Common Issues in Trademark Law

The integrity of law relies on the continued resolution of new challenges, and the present landscape of trademark law offers plenty of that. As the legal facility changes, new channels of commerce and an increasingly global economy will continue to push its evolution and adaptation into fascinating new arenas. Here are ten hot topics keeping trademark attorneys and rights holders alike, on their toes.

Innovative Trademark Trolling

Just like their patent troll counterparts, individuals and agencies are using predatory registrations to insidious ends. Unscrupulous characters are exploiting the opportunity to demand licensing fees from alleged infringers when a potential for confusion may not even exist. But the practice is growing in prevalence, with new efforts capitalizing on recent social or political events to trademark popularized terms and then using overly aggressive enforcement to turn a profit.

App Branding

With the ubiquity of smartphones and the rising significance of smartphone applications in consumers’ day-to-day lives, trademarking is reaching into the realm of application icons. Disputes are most likely to arise from letters and colors used, so savvy registrants would do well to look at combinations that improve on this limited distinction in order to secure appropriate and watertight protections.

Trademarks as Keywords

Google’s AdWords program empowers advertisers by allowing them to assign keywords to their ads that trigger their appearance in particular search queries. In an effort to interject brand awareness, even in the case of specific queries for competitors, businesses have adopted the practice of tapping competitor’s keywords in their AdWords approach. The technique obviously obfuscates the search picture, but, at present, the law current allows the practice, provided the keyword doesn’t appear in search links sponsored by advertisers.

Confusing Courts

Unfortunately, the aforementioned practice, as confusing as it is, currently sees no ready remedy. Federal appeals courts have wrestled with the use of trademarks as “purchased search terms” for some time. Some circuits do not specifically address the issue, since case law on the matter has not yet been created. Therefore, those wishing to litigate the issue should investigate which circuits may hear the case before entering into a jurisdiction with no precedent.

Challenges Closing Counterfeiters

The international economy has given birth to prolific bastions of piracy. Unfortunately, at the present time, no catch-all solution exists to deal with such infringement. Simple steps may be followed, however, that can help lock down these criminals and protect commercial interests. Concerned firms should begin by determining whether or not the operation is legitimate and willing to change. If not, oversees jurisdictions can provide some relief. This may come in the form of asset freeze orders or domain name seizures, but no one-size-fits-all solution exists to remedy the problem. What’s important to remember is that over-aggression toward legitimate outfits can lead to bad press and poor relationships, so verification is vital.

Global Enforcement

As mentioned, some jurisdictions provide relief for worldwide operations, but some areas provide inadequate redress for dilution cases. For this reason, understanding global trademark law in potentially infringing cases is essential to effective enforcement. For example, some areas do, for a three-year period, allow for registration on more items than the mark is actually used, providing opportunities to lock down dilution through legitimate legal enforcement.


The ability to use trademarks in domain names offers significant protection of identity in an increasingly connected world. However, a tidal wave of top-level, generic domain names are headed toward computers world-wide. These new domains, which include country-specific domains and almost any word in any language, will require heavy enforcement once the Trademark Clearinghouse launches. Effective protection of commercial interests will necessitate recording of key marks in order to block other domain-name applicants and give priority on matching domains during periods of introduction.

Social Media Evidence

The social currency of our society is being digitized, even from a legal perspective. In fact, social media reactions to marketing materials can significantly impact a business’ ability to enforce trademarks down the road. For this reason, businesses should monitor social networks to ascertain evidence in the event of legal disputes, and also develop strategies to address consumer responses that pose risks to brand protections in the future.

Leveraging Facebook

These same platforms that may provide evidence for potential litigation also pose a challenge for trademark holders. Brand messaging on social media where third parties use trademarks can lead to a loss of control over messaging and perception. In order to combat this, owners should develop their own presence on social networking favored by customers. The benefit lies particularly in platforms that offer takedown procedures that are often more effective than traditional cease-and-desist letters. Finally, in order to stay on top of this evolution, firms should be quick to adopt social media programs for their enforcement potential.

3-D Protections

In what is likely the most nascent of these trademark issues, the plunging cost of 3-D printers is making multi-dimensional infringement a reality. The concerns raised are analogous to those presented when MP3 technology and photocopiers rose to prominence. Organizations wishing to nip the issue in the bud will benefit from understanding the intersection of design patents and applicable trade dress protections.

The issues facing trademarks continue to evolve year after year. Legal evolution and adaptation are needed in order to ensure that the facility maintains its integrity. From trademark trolling to social media gospel, the changing landscape of applicable enforcement continues to surprise. Knowing the issues and adapting to the trends can help seal your mark tight, even when new technologies present challenges equal to their capacity for positive change.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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