Registered Trademark: What’s the Rush?

For two years now, I’ve had the illustrious Attorney DuBoff as an expert legal presenter at my professional art career conference, the smARTist Telesummit.

Not only can Attorney DuBoff hand you legalese in plain English, turns out that, as a young attorney with a yen for the arts in a firm that suddenly had a high profile artist client, he is the person who created the concept of Art Law as a field unto itself. (Amazing, isn’t it, to think someone could actually create a field of endeavor.) His book Art Law in a Nutshell is a classic.

When Facebook started getting in all our faces with changes that threatened protection of our images and brands, Attorney DuBoff was the first person …I turned to.

And it was his newsletter that first alerted me to the fact that Facebook had a small window of time to register a trademark before someone else tried to snatch it in the Facebook User Name Gold Rush a few days ago.

Then today, his newsletter arrived in my inbox and I realized you HAD to see it.

BI (Before the Internet), most artists would never have considered registering a trademark. But, as I’ve said over and over again, it’s a whole New World. And we ignore the new commandments at our peril.

I’m re-printing his newsletter in its entirety. Read, and think carefully about what to do next.

——–Trademarks: Protecting Your Most Important Asset——–

The DuBoff Law Group Legal Alerts

Last week we alerted you to the fact that Facebook had announced that it would allow owners of federally registered trademarks to “enroll” those marks with Facebook, preventing third parties from registering those marks as usernames.  The time Facebook permitted for the registration process was extraordinarily short, and the enrollment process closed after only a day, though trademark owners may still submit complaints about infringing usernames.

The fact that only owners of registered marks could take advantage of this procedure underscores the importance of having your trademark portfolio in order, and of registering any valuable words that you use to identify your business, products or services as federal trademarks.  It is worth bearing in mind that the trademark laws, a product of the 19th and 20th centuries, permit protection of a mark by different owners in nonconflicting markets.  For example, General Motors’ Cadillac trademark did not prevent Cadillac Pet Foods from using “Cadillac” to identify its dog food, or from registering that trademark.

The Internet, a more modern innovation, is different.  When, for instance, a name is first used as a URL in cyberspace, no one else will be allowed to obtain the same URL, even if the second claimant has an otherwise legitimate right to that name.  Further, search engines such as Google will generally feature the identified URL even if others have an equal or better claim to the trademark.

Ownership of a federally registered trademark establishes a presumption that the trademark is valid and helps to establish a priority as among competing owners, as well as to simplify claims of infringement reported to service providers, such as Google, eBay, and YouTube.

There are a number of other benefits provided to those who have federally registered trademarks, and the importance of protecting your company’s assets, including its intangible intellectual property, cannot be over emphasized.  It is, therefore, appropriate to determine whether the names you use to identify your business, products and services can be registered as federal trademarks as well as on the web.

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You can sign up for Attorney DuBoff’s newsletters, hear his presentations at this year’s smARTist Telesummit 2009 & smARTist 2008, and check out his books.