A letter of termination or a complaint to the court is unlikely to be good news ...
Printed 2006-10-20
A letter of termination of the site or, even worse, a complaint filed with you in court is unlikely to be good news. Your resources will have to be diverted from the business itself towards dispute resolution or rebranding. At the same time, a modest investment in intellectual property verification work before turnkey site development will help you avoid the following common mistakes.
1. Trademark Infringement
Problem: You chose a name for your new site or product and spent money on developing content and advertising materials. Now you receive a letter from Company A stating that you are violating trademark rights and are required to stop any use of the name. You have a difficult choice - to do branding or pay a lawyer to fight in court?
This a dilemma is not uncommon. For example, the Avto.ru site actually ceased to exist after a lawsuit with Auto.ru, which eventually swallowed it. DCistNOW.com changed its name after Joe Ricketts of NewMediaNews, the owner of DCist, sent a letter of termination and refusal to participate. Armor & Glory Christian Clothing Division has sued Under Armor for trademark infringement, seeking to abandon its domain name using Armor, its products and profits.
How to avoid this: before you invest in a name, select several options for the name and search. Although there can be no 100% guarantee that a trademark is free when searching manually, there will likely be significant differences in risk among different trademarks. Perform an initial search on the Internet to find out if someone is already using the same or similar name for the corresponding product or service. When doing these searches, think about what you think your company will do over the next three years, and make sure that no one occupies a similar place. If you do not find anyone else using the appropriate mark, consult a trademark patent specialist who has additional resources and experience to identify and evaluate any risks. The money invested in checking on the basis of Rospatent will save you much more money in the future.
2. A logo that cannot be protected
Problem: you have chosen and use your brand, but one day you find that it cannot be registered, protected and / or applied. For example, the US Trademark Appeal Board of Trademarks has refused to register ECONTEXT, in particular for “computerized market research services,” believing that it simply describes the marketing strategy provided electronically, taking into account the relevant circumstances. If you choose an unprotected name and have not registered it as a trademark, you may have problems in preventing Company B from using a similar logo and claiming damages from it.
How to avoid this: after choosing a name and logo, take care to register it as a trademark in Rospatent. State registration provides benefits that include the presumption of ownership and the rule of law and the right to demand compensation for certain monetary losses. It also acts as a deterrent to other entrepreneurs who may want to use a similar name. Make sure that your company description upon registration covers all products and services that you plan to provide over the next few years. Apply in other countries where you plan to work.
Once you have registered a trademark, assert your rights to it. If you see another company using the same brand for a similar product, consult with your trademark lawyer on how to stop this.
3. Difficulties with domains
Problem: you came up with a logo and brand name and applied for registration with Rospatent. But when you try to register the corresponding domain name, it turns out that it is already taken. If the domain owner finds out that you are going to start a business of the same name on the Internet, he will probably assume that you are desperate for this domain and will offer you to pay a huge amount to get it. Another difficulty: you can pay a lot of money for a domain name just to find out that the trademark is not available in Russia or in another market important for your business.
How to avoid this: coordinate the application for registration of a trademark and the purchase of domain names to ensure that both are available in the countries where you plan to work.
4. Foreign content
Problem: you decided to order a turnkey website , but use someone else's content from the Internet. Now, copyright holders of this content may request payment because you used the material without their permission. For example, Getty Images often sends letters to people who they suspect used their copyrighted images without permission and filed a lawsuit when the warning letters were ignored.
How to avoid this: make sure that you have the right to use the content available on your site. Never copy or paste images or text from the Internet without permission. Either create your own content, or get a license from the copyright holder. And do not forget that demonstrating individuals or using people's names to promote your business may violate these individuals' publicity rights. Make sure you have appropriate agreements with third-party content providers. This includes the case when you hire consultants or contractors to work: they must transfer the copyright to you. Otherwise, this consultant or contractor will own the copyright.
5. Lying in advertising
Problem: by advertising your new product or service, you declare unfounded or incomplete information about them. Promotional materials can also compare your product with that of company C. Company C sees your marketing materials and makes a complaint about “false” ads.
How to avoid this: make sure that any statements you make on your site (or in any other marketing materials) are true and supported by substantial and reliable evidence obtained before you made these statements. Use a reputable third party to conduct any tests or analyzes. Be sure to keep supporting documents and materials. Do not forget to update the advertising materials if the information in them is no longer true.
Be especially careful when making claims about competing companies. Although in the United States, for example, comparative advertising is not illegal, it must nevertheless comply with advertising and trademark laws. And although comparative advertising can be very effective, it is quite risky because it will be carefully studied by your competitors. In addition, be careful when using the trademarks of your competitors and other companies in general. For example, avoid using their logos or using their names in any way that involves a (non-existent) connection with you.
Having spent some energy in advance before launching the site, you will save yourself from falling into these traps and serious threats to business in the future.
