Trademark law hasn't caught up with technology. How you can help keep your brand from losing its trademark status.
I'm not an attorney, but I've spent enough time with corporate legal counsel over the years to qualify as a legal aide... at least as far as trademark issues on the Web are concerned.
For a big brand name to be protected by trademark laws, the trademark holder must consistently comply with a series of requirements. A trademark should always be used as an adjective, for example, followed by the appropriate descriptive noun. If not, the trademark could become generic, and the brand's trademark status could be lost.
Trademarks should never be used in possessive, plural, or hyphenated forms. They shouldn't be altered in any way. Unless, of course, a trademark is used in a domain name or a PPC (define) campaign. Then, just about anyone can own a piece of a trademarked big brand so long as these activities don't create consumer confusion.
Broad-match strategies automate the process of buying keywords that are trademarked brand names, even though the trademark itself cannot be used in ad copy. Domain name registrars automatically assist would-be registrants in finding available derivations of trademarked brand names. Big brands suffer when help centers help others to dilute trademark use.
The result? Corporations spend millions to protect trademarked brand names online. We spend over $100,000 each year on parked domain names alone, for just one trademarked brand name. These expenditures, of course, are eventually passed on to consumers.
As an in-house SEM (define) specialist, you can help protect your company's trademarks on the Web by working to develop processes and procedures to protect your company's brands. The more automated the process, the better. There are plenty of tools to help streamline efforts toward efficiently managing the volume of information that needs to be processed.
Domain name watch services notify you of newly registered domains with your trademark in them. Portfolio programs help snag expired domain names before they return to general availability. Reverse IP-lookup tools can help you identify registrants when anonymous registrar services obfuscate domain name ownership. And there are myriad services that keep soon-to-expire domain names from slipping from your grasp.
Consolidating domain name portfolio management helps minimize risks of domain and brand name abuses on the Web. How corporate legal counsel responds to quash trademark abuses is a bit precarious. After all, no large corporation is eager to create bad PR for a big brand by throttling the little guy.
When domain abuse or trademark infringements are discovered, best practices dictate initial correspondence contain a friendly suggestion that the individual or organization reconsider its activities. If a gentle warning fails to produce desired results, most corporations escalate the issue by sending an official cease-and-desist notice.
If the trademark infringement evolves around a PPC campaign, send a copy of the cease-and-desist letter to the service distributing the ads in question. If affiliate ad issues are involved, the SEM services will work with you to verify who can advertise under your trademarks, helping you thwart those who don't have similar relationships with your trademarked brands.
If the trademark infringement revolves around domain name abuse and the cease-and-desist letter is ignored, the issue of legal ownership is escalated to include the Internet Corporation for Assigned Names and Numbers (ICANN). The uniform dispute resolution policy (UDRP) is in place to facilitate resolving such issues. If the domain is owned by an affiliate, it's time to consider suspending the business relationship until an agreement can be struck.
The goal is to avoid litigation for all but the most egregious trademark abuse issues, such as commercial profiteering, phishing (define) expeditions, and nasty downloads loaded with Trojans, viruses, or malware.
Satire sites require an even more delicate balance between legal action and inaction. Even Google is split on how to handle parody issues. It quickly shot down Booble.com for trademark infringement because Booble profited from Google's good name. The site sold T-shirts with Google's color scheme under Booble's logo pursuant to finding good porn on the Web. Google didn't attempt to thwart Gizoogle.com, a parody site that translates Google search results into gangsta rap. Gizoogle is purely an entertaining translation service. No profiteering is involved.
One new development reveals just how far trademark laws have fallen behind technology. Google and other big-brand trademark holders are seeking to set precedent for sub-domain trademark abuses.
Someone goes out and registers a country code top-level domain, such as co.dk or biz.ly. He then sells sub-domains with trademarked brands, such as google.co.dk, which gives the appearance of being a Google site operating in Denmark. Sub-domain ownership is difficult to track. While the trademark holder pursues the elusive owner, the brand can suffer plenty of damage.
Bayer lost its trademark on "aspirin" to "genericide." Xerox was able to prevent the genericide of its trademark through an extensive marketing campaign advising consumers to "photocopy" rather than "Xerox" documents.
Until laws are updated to redefine what constitutes consumer confusion and trademark dilution, the only recourse corporations have for protecting trademarked big brands on the Web is constant vigilance. Even then, there are few guarantees trademark holders can protect a big brand on the Web.
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P.J. Fusco has been working in the Internet industry since 1996 when she developed her first SEM service while acting as general manager for a regional ISP. She was the SEO manager for Jupitermedia and has performed as the SEM manager for an international health and beauty dot-com corporation generating more than $1 billion a year in e-commerce sales. Today, she is director for natural search for Netconcepts, a cutting-edge SEO firm with offices in Madison, WI, and Auckland, New Zealand.
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