Hodgson & Finkelstein explain how to create trademark rights in your website
Cheryl Hodgson: Bill, you mentioned the word active website versus a passive website. As a practical matter, I run into that a lot. It is getting better as the Internet seems to develop and people are more aware. Particularly the first ten years of the internet, it was a constant challenge because many people don’t have – there are many businesses now who do not have a physical location at all. They’re strictly an Internet business. They sell only by Internet. The question becomes what constitutes the actual proper use that qualifies for a federal trademark when you’re just on the Internet? It goes to this issue of an active versus passive website.
Bill Finkelstein: Sure. There are a lot of people who just sell through an intermediary like eBay or Amazon and have even less of a business so to speak. They let Amazon do all the selling of fulfillment and all the rest but that should qualify as use as well. The mark is being used to identify the goods and people are buying the goods because they identify them by that name, and the goods come with a label on them with that name.
It certainly should quality as use even if you don’t have any physical – you could just be sitting in your living room in your pajamas and have a manufacturer subcontractor who makes it for you, then he delivers it to a fulfillment house, and Amazon does all the work for you, and you get a check. You’re in business under that trademark. That product bears the trademark.
Things have absolutely changed. The days of belching smokestacks as being the only way to make products is obviously long gone.
Cheryl: Just to follow up a little bit on that active versus passive because where I see it comes up, a great example is services. If I’m a lawyer, I don’t actually render services on the Internet. I may have a law firm website. I’m sure your firm does as well. Professionals do these days but that is a classic example of what I call a passive website.
It’s really like advertising for your business. You’re not actually rendering the services at the site. That’s an example of a passive website whereas I think when we’re using the term active, it’s that you can actually transact a transaction, buy something, and there are examples of services where I think you’re probably on the internet as well, of some sort.
Bill: Service marks are easier in some respects to protect and register because Google is running a service, running a browsing service. They may not be charging for it but they certainly have a trademark for browsing services. They get their money in different ways. It’s certainly a service.
A lot of services certainly take place over the internet. Your offering of the services will qualify to support your registration.
Cheryl: Exactly. When I said the advertising, I meant it’s advertising but for purposes if you wanted to get a trademark, let’s say for example the inactive website where someone may have a picture of their product. Say it’s a hard good. There’s a picture of the product on the website.
They describe it with great detail but you can’t purchase it on the internet. One of the more popular ways to register a trademark on the internet is for an online store, an online retail store. In order to qualify for the online retail store, you actually have to have that shopping cart element, or a toll free number where you can prove the connection between the picture of the goods and the ability to access or actually consummate a transaction.
We hope this helps you learn how to create trademark rights in your website.