Kevin Keener, is an intellectual property attorney with Keener and Associates, P.C. Kevin represented BizStarz in administrative litigation against Entrepreneur Media Inc, the publisher of Entreprenuer magazine. Kavin talks about the case and gives his recommendations on trademark and cybersquatting. You can watch his YouTube video on copyright law here.
TechStorey : The publisher of Entreprenuer magazine sued BizStarz over the word “entrepreneur” and finally BizStarz had to rename the company from Entrepreneur PR to Bizstarz. Your firm Keener and Associates, P.C. represented BizStarz against Entrepreneur Media Inc. What learning can be drawn from this case? What can small businesses and entrepreneurs do to avoid such potential lawsuits?
Kevin Keener : Technically, I represented BizStarz in only two proceedings against EMI- both were administrative litigation before the Trademark Trial and Appeal Board seeking cancellation of trademark registrations owned by EMI. Several years prior to my representation of BizStarz, EntrepreneurPR had been sued for trademark infringement by EMI and lost. A practical take away from the case is that resources play a big part of the equation- just like legal rights. When facing a David vs. Goliath situation, even well-reasoned and accurate legal defenses don’t guarantee that David will win. There were issues with the strength of EMI’s marks and evidence of that EMI committed fraud in maintaining its registrations. However, EMI had the resources to continually push the case and the parties have been fighting for over fourteen years. To avoid such situations, small businesses should think about what kind of mark they want to utilize. Arbitrary terms that are completely original help to avoid liability because there is no prior meaning and it is unlikely that other parties have utilized the term before. In addition, small companies can have an attorney search existing trademark registrations which may cause a problem with the mark that has been chosen. The attorney can provide guidance to the company on the risks involved with a chosen mark and the company can rebrand before launching.
TechStorey : According to “Anticybersquatting Consumer Protection act” it is illegal to use a domain name that is identical or confusingly similar to the trademark of another and that has a bad faith intent to profit from that trademark. The alignment of company name, trademark and corresponding domain name has become more and more cumbersome. What according to you should be the top priority? Should the trademark be filed first?
Kevin Keener : The first priority should be registering the domains you want. It is faster, easier, and cheaper than registering a trademark. If you file for trademark protection first while someone else gets the domain it is difficult and costly to get the domain back. UDRP arbitrations are never a sure thing. I’ve had good cases that I’ve lost and bad cases that I’ve won. It is all based on the subjective view of the arbitrator. Ideally you should apply for trademark registration at the same time. But trademark protection starts automatically by operation of law the moment you use a mark. You can rely on this common law protection prior to filing for registration. If someone files an application for the mark before you do though it is a long and costly process to stop their application and get yours granted.