What Every Blogger Should Know About Trademark Law Before and While Blogging

by Latoicha Givens, Phillips Givens, LLC

Hello Friends!

I felt the need to write this article because one, I am a blogger. Also check me out at www.luxetips.com. And two, I have had discussions with so many bloggers about whether they owned a trademark and how to protect the good name and reputation they have built through blogging.

I will give you an example of some of the pitfalls bloggers have encountered.

Example 1: You register a blog with blogger and your blog name is Widgets.blogspot.com. You build up a reputation and readership and you decide you want to own your own domain name.

You contact a hosting company and try to register Widgets.com, but low and behold, someone else already owns the domain name. You contact the owner of the domain name and they will gladly let you have it.....for the low low price of $10,000.00! Yikes.

Example 2: You go ahead and register your domain name, Wethepeople.com. Hey you own it! But then some company comes along and registers Wearethepeople.com. You both are in same business and when you do a google search, their name comes up first. You have built a brand name, reputation, and following with Wethepeople.com. They are diverting traffic from your blog and causing confusion. What can you do?

So fellow blogger and potential bloggers follow these simple rules to ensure your blog, your brand and trademark, is protected and avoid becoming prey to infringers and cybersquatters.

1. A blog name is a trademark. One misconception many bloggers have is that they do not think they own a trademark because they are not organized as a company. If you a blogger and publish daily, weekly, or monthly articles on your blog, you are in the business of publishing. Also if you receive advertising revenue, or in-kind gifts, products, etc to review on your blog, you are actively engage in commerce - the ability to conduct business transactions.

A trademark is defined as words, symbols, phrases or designs which the public associates with a single source of goods or services. By law you establish trademark rights by actual use of the mark in commerce or filing an intent to use the mark with the United States Patent and Trademark Office, USPTO.

2. Do a preliminary search for your blog name. Make sure the blog name you choose is not identical or too similar to a brand name, company, or other blog. You can accomplish this by doing a Google Search. Now Google may not capture every identicial or similar name, (only a comprehensive trademark search will do this) but those that are registered with government agencies and are on the web will be found. The last thing you want to receive is a cease and desist letter from me, a trademark lawyer, stating shut down your blog or else!

3. Register your domain name. A MUST MUST MUST! You must own your blog's name. Before starting a blog, you have to own your name. I can't repeat it enough. Now there are tons of services like blogger, typepad, and wordpress that will let you create a blog name through their service but this DOES NOT mean you own the domain name.

You can choose a domain registrar like VL Hosting to register your name for a nominal fee. Sometimes fees are as low as $10.00 per year. Why do this? Because there are mean lean sharks out in the blogosphere called cybersquatters. They literally surf the net for brand names and company names that do not have registered domain names and register them so they can hold them (cybersquat them) until you come crying and begging for them to release it. They will but for an astronomical fee.

4. Register your blog's name, phrases, and design as a trademark. It is just good practice and planning to register your blog as a trademark. You never know how successful you and your blog may be. Without registering your trademark, you do own a lawful common law trademark right (a trademark right without federal or state trademark registration). However to bring a trademark infringement action against an infringer you must register the trademark with the state where you are located or the USPTO.

Also registering your blog as a trademark is good evidence that you have a legitimate interest in your blog's domain name, if you have to file a domain name dispute against someone who purposely registers a domain name similar to yours in order to steal your traffic. I do understand that obtaining federal trademark registration can be expensive, but it is relatively inexpensive to register with your state. Depending on the state where you are located, fees can be as low as $15.00. But it is smart to get some legal advice. A poorly drafted trademark application will be rejected.

If you are a blogger already engaged in publishing your blog and have not completed any of these steps, I would recommend that you complete these steps as soon as possible! Believe me accomplishing these simple tasks will save you headaches and potentially money.

I hope this article was helpful. If you would like further information, please contact me at lgivens@phillipsgivenslaw.com. Please stay tuned for my next topic: How to file and win a domain name dispute.

Reprinted from phillipsgivenslaw.blogspot.com

Latoicha Givens is the founder and a member of the firm Phillips Givens, LLC. Ms. Givens practice includes representation of start-ups, small, and mid-sized businesses in intellectual property matters, specifically, trademarks, copyrights, and licensing issues.


Ron Coleman said...

I liked this article a lot. I do wonder, however, about the advice to register a blog's "name, phrases, and design." State registrations aren't really worth all that much, and it's extremely unlikely that your prospective infringer is going to come from within the same state. Federal registration carries a fairly steep fee that could be a stretch for many bloggers, and while many people do okay in the trademark registration process without a lawyer, that is something of a crapshoot. It's also a very slow process, and if you have to re-do it you can lose a lot of time.

Remember that trademark rights are developed by use in the U.S., not registration, so filing may not be worth the trouble. Not every blog name can be registered either -- the outstanding blog on trademark law, Marty Schwimmer's "Trademark Blog," is not amenable to registration because it is highly descriptive if not generic. Also note that you can't really register a blog's "design" as a trademark, unless you mean a logo. Designs of websites are more typically protected by copyright.

Having said all that, I did like the piece! And after all, I did register my own blog's name (LIKELIHOOD OF CONFUSION®) -- so it can be done, and indeed in many cases should be done!

Phillips Givens, LLC said...

Hi Ron!

Thank you for commenting on my article! I love your blog! When I said you can register a blog's design, I did mean logo, i.e., drawings or designs that identify the trademark. On my blog, IPLAW101, I do discuss common law trademark rights; types of marks that can not obtain registration (generic or highly descriptive marks) and the difference between copyrights and trademarks. This piece was done solely to answer some basic questions I have been asked by bloggers. I agree with you that trademark registration can be an expensive long process, but considering the explosion of new media and the potential to conduct business as a blogger, I think the pros outweigh the cons. In addition, trademark infringement is rampant on the internet. So statutory protections afforded registered trademarks is highly desirable and recommended.

Thank you again for commenting on this article. I love your work!

Back to Top