such as the patent number, contact information of the patent owner, and facts relating to the areas in which the target’s products or services infringe the patent. Other considerations include: · whether the patent owner conducted an analysis comparing the patent claims to the target’s products or services, · whether the demand letter required a response or payment within an unreasonably short period of time, · whether the license offered was based on a reasonable estimate of the value of the license, · whether the assertion of infringement is without merit, · whether the patent owner has filed or threatened lawsuits based on the same or similar assertion of patent infringement that a court found to be without merit · whether the patent owner has successfully enforced a patent through litigation, and · notably, whether the patent owner “has made a substantial investment in the use of the patent or in the production or sale of a product covered by the patent.” This last consideration highlights the fact that this new law is designed to disfavor non-practicing entities, particularly patent trolls. The question, though, is whether legitimate patent owners, acting in good faith will be collateral damage in this attack. The standards in this law are fuzzy, at best. There are several references to certain actions being undertaken in a “reasonable amount of time” without any guidance as to what amount of time is reasonable. Worse, the law requires that offers to license the patent be based on a “reasonable estimate of the value of the license.” In a typical patent litigation, both sides will hire experts who will advocate grossly disparate values of the patent license. How then, will a court determine whether a pre-litigation offer of a license is based on a reasonable estimate of the value of the license? Must the patent holder obtain a written valuation of the patent before sending a demand letter? Courts are accustomed to interpreting laws with standards that are not clearly defined. Surely, courts can interpret this law and determine on the facts of a given case whether the parties acted reasonably. But, with non-compliance of this law holding the threat of an award of treble damages up to $50,000 plus court costs and attorneys’ fees, one has to wonder whether patent holders will risk sending a demand letter or simply file a lawsuit. While Maryland’s desire to slay the patent trolls is certainly understandable, the real victim may be out-of-court negotiation of patent disputes. See the text of the new law, below: What is the Difference Between TM, SM, and (R)?This will be the first in a series of videos describing some basic information about trademarks. So far, this month, 23 new generic Top-Level Domains (gTLDs) have been delegated (they now appear in the root zone of the Domain Name System). That’s 113 so far this year, with many more expected to follow. Among these exchanges are:
The fact that these gTLDs have been delegated does not mean that they are immediately available for people to go and register domains with these extensions. There is a “Sunrise” period during which trademark owners can register domains before they become available to the general public. This sunrise period varies depending upon the registry operator, but must be at least 30 days. Thus, trademark owners have the first opportunity to register their trademarked terms with the new extensions…Kodak.photo or DeWalt.tools, for example. But, does that mean that the only way for a trademark owner to protect its brand is to buy every conceivable domain extension for their trademark? Fortunately, no. After the sunrise period, the registry owner must hold a Trademark Claims period. If someone attempts to register a second-level domain name using a trademarked term during this period, the registrant will be sent a notice that they may be infringing a protected trademark. If the registrant ignores this warning, the owner of the trademark will receive notice of the intended registration so they can take appropriate action to protect their brand. As a trademark owner, what should I do? In order to take advantage of the Sunrise Period to protect your marks, you must register the marks in ICANN’s Trademark Clearinghouse (TMCH). Once the ownership in the mark is verified, the TMCH will create an SMD file, which allows the trademark owner to access the sunrise period for every new gTLD. Registration is also a required in order to enable the two notices under the Trademark Claims period. Contact Us today to so we can help you register your marks in the TMCH, evaluate your current domain name extensions, identify potentially valuable new extensions, and respond to potential registrants of your marks with the newly available extensions. |
Archives
April 2022
Brian KaiderExperienced litigation, patent, and trademark attorney Categories |