Trademarks

The Silver Lining of the GDPR for Ad-Tech Companies

Published on

By: Vivek Vaidya The General Data Protection Regulation (GDPR) went into effect in May of 2018 and has caused internet businesses with European Union users to shift their data collection, storage, and usage practices.  The spirit of the GDPR is to give individuals greater control of their data in a world in which practically all… Read More

By: Vivek Vaidya

The General Data Protection Regulation (GDPR) went into effect in May of 2018 and has caused internet businesses with European Union users to shift their data collection, storage, and usage practices.  The spirit of the GDPR is to give individuals greater control of their data in a world in which practically all computer devices are connected and some estimate the internet of things to be a $9 billion industry by 2020.  The EU has recognized that it is important that users be able to control the valuable information they provide on the internet, especially in light of how often regular internet users input personal information.

Amongst the requirements of the GDRP is that data is collected in accordance with one of the following justifications: (1) with the consent of the user; (2) in performance of a contract with the user; (3) in order to comply with law; (4) for the purpose of health and safety; (5) to perform an official governmental function; or (6) based on the legitimate interests of an organization or third party.  For ad-tech companies who do not have a prior business relationship with the user, consent is the primary justification for processing personal information. Another requirement of note is that websites, apps, and online platforms be able to provide users with their data upon their request, and also delete data upon request.

The GDPR particularly affects ad-tech businesses that base their marketing practices on third-party data used to target consumers.  The inability of websites to share data is causing them to rethink their customer service, communication, and business strategies. Online marketers are no longer able to chase users around the internet with a bombardment of the same advertisements.

There have been different approaches by ad-tech companies for shifting their behavior while remaining relevant and complaint.  One is a hands-off approach, where companies have stopped collecting and handling personally identifiable information for users located in the European Union, which obviously hurts a company’s bottom line. A second approach has been to rely on the GDPR’s exemption of collecting data for a “legitimate business purpose,” which includes requested marketing, fraud prevention, and sometimes market research.  A third approach is the passive approach of hoping that the EU only goes after big players in the tech industry, and will have to make concessions and changes to the GDPR before going after the smaller fish.

Companies can still collect cookie-less data like keywords and search data and be GDPR compliant, which highlights the importance of creating a trustworthy relationship with users.  This type of first-party data, or data that the consumers have directly provided through a company’s website, should be prioritized in marketing efforts.

The GDPR is persuading many businesses to provide the same rights to all users, including those outside the EU, because of the momentum towards similar data privacy regulations in other jurisdictions.  However, it is important to realize that the GDPR does not consist of static regulations. Over the next months and years, there will be challenges and changes to the regulations, so it will be interesting to see how the EU changes the regulations and  publishes clarifications to vague and ambiguous portions of the law.

Overall, the GDPR requires businesses to move away from third party data collection and marketing campaigns based on this data, a practice that regularly annoys customers.  While this may seem like a hindrance on marketing efforts, the silver lining is that the regulations present an opportunity to create a unique value exchange with consumers that leads to more consumer trust and better bottom line results.  Companies that send too many irrelevant marketing materials and create bad customer service interactions are more likely to be contacted by consumers with burdensome GDPR information requests, so it is important to create relationships with users that make them feel comfortable providing first-party data and consent to receiving marketing materials.

The post-GDPR world means that ad-tech companies need to be more open and stop sales tactics that irritate consumers.  One positive effect of the GDPR is that companies are being forced to be more open, deliver more value, and enhance their relationship with consumers.  It should cause a constructive impetus for improvements across the tech industry, and companies that bear this in mind will do well to grow their bottom line.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

International Trademark Registrations and The Madrid Protocol

Published on

By: Vivek Vaidya While federal trademark registration with the United States Patent and Trademark Office provides protection for business activities in the United States, companies that offer products and services internationally should look to register in each of the countries they perform commerce.  Filing applications in multiple countries would be extremely tedious, but luckily an… Read More

By: Vivek Vaidya

While federal trademark registration with the United States Patent and Trademark Office provides protection for business activities in the United States, companies that offer products and services internationally should look to register in each of the countries they perform commerce.  Filing applications in multiple countries would be extremely tedious, but luckily an easier way exists: The Madrid Protocol for International Registration of Trademarks. The Madrid Protocol provides an efficient way for federal trademark owners to protect their trademarks in multiple countries though a single application that is processed by their home country’s trademark office.

