The United States Patent and Trademark Office’s recent handling of trademark applications suggests that businesses can significantly help — or hinder — their protection under trademark laws depending on how they manage their online presence. A few simple steps can help a business ensure it is able to take advantage of the fullest extent of trademark protection available.
Under the Lanham Act (15 U.S.C. §§1051 et seq.), a trademark is any word or symbol used to identify particular goods or services as originating from a particular source (like a business) and distinguishing these goods and/or services from those originating from other sources (like competing businesses). The most common example of a trademark is a brand name.
Many businesses do not realize they create some trademark rights (and, in turn, some obligations) the moment an identifying word or symbol is “used in commerce” in connection with goods or services – even if the business has not applied for, or received, a trademark registration from the United States Patent and Trademark Office (“USPTO”). The Lanham Act defines “use in commerce” as using a trademark in connection with the bona fide display, advertising, or sale of goods/services in interstate commerce. Offering goods or services for sale under a trademark via the internet qualifies as interstate commerce (rather than intrastate commerce) because consumers across state lines can see or purchase the goods or services. See Planned Parenthood Federation of America, Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997), aff’d, 152 F.3d 920 (2d Cir. 1998) (Table), cert. denied, 525 U.S. 834 (1998)
Today, the use of websites and social media in advertising goods and services is widespread amongst businesses of all sizes. Thus, businesses can unknowingly affect their trademark rights with a simple social media or website post because any such posts would automatically qualify as “use in commerce,” assuming the post is accessible via the internet. The upshot is that businesses should advertise and display trademarks (1) online and (2) in the exact manner in which the business seeks trademark protection.
First, regarding advertising online, this step is important because online advertising establishes the trademark is being offered in interstate commerce and, therefore, is eligible for protection under the Lanham Act beginning with the first date the good or service is advertised online. If, for example, a business only advertised a trademark in the window of a single brick and mortar store, this display would not, without more, qualify as use of the trademark in interstate commerce because there is no evidence that the window display affects commerce outside of the state in which the brick and mortar store is located. Thus, advertising the trademark online ensures the business can potentially receive trademark protection extending back to the first day the trademark was advertised online.
Second, as to advertising a trademark in the exact manner in which a business seeks trademark protection, this step is important because minor changes to a trademark could reduce the protection available to the business. For example, if a business uses the trademark “A-1 and Acme Company” in connection with various types of furniture, the business should be sure to always spell out “A-1 and Acme Company” in every place where the business has an online presence. Minor deviations from the trademark, such as a social media account titled “@shopA-1+acmeco”, could be enough to dilute, or prevent, any trademark protection a business could otherwise reap from a social media account.
Specifically, the USPTO recently suggested that use of a trademark through a social media account name may not be sufficient to prove use in commerce because the social media account name added the word “shop” to the beginning of a phrase for which a business was seeking trademark protection. As a result, the best practice to maximize trademark protection is to ensure all social media accounts associated with a business list the trademark exactly as-is.
Finally, businesses should be sure to explicitly advertise each and every good or service in connection with their trademark. In the “A-1 and Acme Company” example, that business should be sure to advertise online each new type of furniture the business offers for sale. Otherwise, the business may be precluded from obtaining trademark protection for new goods or services that were never previously advertised online in connection with the trademark.
With any trademark the best way to maximize protection under the Lanham Act is to apply for a trademark registration with the USPTO. The rights under such a registration, however, can be limited, or even prevented, if businesses do not properly manage their online presence in advance.