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Show me the money

Just registering or making minimal use of a domain name, much less “parking” it, is not “use in commerce.” There’s got to be some… commerce! Most lawyers practicing in the area of trademark law know this, but LIKELIHOOD OF CONFUSION® exceeds ordinary aspirations and speaks directly to its people — the people who call up trademark lawyers and want to register trademarks based, indeed, on the names of websites not yet in being or even less.

So, when is use of a would-be trademark in a domain name “use in commerce”? Well, per Michael Atkins, now we know a little more about when it isn’t:


Atlas - Rockefeller CenterPlaintiff argued he had gained exclusive control over the use of the word “whisper” in the title of his project because he had acquired a service mark in his Web site domain name [] for “providing information, via the Internet, in the field of entertainment, namely, the development, production and distribution of motion picture films.”

The court disagreed. In June, Judge Jeffrey White denied Mr. Guichard’s motion for preliminary injunction because “his described use of the WHISPER OF THE BLUE mark does not satisfy the ‘use in commerce’ requirement necessary to establish priority of use. Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

Our advice is the same for 80-90% of people who make such inquiries: Build your business first! If there is a brand worth protecting, it will be because you have made it valuable by virtue, not of the Patent and Trademark Office, but of having generated at least a little commerce — money, busness, gelt! — under its name!

Most of these people never come back, and it’s not because they didn’t love the advice, or the one who gave it. It’s because they end up not building the business. Hey — LIKELIHOOD OF CONFUSION® has been there, and not-done that. I hope it works better next time. But in your case, at least I didn’t get you there $850 (plus disbursements) quicker.

In this great country, trademark rights and priority are established by use, not registration — the rest is commentary. Now, go and use!

Locking it down

Every lawyer who practices in the intellectual property area is asked frequently how to go about protecting a unique or creative idea that someone fears is at risk of being stolen by a prospective investor, partner or advisor to whom early disclosure is necessary. During the dot-com bubble, everyone walked around, it seemed, with an NDA (non-disclosure agreement) ready to be beamed from his Palm. Is an NDA still the answer?  This post is actually about trademark registrations — but let me briefly reiterate my views about NDA’s, and, as we say, “connect up” the two seemingly unrelated topics.

I usually have a couple of points to make in response to the NDA question:

  1. Most people to whom you are considering making disclosure are in the driver’s seat, and will not sign a non-disclosure agreement because doing so almost invites a claim if they end up getting involved in someone else’s similar project years later. Or they won’t sign just because you need them more than they need you.
  2. Your idea isn’t really all that hot. Successful new businesses owe far more to (a) entrepreneurs’ focus and dedication, (b) adequate capitalization, (c) great timing and (d) the grace of God (not in that order), than to having come up with truly original concepts.

Security or death

These and similar arguments are well developed in an article from a few years ago called “The Cult of the NDA,” written (I think) by a fellow named Peter Leppik, which article lawyer readers of this blog should bookmark.

Comes now an entertainment lawyer named Barry Neil Shrum who has written a pretty thoughtful piece on some approaches that actually might work. It’s worth taking a look at. But I must note disagreement with his advice about trademarks, which unfortunately will reinforce, unintentionally, a number of common misconceptions about trademarks that are “out there.” And that means it’s time again to try to set things straight.

Early on Barry presents a fair summary of what you need to get trademark protection, though more on his allusion to securing trademarks for “titles” below. He helpfully makes it clear that federal trademark registration is “tedious, complicated and costly,” but doesn’t explain why, or explicitly address the concept of the Intent to Use application, which seems central to his ultimate advice.

And that leads to my beef — the following recommendation that Barry puts first on his list of otherwise very good, otherwise endorsed-by-LIKELIHOOD OF CONFUSION® suggestions:

(1) First, trademark all slogans, titles or name, at the very least your state level, but preferably at the federal level;

Unfortunately, this suggestion is densely packed with problems because Barry has not elucidated some fundamental facts about trademarks. Read More…