Tag Archives: Chicago Trademark Counsel

Change Management Protocols and Drafting Good Master Technology Service Agreements!

How do you draft a good Master Technology Service Agreement?  What do you consider?  What is reasonable? What is foreseeable?  What is too remote? How do you respond to an Evidence Preservation Letter? What is your clients’ doom and gloom fears?  These are all things that all technology and information technology consultants and teams have to consider and make good decisions on.  Without having a good team of professionals that can identify the areas of risk for the clients, the method and means of exploiting known or identified vulnerabilities, and creating a prompt data security protection protocol you may end up losing out from a change in ISPs or IT vendors.

Having good change management procedures is vital to the success of your clients and to protect them from many would be competitors looking to acquire your clients’ knowledge, trade secrets and intellectual property.  A good first step for protecting your clients is using good provisions in your Master Technology Service Agreements that all vendors have to comply with to ensure that the proper procedures are followed to ensure that key personnel, key clients, key vulnerabilities, key consultants and key terms and caveats are negotiated and drafted to protect against reasonably anticipated problems.

The Master TSA allows for a method of interjecting vital controls that can be adapted to the needs of the clients–sometimes all that is needed is a wise and seasoned Chief Technology Officer (“CTO”).  Other times–key schedules and predefined procedures to follow for implement changes in information technology services or hardware.  Sometimes good limitations on damages, warranties and representations and third party indemnification provisions are required to ensure that your clients are protected from potential errors in the change management procedures.

Finally, having good enforcement and corrective actions predefined and provided for in the Master TSA will save you a lot of headaches down the line–including delays based on the need for board or shareholder’s approval, manager or member’s approval, or similar delays that may be required in following corporate formalities.  Sometimes a rigid adherence to corporate formalities can allow a problem to become bigger over time and based on delays–it is generally advisable to deal with these types of data security problems sooner rather than later.

For more go to: http://www.bipeblawg.com, http://www.vrplawgroup.com, http://www.eebrunchclub.com

The Use of Disclaimers in the Context of Trademark Infringement Online!

The value of trademarks and trademark portfolios is in the ability to develop an online brand, increase your SEO ranking, and developing a good key word optimization site that allows you to acquire more online visitors than your competitors.  This is not the easiest thing to do, in light of, how often Google changes the webmaster policies or rules.  Moreover, the nature of organic search results is such that it does not stay constant, but is fluid–these organic searches that are performed by consumers are not going to be the same each month, quarter or year.

In addition, the use of disclaimers for trademark infringement you must be careful to ensure that your competitor is not able to diminish the effectiveness of the disclaimer by placing it in less visible area of the website.  If you are not careful the fees and expenses incurred or spent on a preliminary injunction will be wasted.  It is difficult to judge the effectiveness of a disclaimer, but the more prominent the disclaimer and the less likely it will be easily avoided by a consumer by clicking through a link or special portal the better off you will be as an online business operator.

If you take the time to develop a content rich website and develop a good SEO optimization strategy, then you want to ensure that it is adequately protected.   More importantly, if you expend the funds in acquiring a disclaimer to remedy consumer confusion, then you must make sure that at least the following is done:

1) the disclaimer is prominent in relation to the remaining content on the website;

2) the disclaimer is bolded, italicized, font and color are actually large and vibrant enough to ensure that it is easy for a consumer to find;

3) moreover, the disclaimer must be from a click through portal that requires the consumer to acknowledge that each has read and viewed the disclaimer;

4) also, the disclaimer must be such that it is only, avoidable after the issue of initial interest confusion has be resolved; and

5) the disclaimer is not subject to alteration or modification by online search robots.

This is a common concern in most trademark infringement matters or opinions in recent cases.  Often times, lawyers do their clients a disservice by winning the preliminary judgment hearing and failing to take the time to craft an appropriate disclaimer or include the appropriate language in the Judge’s Order.  See the following:  International Kennel Club, Inc. v. Mighty Star, Inc and Std. Process, Inc. v. Banks, 554 F. Supp Std. Process, Inc. v. Banks

The New Generic Top Level Domains (GTLDs) and what do they mean for online consumers and retailers!

When we browse the internet, we know how to get to the websites we want to go to.  We know to type in, for example, “amazon.com,” and know that by doing so we will be able to shop on Amazon.  This has already started to change, however, as the Internet Corporation for Assigned Names and Numbers (ICANN) has decided to make over 1,400 new top level domain names available for purchase.

Now, we will likely have to go to “movies.amazon” or “books.kindle” in order to get to the site we want. In essence , we will have to relearn how to find products and services on the web.,  Moreover, consumers will have to understand the new top level domain and which TLD and URL will enable them to find the products or services they want.  On line retailers will have to understand how the new TLDs may impact their SEO process. consequently, the new TLDs may or may not lead to a better online distribution means.

These new domain names have been met with mixed reviews.  On one hand, companies are excited; these new names allow them to advertise their brands even more, encourage competition and innovation, and assist consumers in getting to the correct site.  On the other hand, however, people worry about the cost of registration and upkeep, not to mention the potential for trademark violations and cybersquatting.  Registration for one name costs $185,000.00, and in most cases, it makes sense for companies to register multiple names.  This is a defensive maneuver, as it will keep others from registering names that will cause consumer confusion or infringe on trademarks.

While ICANN has developed a database to protect trademarks, called “Trademark Clearinghouse,” it has its drawbacks.  For one, it costs $150.00 a year, per trademark.  Further, it may not be the most effective; it only protects against identical matches of trademarks.  This does not include misspellings or names that are very similar to trademarks.  So, companies will have their work cut out for them when purchasing the top level domain names and protecting them from competitors.

The first seven new top level domain names went live on the Internet on January 29th, 2014.  So far, we have seen the addition of .bike, .clothing, .guru, .holdings, .plumbing, .singles, and .ventures.  More are expected to come out on February 5th, 2014.  For more go to http://www.vrplaw.com

Trademarks, Service marks, Specimens, and Establishing Commercial Use!

Registering a trademark or service mark is the easiest method of establishing nationwide trademark rights.  You can register a mark under section 1(a) based on use in commerce or register it under section 1 (b) an intent to use, as long as, you have a good faith intent to use it in commerce.  However, even if your intent to use application is allowed, you still will not obtain a certificate of registration without demonstrating commercial use of the mark.  Typically, this requires the trademark owner to file an Affidavit of Use.  Although you may be able to claim priority based on the date of filing for the intent to use application; you will not be afforded any registered trademark or service mark rights, until you have demonstrated a commercial use.

Consequently, the key for any trademark or service mark holder is the need to demonstrate and establish a commercial use of the mark.  However, sporadic and token uses of a mark are not sufficient to establish or demonstrate commercial use.  Moreover, you have to demonstrate commercial use of the mark in connection with the goods or services that you are looking to register them in. It is true that trademark law allows for expansion of the geographic zone and into related products or services.  However, unless you have a specimen demonstrating commercial use of the trademark or service mark in connection with the goods or services that you are attempting to register the mark in; the trademark examiner is unlikely to allow you to register the mark.

Therefore, having a good understanding of what is required to demonstrate commercial use and the specimen requirement are crucial to establishing federal and nationwide trademark or service mark rights.  Otherwise, the goodwill and value of your brand is likely to be ripped off or usurped by copy cats or individuals that are second comers to a market you have developed.