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Friday, March 28, 2014

Common Law Trademarks or "Usemarks."

By Duane J. Higgins, ceo

I'm not an attorney and I don't play one on the Internet. However, I have to admit it's kind of fun to play desktop attorney and write about whatever I want. That being said, this is a column about common law trademarks. Some are probably questioning why I use the term "usemarks" in my title. The easy answer is that common law trademarks are sometimes called first use marks.  This additional information comes from the website:

"What are "common law trademark" rights:

Federal registration is not required to establish rights in a trademark.  Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.

Common law trademarks are of particular interest to me as I have owned upwards of ten thousand domain names through the years. In addition, I have certainly obtained common law trademark rights with many of the names through the use of the domain names and product/company names in commerce.

Let me start by mentioning that Yahoo recently spent about a billion dollars for a company called Tumblr.  CEO Marissa Mayer suggesting that 75% of that cost was for the social blogging site's "cachet" with the young trendy set. In Yahoo's quarterly report filed this week Yahoo revealed that  $752 million of Tumblr's value is "goodwill."

What exactly is Ms. Meyer referring to? Clearly she is referring to something that is far removed from the Tumblr tangible assets, contracts, software etc?  If that is the case- then were talking about a non-quantifiable asset that is valued at $752 million by Marissa Mayer!  Am I the only one that finds that interesting?

So is Marissa Myer referring to the Tumblr brand? The Tumbler brand that is of course protected by the Tumbler trademarks?

There are of course federally registered trademarks on Tumblr. However, what if there wasn't?  Is there  a chance that the Tumblr brand and "cachet" would be just as valuable at this point in the companies life?

Federally registered trademarks are of course enormously important and are critical to the smooth functioning of our worldwide intellectual property system. One of the most valuable mechanisms resulting from the Federally registered marks  are important procedural advantages in court, such as a presumption of validity for a plaintiff’s trademark.

But (like most of us) what if you don't have a federally or multinationally registered trademark? Where do you stand (legally) with the use of your business/service name in commerce?

Here's some information you might find interesting regarding ICANNs Trademark Clearinghouse (TMCH) and their position regarding common law trademarks:

Nearly all of the discussions regarding ICANNs newly launched "Trademark Clearinghouse" have been regarding registered trademarks. However, it's important to note that "Common Law" trademarks are eligible for the TMCH as well.

Also keep in mind that inclusion of any trademark in the "Trademark Clearinghouse" is a rights protection mechanism in and of itself. From the Trademark Clearinghouse site:

The Trademark Clearinghouse (TMCH) is the most important rights protection mechanism built into ICANN’s new gTLD program. Its' a centralized database of verified trademarks, that is connected to each and every new gTLD that will launch.

From the TMCH website regarding court validated marks:

Court validated marks refer to a mark that has been validated by a court of law or other judicial
proceeding at the national level, such as unregistered (common law) marks and/or well-known
marks. In the case of a mark validated by judicial proceedings, the judicial authority must have existed as a competent jurisdiction as of the date of the order or judgment. Any referenced authority must have the indicia of authenticity and must on its face confer the specified rights (i.e., the documentation must be sufficient to show validation of the mark without the need for the Clearinghouse to consult outside resources).

And now from the USPTO (United States Patent and Trademark Office)  website:

What are "common law" rights?:

Federal registration is not required to establish rights in a trademark.  Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.

From Wikipedia:

...An unregistered mark may still receive common law trademark rights. Those rights, for example, may extend to its area of influence—usually delineated by geography. As such, multiple parties may simultaneously use a mark throughout the country or even state. An unregistered mark may also be protected under the federal "Lanham Act" (15 USC § 1125) prohibition against commercial misrepresentation of source or origins of goods. Unregistered marks are also protectable in the United States under Lanham Act §43(a).


Trademark rights arise in the United States from the actual use of the mark. Thus, if a product is sold under a brand name, common law trademark rights have been created. This is especially true once consumers view the brand name as an indicator the product's source. Federal registration is not required to establish rights in a trademark.  Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.


Common law and Lanham Act protections afforded to unregistered trademarks provide a wealth of remedies since they are premised on use rather than registration.

Also, from that site:

In the United States, protection is available
for unregistered marks under common law
and the federal statute known as the
Lanham Act (§ 43(a)(1), 15 USC § 1125(a)(1)
(1989)). The owner of a valid but
unregistered mark can seek recourse against
the copyist in state and federal courts.


Common law and federal law provide the
owner of unregistered trademark rights with
bases for remedies to infringement.

This is from

Many businesses and individuals do not know that trademark rights arise not only from registration with the United States Patent and Trademark Office, but from simply use of a trademark in connection with goods or services.  These rights, or common law trademark rights as they are known to lawyers, come from the continuous prior use of a mark in commerce.  But common law trademark rights are not preferred, as they extend only to the places where a trademark has been used in commerce.  Additionally, they do not offer the benefits of federal registration with the United States Patent and Trademark Office, such as the ability to recover profits, statutory damages, attorneys fees, treble (triple) damages for willful infringement, national priority, and the right to use the ® to give notice of rights in a mark.

This is from (Legal Services National Technology Assistance Project)

According to case law:
  • A party may obtain a common-law trademark or service mark on any terms it uses in commerce, though absent federal registration, common-law status generally limits its protection the geographic area in which the term was used. Accordingly, to bring a claim under the Lanham Act, federal registration is not required, “but the scope of any common law rights vindicated would be limited to areas where the mark is in use.”
Just some information to keep in mind when you register or use a particular domain name for business, service or a product  in commerce. Attorneys will generally recommend the Federally registered mark for the maximum protection.  But keep in mind that a strongly established common law trademark or "usemark" can also serve as a deterrent to abusive practices by other parties.

