Whether you’re paying big bucks for a Kardashian or providing discount coupons to a local star, hiring “influencers” to promote your company, products or services has become commonplace. But it’s not yet common to contract with influencers for their services. And that’s a mistake! If you’re hiring an influencer, you should strongly consider a written agreement.
But first, what is an influencer?
An “Influencer” is: An individual who has the power to affect purchase decisions of others because of his/her authority, knowledge, position or relationship with his/her audience. For legal purposes, an influencer is anybody your company is compensating to post, print, or otherwise disseminate information for a commercial purpose.
The United States Patent and Trademark Office (USPTO) recently released a warning regarding email scams targeting owners of trademark applications and registrations. Unfortunately, misleading notices and solicitations are nothing new for those experienced with filing applications with the USPTO. Because filings with the USPTO are public, private companies are able to gather the contact information of trademark applicants and registrants. They use this information to send misleading letters and emails asking brand owners for substantial fees in order to renew or maintain trademark applications and registrations. These companies often go by names that sound like official government agencies, which increases the confusion and the likelihood that brand owners will be duped into responding to the solicitations.
What do you think of when you hear this lion’s roar
How about these five notes?
Or these words?
Trademarks are not limited to words and designs, but can include “sensory” marks such as colors, smells and sounds. All of the above sounds are examples of trademarks: the lion’s roar is a registered trademark owned by Metro-Goldwyn-Mayer Lion Corp. for motion pictures and entertainment services, and heard at the start of MGM movies; the five notes are a registered trademark owned by Intel Corporation for computer hardware and operating system software; and the spoken words “You’ve Got Mail” is AOL’s registered trademark for providing access to a computer network.
In this post, we focus on transferring — or assigning — trademark portfolios involving marks in multiple countries. Generally, the transfer of trademark rights from one entity to another must be documented with the trademark office in every country where the assignor owned marks. The requirements for recording a transfer vary by country but often involve submitting newly executed trademark assignment agreements, powers of attorney and other documents. These documents may also need to be notarized or legalized before submission.
Amidst public criticism and pressure from corporate sponsors, many well-known brands are taking a hard look at their trademarks and choosing to move in a new direction. These changes are impacting brands in various industries from sports teams, like the currently unnamed Washington NFL team, to retailers, like Trader Joe’s. While appeasing the call for change, an unfortunate consequence with which these brand owners must deal are trademark trolls.
The basic premise that a generic term is un-registrable is, at first glance, uncontroversial. If a key purpose of a trademark is to identify a particular source of goods or services, then it stands to reason that one cannot obtain a trademark registration for the name of that very category of goods or services. For example, it’s unlikely one could register the mark “Books” for a bookstore, or “Groceries” for a supermarket—doing so would effectively grant the owner a monopoly on the use of those very terms. But what if those ostensibly generic terms were part of a website domain?
When the Digital Millennium Copyright Act of 1998 (the “DMCA”) was enacted, the stated goal was to bring federal copyright law into the 21st century by providing certain immunities to internet service providers while preserving and even streamlining the ability of copyright holders to enforce their rights.
In the years immediately following the passage of the DMCA, things seemed to work smoothly. In particular, the notice-and-takedown procedure set forth in Section 512, which allows copyright owners to send written notices to parties who have allegedly used copyrighted content without authorization and which requires the recipients of such notices to promptly remove the content, was a useful tool that enabled parties to reach quick resolution of copyright disputes while avoiding costly litigation.
Intellectual property rights holders are constantly seeking creative ways to protect their brands, including preventing counterfeit products from entering the marketplace. There are the traditional methods – such as federal trademark registration with the United States Patent and Trademark Office – that are well-known to most companies. However, many companies are less familiar with the high-value, low-cost enforcement tools available through a Customs Recordation filing with United States Customs and Border Protection.
United States Customs and Border Protection (CBP) can be a vital partner in your company’s efforts to enforce its trademarks and copyrights, and to stop counterfeit imports. Intellectual property enforcement is currently a “Priority Trade Issue” for CBP, and the increased focus on such enforcement is highly beneficial to companies who can then leverage CBP’s database and workforce to identify and stop counterfeit product imports. CBP uses the information contained in its database of recorded trademarks and copyrights in order to target and seize imports of counterfeit and pirated goods at various U.S. ports of entry. In FY 2019, CBP seized more than 27,000 shipments containing counterfeit goods, enforcing over 18,500 active recordations1. Notably, CBP rarely takes action to detain or seize goods displaying trademarks or copyrights that are not recorded; therefore, it is critical to include CBP recordation as part of your enforcement strategy.
The global COVID-19 crisis has created dynamic shifts in how businesses source and sell goods and services. Whether those shifts are temporary or will solidify into more permanent structures ushering in a “new normal” era of consumerism, remains to be seen. As I write this, it is the weekend after Memorial Day 2020. Just yesterday, my home state of Virginia commenced phase I of a graduated reopening of the state economy, while last weekend’s headlines focused on widespread defiance of stay-at-home orders and social distancing guidelines as the U.S. death toll climbed towards 100,000 (a milestone it has now passed). It is clear that there are limits to our willingness to stay home, and that bodes well for the survival of some brick-and-mortar retailers. But brick-and-mortar retail and business in general may look significantly different in a post-pandemic world. The companies emerging stronger will likely be those that use this time to rethink who they are, what they do, and how they do it — and the ways in which they convey that message to consumers.
We are noticing a common theme in advertising: recent commercials, web pages and social media include a series of still images of essential workers, or short videos submitted by the companies’ own clients. In case your company decides to feature similar elements in its promotional efforts, here is a short list of frequently-encountered intellectual property issues you may wish to address prior to launching the campaign: