What You Need to Know Now about Protecting

Your Company’s Trademark on the Internet

Internet marketing, specifically, search engine marketing, is growing exponentially.  And, growing with it is the potential for trademark “infringement.”  The term, “infringement” is in quotes because poaching, the usage of a competitor’s trademark on the internet, is perfectly legal, thus far. 

How the poaching works 

A company buys the use of its competitor’s trademark from a company such as Google Adwords.  For example Widget Company A, purchases the trademark for its competitor, Widget Company B.

When a prospective client enters “Widget Company B” is a search engine, an ad for Widget Company A will be returned in the search results. 

Yes, poaching is legal in America

If you’re like most people, you’ll find this surprising. 

American courts have thus far found that such use of a competitor’s trademark does not constitute trademark infringement. 

In addition, it violates no other intellectual property laws.

Poaching may not be legal in other countries

Foreign countries have different trademark laws, and use of a competitor’s trademark may constitute trademark infringement. 

Countries with stricter trademark infringement laws include:

·         Australia

·         Brazil

·         China

·         Hong Kong

·         Macau

·         New Zealand

·         North Korea

·         South Korea

·         Taiwan

Hidden trademark use (incognito poaching)

These countries, listed immediately above, even outlaw the hidden use trademarks.  Meta tags are hidden words place on a company’s website. 

Often companies will use Meta tags with their competitor’s trademarks on their own company’s website. 

So, when a prospect enters the competitor’s name in a search engine, the company’s own website will appear in the search results. 

For example, a prospect enters “Widget Company B” in his favorite search engine.  Widget Company A has used placed “Widget Company B” in its Meta tags and therefore, its own website is listed in the search results.

Outright poaching:  visible trademark use

Visible trademark use is obvious to the reader.  The competitor’s trademark is used in visible text. 

For example, “Widget Company A is better, smarter, faster, and cheaper than Widget Company B.”

Where to get help to stop the poachers

The American justice system won’t help you, but Google might.  Plea your case to Google. 

If your company’s trademark is used in a domain name or visible in a competitor’s website, Google is likely to investigate and have it removed.

However, if your trademark is used in Meta data, Google is neither likely to investigate nor help you.

However, you may be able to gain Google’s cooperation if there is an infringement in the above listed countries wherein use of your trademark is actual and legal trademark infringement.

How you can stop the poachers

Like Nancy Drew or Magnum P.I., you must be a private investigator. 

·         Google your company’s name and brand names once a week.

·         Subscribe to an RSS feed with your company’s name and brand names.  You’ll be notified if these names are used on the internet. 

·         If you see an infraction, write the offending company immediately to ask them to cease and desist using your company trademark

·         If the offending company fails to respond appropriately, consult with a qualified intellectual property attorney immediately.  If you do not act in a timely fashion, your claim may be barred.

If you have any questions or concerns about trademarks or your competitor’s use of your trademark, consult with a qualified patent attorney. 

In just over a year, more than 700 patent marking cases have been filed.  This is the fallout from a 2009 federal court decision incentivizing third party plaintiffs to file suit for false patent markings.  On December 28, 2009, the federal court held §292 of the Patent Act (35 U.S.C.  §292 ) requires a per article fine of up to $500.  Third parties are rushing to file qui tam suits and reaping the financial benefits.

The federal court ruled in Forest Group, Inc v. Bon Tool Co. No. 09-1044 (Fed. Cir. Dec. 28, 2009), that the false marking of each item manufactured is a violation of 35 U.S.C. §292 (False Marking – Patent Law.)  In addition, it was also held that the fine per item can range from a fraction of a penny up to $500, at the total discretion of the court.  Plaintiffs are highly motivated to file suit because they share in the fines, 50/50 with the government.

Patent marking cases are being taken seriously with stiff consequences because the markings indicate the status of a product.  It is not an invitation to seek further information.  It serves as actual notice to possible infringers; and, patent holders can only sue to enforce their patents if their products are properly marked.   A patent marking is fact.  False markings curtail fair business practices, competition, and even scientific development.

A false marking can occur in four ways:

1.      A product is marked with an expired or otherwise non-existent patent

2.      A product is marked with a current patent but doesn’t meet the requirements of the patent

3.      A product is marked with “patent pending” when no such application has been made

4.      Advertising materials indicate that the product is patented

Under current law, it is unclear how the penalties for false advertising materials will be assessed.  For instance, if a website indicates falsely that a product is patented, is that one violation with a fine of up to $500?   Or, and more likely, is it a violation for every view of the site with the potential of millions of views times up to $500? 

Banks, clothing manufacturers, and video game companies are just some of the defendants of patent marking cases.  So for Brooks Brothers, that’s up to $500 for each bow tie sold with the markings of an expired patent.  Any company or individual that marks a product or advertises a product as patented or that a patent is pending is subject to patent marking laws and the resulting litigation. 

It is imperative that your products and advertising materials be properly marked.  Marking carries responsibilities and because patents, by their very nature are time limited, you must police your markings on a regular basis.  If you have any questions or concerns about patent marking or patents themselves, consult with a qualified patent attorney.