HOW TO APPLY

An individual or entity seeking international trademark registration through the Madrid Protocol is required to register their trademark with a country’s trademark office that has agreed to be part of the Protocol.  Generally, one may register in a country’s trademark office if its entity was formed there, or if an individual is a citizen/domiciled in the country. The next step is to submit an international application through this same trademark office, which will certify and forward the application to the World Intellectual Property Organization (“WIPO”).  An international registration application can be filed in English, French or Spanish, and includes filings fees amounting to one a basic fee, a fee for each class of goods/services if filing in excess of three classes, and an additional fee for each country in which registration is sought.

APPLICATION EXAMINATION

Once the International Bureau of WIPO receives your international application, WIPO will conduct a formal examination of your international application. If WIPO approves the application, then the mark will be recorded in the International register and it will be published in the WIPO Gazette of International Marks.

Next, the individual trademark offices of the applied for countries will conduct a substantive examination to determine the scope of protection according to their domestic legislation. WIPO has no control over the national trademark offices’ decisions regarding the scope of the protection, therefore the national offices decide the scope of your trademark protection in their country. Once the national trademark office makes their decision, WIPO will record the decisions of these offices and record them in the International Register.  An international trademark registration is effective for 10 years and it can be renewed for 10-year periods. The effects of an international registration start from the date of the international registration in each country that protection was sought.

I WANT TO REGISTER MY TRADEMARKS INTERNATIONALLY. WHAT NOW?

If you have questions or would like to learn more, please give us a call at (415) 633-6841, or email us at info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

How to Identify My Trademarks

Published on

By: Vivek Vaidya Building a strong reputation for the goods and services you provide does not happen overnight.  It takes dedication and hard work to develop your brand and customer base, and that is why identifying and protecting your trademark is vital to the growth of your business. A trademark is a set of words,… Read More

By: Vivek Vaidya

Building a strong reputation for the goods and services you provide does not happen overnight.  It takes dedication and hard work to develop your brand and customer base, and that is why identifying and protecting your trademark is vital to the growth of your business.

A trademark is a set of words, a logo, or a slogan that the consuming public comes to associate with your products or services.  When a customer sees your trademark, it conjures the entire experience they had when dealing with you or your company: the quality of the goods and services, the people they dealt with, the tone of the experience, and intangible gut feeling they have about the brand.  Even potential customers who have yet to use your products or services may have an impression about your brand through exposure to marketing or hearing others’ reviews. Trademarks are critical to any business because the goodwill they represent has tangible value. It allows consumers to make quicker decisions about where to direct their resources, which means a business with a strong trademark will have steady and growing revenue.  In short, everything your brand stands for is represented by a simple trademark.

There are various types of trademarks, but the most basic are the following:

Word Mark

A word or collection of words that are used in association with your products or services, often seen in advertisements or on products/product packaging.

Slogan

A phrase, often used in tandem with a word mark or a logo, that is displayed in conjunction with your products or services.

Logo

A distinctive design that is used in connection with your products or services.

Using marks in the three categories above allows you to grow the goodwill between consumers and your brand.  By establishing a trademark, you can prevent competitors from using the exact mark, or any confusingly similar marks.  Registering trademarks with the United States Patent and Trademark Office (USPTO) is the best way to protect your trademark, and is essential for any serious brand.  To learn more about protecting your trademarks, contact Bend Law Group, PC at (415) 633-6841 or info@bendlawoffice.com. 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

Efficiently Enforcing Your Trademarks: The Importance of Monitoring Services

Published on

By: Vivek Vaidya Obtaining a trademark registration with the United States Patent and Trademark Office is an important step for any business.  It carries the presumption that the owner of the registration owns the mark in all 50 states and is a way of establishing legitimacy in the marketplace. While ownership of a trademark registration… Read More

By: Vivek Vaidya

Obtaining a trademark registration with the United States Patent and Trademark Office is an important step for any business.  It carries the presumption that the owner of the registration owns the mark in all 50 states and is a way of establishing legitimacy in the marketplace.

While ownership of a trademark registration allows you to prevent others from using a confusingly similar mark, you have a duty to actively enforce your trademark.  Failing to do so can actually erode your trademark rights. Allowing others to use the same mark is evidence that your trademark is not a strong one.

The USPTO does some work for owners of federal registrations in preventing confusingly similar marks from passing their examination process, but the fact is that the examiners who review trademark applications are people and the determination whether a mark infringes on another is a multi-factor balancing test.  Two reasonable people can come to different conclusions when reviewing the same trademark application.

This is why the USPTO provides an alternative avenue of protecting your rights.  As those who have gone through the registration process may know, the last step in the process after the examiner approves an application is called an Opposition Period.  During this 30-day window, third parties can formally oppose an application, and argue that it should not mature into registration because doing so would infringe upon their trademark rights.  A trademark owner can keep track of applications that are in the Opposition Period because they are published weekly on the Official Gazette, an USPTO publication that can be hundreds of pages long.  However, searching through the Official Gazette each week will make any normal person’s eyes glaze over.

This is where monitoring services come in.

Various companies provide software services to monitor the Official Gazette for confusingly similar trademarks that are progressing towards registration.  Signing up with these services allows trademark owners to be notified when such an application exists. At this point, the owner can work with an attorney to form a strategy for opposing the application.
At the end of the day, you as a trademark owner are responsible for policing your trademark rights, and not doing so erodes those rights.  Monitoring the Official Gazette for potentially infringing trademarks is extremely tedious, which makes monitoring services very attractive.  Stopping potential infringers in their tracks during the application process is an efficient way to stop infringement before it occurs, reduce the risk of expensive litigation down the road, and ensure that your trademark rights are protected.

If you are interested in monitoring services, having an attorney monitor on your behalf, or would like legal aid with opposition proceedings or trademark disputes, we can be of aid.  Please call (415) 633-6841 or email us at info@blgtrademarks.com for further assistance.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

Copyright Basics

Published on

By: Vivek Vaidya What Can Be Copyrighted?  A copyright is given to any expression of an idea, fixed in a tangible medium, that contains at least a modicum of creativity.  In simpler terms, copyright extends to any tangible creation that required the slightest of human discretionary choice to create.  A scribble on a piece of… Read More

By: Vivek Vaidya

What Can Be Copyrighted? 

A copyright is given to any expression of an idea, fixed in a tangible medium, that contains at least a modicum of creativity.  In simpler terms, copyright extends to any tangible creation that required the slightest of human discretionary choice to create.  A scribble on a piece of paper can be protected by copyright law.

What Rights Do Copyrights Give You? 

There are 6 rights associated with copyright protection: 

  1.  To reproduce the copyrighted work in copies or phonorecords;
  2. to prepare derivative works based upon the copyrighted work;
  3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
  4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
  5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
  6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

A copyright generally lasts for the life of the author plus 70 years, meaning you can pass it down for future generations to profit from.

Benefits Of Registration With The U.S. Copyright Office 

A copyright is created when the work itself is created.  That means you own a copyright even if you do not register the work.  However, there are a host of essential benefits for registering your copyrights, including the following:
–

  • Provides Notice:  Registering your copyright with the U.S. Copyright Office puts others on notice that you are the owner of the copyright.  You can always license, or completely sell one or all of the 6 rights associated with a copyright above. Providing notice means opening up the opportunity for monetizing your copyright, especially when others want to perform or display your work, or make derivative works based on yours.
  • Registration is required to sue for infringement:  In order to sue for copyright infringement in federal court, you have to have your copyright registered.  Therefore, registration is essential to actually enforcing your rights.
  • Five year presumption:  Registering a copyright within 5 years of publishing the work give you the presumption in court that the facts in the registration are all true.  This makes it much easier to win a case, because the defendant then has the burden of proving that they did not infringe on your copyright. The law is on your side, and legal fees are greatly reduced.

Conclusion

Registering a copyright is an essential process for any person who is looking to make a living off their creativity.  You automatically get basic copyright protection when you create the work, but registering it protects it at a much more substantial level because of the enforcement power, and it opens to the door to all types of new opportunities for growth and monetization.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

Copyright Assignment vs. Copyright License

Published on

By: Vivek Vaidya Copyright owners have a bundle of exclusive rights that include the right to publish, copy, distribute, display, perform, and create derivative works based on the original. When giving another person permission to do any of those things with your work, you need a license or assignment agreement. Having the proper agreement in… Read More

By: Vivek Vaidya

Copyright owners have a bundle of exclusive rights that include the right to publish, copy, distribute, display, perform, and create derivative works based on the original. When giving another person permission to do any of those things with your work, you need a license or assignment agreement.

Having the proper agreement in place will ensure that your intentions are met in terms of who will maintain ownership over your copyright and what exact rights out of your bundle of rights you’ll be giving the other party.

Copyright Assignment

With a copyright assignment, you are contracting to give someone else your entire copyright. Upon execution of the agreement, the ownership of the copyright will transfer from one party to another. Once you assign your copyright, you may not publish your work even if you were the original author.

Assignment with Reversion

A newer type of assignment is an assignment with reversion. A reversion is a future right to own the copyright. Thus, the copyright will be granted to another person, who owns the copyright for a period of time or until a condition is met, and then the copyright reverts back to the original owner. In some cases, the original owner will have to pay for the reassigning of the copyright.

Copyright License

If you want to maintain ownership of the copyright, a license is a better option. With a license, you’ll be maintaining ownership, while granting permission for another party to use your work in a particular way. It’s very important to carve out the scope of the permitted use carefully to ensure that you’re not granting an over-inclusive set of rights.

Other important considerations are the license’s exclusivity, duration and payment terms. Parties may negotiate for whether the license is exclusive, meaning that the licensee will be the only person afforded those rights and the licensor will not grant these rights to anyone else, or whether the license is non-exclusive, meaning that the licensee is not the only person or entity being granted the particular rights. The license agreement’s duration shall be clearly provided, including both parties’ rights to terminate. Finally, how the licensor will be paid for the granting of the license should be laid out.

Assignments and Licensing Agreements should be drafted by an attorney to ensure that existing and future rights are protected, while keeping in mind the overall business objectives and creative pursuits. If you are thinking about signing a license or assignment, please consult with an attorney to make sure you understand every provision and the agreement as a whole.

If you would like help reviewing or drafting an Assignment or Licensing Agreement, or if you have general questions about the topic, please do not hesitate to give us a call at (415) 439-0153, or email us at info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

Common Office Action Refusals: Trademark Section 2(d) Likelihood of Confusion

Published on

By: Vivek Vaidya One of the most common refusals of a trademark registration with the United States Patent and Trademark Office is a Section 2(d): refusal for likelihood of confusion with a prior registered mark.  The objection goes to the heart of trademark law, but it can be avoided or overcome with the right strategy…. Read More

By: Vivek Vaidya

One of the most common refusals of a trademark registration with the United States Patent and Trademark Office is a Section 2(d): refusal for likelihood of confusion with a prior registered mark.  The objection goes to the heart of trademark law, but it can be avoided or overcome with the right strategy.

A refusal for likelihood of confusion is based on the examining attorney’s determination that the applicant’s mark used in association with its range of goods and services so resembles a registered mark that consumers would be confused as to who is actually the source of the goods or services associated with the mark.  

Factors for Determining Likelihood of Confusion:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
  • The relatedness of the goods or services as described in the application and registration(s);
  • The similarity or dissimilarity of established, likely-to-continue trade channels;
  • The conditions under which and buyers to whom sales are made, i.e., impulsive vs. careful, sophisticated purchasing;
  • The number and nature of similar marks in use on similar goods; and
  • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. 

While all of the above factors are considered when making a 2(d) determination, the similarity of the marks in sight and sound, and similarity of the goods and services are usually given the most weight.  There is no mechanical test for a 2(d) refusal, and each case is decided based on its unique circumstance.

Avoiding the Problem: Clearance Searches

The best practice in avoiding a 2(d) refusal is to follow the examining attorney’s protocol for discovering conflicting marks to the best of your ability.  The examining attorney conducts a search of the USPTO’s records on an internal system for marks that so resemble any registered mark or prior filed application.

While the examining attorney’s particular search strategy is made public, the internal system that the examining attorney uses is not.  The USPTO does have a search engine that allows the public to conduct searches, but it is easy to miss a conflicting mark. This is because examining attorneys look at not only similarity in sight, sound and streams of commerce, but also foreign equivalents, connotations, synonyms, natural expansions upon a stream of commerce, and many other factors.

The bottom line is that conducting a perfect search is very difficult, which is why an applicant looking to register a mark should contact an attorney to conduct a clearance search.  The attorney will do their best to emulate the examiner’s protocol, and may even go a step further by ordering a clearance search from a professional service that performs an extremely meticulous clearance search.  An attorney is best suited to sift through the professional search results and make a determination of the risk each mark presents while being mindful of practical considerations.

Overcoming a 2(D) Refusal

If you have received an Office action that cites a 2(d) refusal for likelihood of confusion, it is your right to present arguments to the USPTO that the refusal was incorrect.  The two most common arguments are that the marks are not confusingly similar, or that the mark has acquired distinctiveness in the marketplace such that consumers have a strong association between your mark and your services such that registration should be permitted.  Making these substantive arguments truly requires an experienced attorney who has argued numerous Office Actions, understands the law, and can make the most persuasive argument possible – often utilizing extrinsic evidence.

Need a hand with performing a clearance search or responding to a 2(d) refusal for likelihood of confusion?  We are happy to help. Call (415) 633-6841, or email us at info@blgtrademarks.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less