Tuesday, March 18, 2014

Are You "Old School Internet"?

By Duane J. Higgins, ceo

Maybe all of the discussions this past week about the 25th anniversary of the World Wide Web has caused me to wax nostalgic. Whatever the case,  I have recently concluded that I do very much long for the halcyon days of the early Internet.  What I like to call "old school  Internet".

From Urban Dictionary
"Anything that is from an earlier era and looked upon with high regard or respect." 

Maybe it was my rather uninspiring standoff with the 20 something salesman at the cellular store over the merits (or lack thereof) of the latest smartphone  that lead me to relegate myself to the  "old school Internet" category.  Maybe it is my affinity for the early days of the Internet when you had  .com, .net and .org and that's all anyone ever wanted or needed.

 Maybe I'm old fashioned or maybe I'm just a technology resister.  I'm  stuck in the Internet of 1998 and quite happy to be there.  What do I believe are some of the "classic" symptoms of the "old school  Internet" syndrome:

  • I don't have a smartphone and have no interest in one. In fact my stone-age flip phone seems to serve me just fine. 
  • I don't text and have never texted. Have never had a need to.  (I do understand the convenience and efficiency aspect of it. If something pushes me over the edge to become a "reluctant adopter" that will be it.)
  • I don't do Facebook or any other social media. Never have. Don't plan to. 
  • I don't do gaming systems. 
  • I don't do downloads.
  • I don't do wearable technologies or apps. 
  • I have the minimum amount of technology for what I need to do. That amounts to my (circa 2003) HP laptop computer hard lined to the wall of course.  No need for wifi.
Not to worry if anyone is thinking that I'm up here in the northern hemisphere living an Amish-like type of existence.  I do spend a good deal of time on the Internet. You have to if you want to run an Internet business.  Like the notorious bank robber Willie Sutton famously once said when asked why he robbed banks and responded "that's where the money is." 

Of course, I know that there is a distinct chance that I am just a late adopter. Part of the latest raft of historys'  long line of late adopters. Whether involving the automobile,  television, microwave or the Internet itself. The folks who came to the party late and most likely were dragging their feet the whole way.

However, I am also reminded of the tales of the old time loggers in the northern forests who still cut their trees with a hand saw and use work horses to haul them out. Doing their jobs quite happily and efficiently. In a way that suits their purposes.

I kind of like the sound of that. 

Sunday, March 9, 2014

The Dot Com Paradigm

By Duane J. Higgins, ceo defines paradigm as a:

a. framework containing the basic assumptions, ways of thinking, and methodology that are commonly accepted by members of a scientific community.
b. such a cognitive framework shared by members of any discipline or group: the company’s business paradigm.

So what is the "dot com paradigm"

The dot com paradigm is this:

"All domain name extensions are and will continue to be adjuncts to .com."

What do I mean by adjuncts?

From Adjunct-ad·junct [aj-uhngkt] Show IPA noun
1. something added to another thing but not essential to it.

So I wanted to present some of my thoughts on what I'm calling "the dot com paradigm" in this blog post. However, as I've often noticed, many good ideas are often swirling around the Internet at the same time. I've posted credit to my counterpart at the end of this blog. But, first I wanted to mention a few things.

I've written extensively regarding the continued .com domination of all domain extensions and the Internet. However the design of this post has more to do with the rest of the domain name extensions. To show how the new domain extensions will fall neatly in line behind the .com behemoth.

This table of (global top level) domain registrations is from the (Whois Source) Domain Counts and Internet Statistics Website.

gTLD Overview for March 01, 2014

149,171,743 159,905 127,352 160,569 All TLDs
113,105,456 124,147 94,711 125,785 .COM
15,267,470 14,542 12,838 15,366 .NET
10,453,473 10,179 8,365 9,108 .ORG
5,790,637 6,236 7,269 6,032 .INFO
2,679,999 2,448 2,414 3,033 .BIZ
1,874,708 2,353 1,755 1,245 .US

This table of course does not include country code domain names, the new native language character set names, and new gTLD domain extensions such as .guru and .holdings.

Not to mention the upwards of 1300 new domain name extensions that are in the process of being released onto the global marketplace.

It's clear to see the patterns that are evident in the current domain registration paradigm from the above table. There are over 113 million .com domain names registered and .net is in second place with just over 15 million. One tenth of the registrations of .com.

Will any of the new extensions ultimately challenge .com for dominance in the domain name marketplace?

.guru? .web? .shop? .wiki? .blog? .app? .free? .link? .tips?
Some think that one of these extentions or even another could challenge .com and unseat the extension from its lofty perch above the Internet. However, it's not likely and the reason is that all of the new extensions are going to be adjuncts to .com in one way or another. Just as previous domain extenstions have been as such.

Now for the credit for my counterpart.

Below are examples of the types of "adjunct uses" that I see for the (upwards of 1300) new domain extensions as they are rolled out over the upcoming years:
By 3:00PM GMT 28 Feb 2014
"As the internet continues to develop new features, many companies plan to set up their own apps, blogs and wikis - so obtaining their own .app, .blog and .wiki domains is a logical step. The .feedback and .contact domains will also provide an intuitive address for particular web pages."

"The era of the singular 'web identity' is over," said Crawford. "As companies increasingly recognise the internet as the single largest source of new customers, even small businesses have moved beyond the position of buying one domain name for their website."

I couldn't have said it better.