1) What’s in a name? Avoiding pitfalls in selecting a new brand.
 

If you ever doubted the importance of a good brand for your business, just try to launch a new company, call it “BP” and see how may customers you will attract!

Many businesses spend a fair amount of creative brainstorming efforts and market research coming up with a series of potential names for their new company, or for their upcoming product or services. Yet they often disregard the fact that choosing a new brand name is not as simple as registering a domain name and starting to market the new brand to the world. Branding involves both a business and a legal process and ignoring that reality can lead to many unwanted and costly scenarios, such as having to change name mid-course or worse get engulfed in an expensive trademark opposition or litigation when every penny counts.
You see those ® and TM signs all the time along famous -and not so famous- names. But what do they mean exactly? Well, the TM sign means that the company is using the name to function as a trademark, but it has either not applied for its registration or such registration is still pending. The ® means the mark has been registered with the USPTO or in the corresponding country (ies) where it’s being used. SM is the equivalent of TM, but applied to services instead of goods.

So, what is a trademark? For all intent and purposes, a trademark is anything that the public uses to identify your products or services as yours, and distinguish them from those of your competitors.  So a trademark is supposed to perform this “source-indicating” function, essentially acting to guide your customers back to you, and prevent them from mistakenly going to your competitors. Understanding the function of trademarks is important because it will allow you to select a brand that functions as it should - by identifying your (and only your) goods and services.
Let’s first distinguish between corporate names, tradenames and trademarks by simply referring to IBM as an example: International Business Machines Corporation is the corporate name. This is the name it uses in official documents. International Business Machines or, more often, IBM is its tradename, i.e. the name it uses in every day communications. Finally, IBM ® is the main trademark (in plain letters and in its logo type: ), whereas BladeCenter™, NavCode™, zEnterprise™, to name a few, are secondary trademarks identifying specific products of IBM.

In the US, Canada and many other common law based jurisdictions, one may acquire trademark rights either by use in commerce or by registration. In other words, others may have rights that precede yours if they started using the name first, even if they never bothered to register it. So making a branding decision has important legal ramifications and it is usually recommended to first consult with an attorney versed in the law of trademarks to help steer you past the potential pitfalls.

The way the law works, some trademarks are inherently stronger than others and will be more easily protected and enforceable. In the grading scale of marks, the arbitrary or fanciful names are the strongest. Kodak® is the text book example. Most family names also fall in this group. Then comes the categoryofsuggestive names (e.g. Apple-A-day for daily vitamins), where we find most brands nowadays. Descending the ladder, one finds the descriptive names (such as “Vision Center” for an optical services shop). Those will only enjoy protection is they have acquired a secondary meaning (i.e. some fame) with the intended audience. Finally, purely descriptive (e.g. “table” for tableware) or generic names usually deserve no protection at all, although some they may have started as trademarks (e.g. escalators, kleenex, etc) before becoming generic over time.

In short, the more distinctive your mark is – that is, the more effectively it performs the source-identifying function of a trademark – the more protectable it is likely to be.  For this reason, you should think carefully about how important exclusivity and protectability are to your plans for marketing your new product or service. For instance, if you contemplate franchising activities, a national (and maybe international) protection is probably a pre requisite. On the other hand, if you open a local shop, or are building a software product that is likely to be sold to another company, you may not have to give the same importance to protecting your brand.  Again, an experienced IP practitioner can help you sort through these issues and select a mark that fits your needs.

Once you’ve selected your brand candidate, and you have –preferably- tested it with some customers for validation and feedback, you’ll want to have a clearance search done with the national trademark registry (USPTO in the US) to confirm that the brand is indeed available in the country where you intend to use it for similar good or services. (i.e. identical marks can coexist for different categories. E.g. Apple for computers vs. Apple for music recording studios). And if your business plan involves taking over the world, you’ll need to do this on a global basis, which can be expensive. 
Why not simply google the name myself, you ask?  Well, although an internet search may give a good indication of how unique or common the name is and may be quite helpful (and free!) for the initial triage stage, it is by no means a comprehensive or reliable result. Thousands of trademarks have been filed based on intended use and will not show up in any standard internet search. And remember that trademark law is about avoiding confusion, which means that names only have to sound or look similar (as opposed to be identical) to potentially trigger an infringement claim, so you can’t ignore close phonetic equivalent (“Foto” vs. “Photo”) or look alike logos. An internet search won’t given you that kind of info.

It is always a good idea to have a trademark search conducted before adopting any mark, to determine whether it is available for your use and registration.  A professional can obtain the necessary searches for you, evaluate the search results, and provide you with an analysis of the marks’ availability and registrability. Waiting to do this after you’ve already invested a fair amount of money and efforts to make your brand known is really not a good idea.

Once you’re satisfied that the brand you want is available in the markets you are targeting, then you will want to apply for a registration, even if you haven’t yet started to use the name. Filing is tantamount to a reservation and you can always cancel your application later if your plans change, subject to loosing the initial filing fees. Also, in many countries in Europe and Asia, this is the only way to acquire rights, i.e. using the mark in commerce does not suffice. If you have a logo version of your mark, you should strongly consider filing applications to register both the “word” version and the “logo” version.  Registering only the logo version will only cover the brand when used in that specific (basically, that identical) logo version.  Once your mark is registered, you have a federal monopoly that applies country-wide, whether or not your mark is used in regions where other confusing names may pop up later. And it’s a lot easier to enforce, should you have too. Which cuts both ways if you’re the one coming too close to a third party’s registered trademark. So remember, selecting a brand is a little like buying vacant lot; you want to make sure the title is clean and there are no encroachments before you start building your house on it!

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3) US Introduces New Copyright Exemptions

You all read about the jubilation of Apple critics about the news that they would now be entitled to- legally- unlock their phone. You don't get such excitement very often coming from the Library of Congress, do you? Well, the venerable US Library of Congress has announced six new exemptions under the Digital Millennium Copyright Act (DMCA) – including circumventing protected DVDs and phones in some instances. The DMCA regulates how copyright material is dealt with in digital and online spheres, and includes provisions that prohibit circumvention of certain technological protection measures (TPMs) used to protect copyright works.
 
However, the DMCA allows particular classes of works to be exempted if TPMs are found to have an adverse effect on a user’s ability to make non-infringing uses of those works. The US Library of Congress reviews and determines which classes are to be exempted every three years, following public consultations and hearings.
 
The current determinations were released on July 26th 2010, and the exempted classes are: