1. Social Media and
Intellectual Property
September 22, 2011
Pat Shriver
2. Agenda
Trademarks and Trademark Protection
Domain Names
“Special” Trademark Issues on the Internet
Copyright Issues
Obtaining Rights to Intellectual Property
3. What is a Trademark?
A trademark is a
word
name
symbol
sound, or
color
that distinguishes goods or services
6. Unregistered Trademarks
Under U.S. law, trademarks do not have to
be registered in order to be entitled to
protection
Unregistered trademarks can and do prevail
over well-known trademarks
Amazon bookstore
Who’s Your Patty?
7. Trademark Searches
US rule – “first to use”
Search reveals “confusingly similar”
trademarks
Avoid problems with registration
Avoid devoting resources to brand
management
8. Trademark Registration Process
Trademarks are registered with the Patent &
Trademark Office
State registration is possible
Application is filed
Mark (including JPEG of design)
Description of goods and services
Specimen of use
First use date
9. Trademark Registration Process
Application is reviewed by trademark examiner
Office Action and responses
Approval of application
Publication in Trademark Gazette
Trademark is registered
Notice of Allowance for ITU applications
Process usually takes a minimum of 9 months
10. Maintaining a Registration
Affidavit of Use and Incontestability filed
between 5th and 6th anniversary
Affidavit of Use and Renewal filed within 1
year before every 10th anniversary
Trademark must be in use for all listed goods
or services, or list must be amended
11. Benefits of Trademark Registration
Prima facie evidence of exclusive rights
Incontestability
Constructive notice
Remedies for infringement under Lanham Act
Ability to use “®” symbol
13. Trademark Selection
Arbitrary or fanciful trademarks are best
“strength” of mark
Brand consultants
Trademark searching
Word marks vs. design marks
14. Domain Name Protection
Anti-Cybersquatting Consumer Protection Act
Uniform Dispute Resolution Procedure
Generally, anyone who registers a domain
name confusingly similar to a trademark in
bad faith can be required to turn over the
domain name
15. Internet Trademark Issues
Metatags and search keywords
Brand-Squatting
“Sucks” sites
Parody
Twitter “impersonation” accounts
Fair Use
16. Copyright Issues
Copyright vests in “creative works fixed in a
tangible medium”
Literary, dramatic, musical, artistic, or other
works
Copyright in a work is owned by the author
Exceptions – fair use, assignment
17. Digital Millennium Copyright Act
Criminalizes the use of anti-circumvention
measures
MORE IMPORTANTLY, provides protection
for online service providers
Designation of copyright agent
Takedown notices