TILT – Therapeutic Innovations in Light of Technology
Jason S. Z ack
Mark-eting Yourself
An interesting consequence of conducting your professional work online is that you soon find yourself needing to adopt a domain name. Although an online counselor might choose something based on his or her name, like wendyjones.com or doctorsmith. com, many online counselors opt for a more creative approach and register domain names that incorporate "etherapy" terms (eshrink, cyberpsych, etc.). Of course, it's only a matter of time before someone else starts using a similar phrase and you start to wonder what kind of legal protection you have for your brand. After all, your competitor might not be as ethical as you are, or your client might be confused and head to someone else's website. Then again, you might find yourself receiving a threatening letter from someone using a similar name demanding that you stop your own use. Naturally, we're talking about trademarks here and in this column I want to give you some basic information on the subject. Note this discussion refers solely to U.S. trademarks and is not a complete statement of the law of trademarks. A trademark is (most typically) a word or logo that a purveyor of goods or services uses to identify its goods and distinguish them from others. Trademarks
MAGAZI NI NE EMA m ay y2 20 01 1 1 3636 T ITLI TL TMAGAZ
should not be confused with copyrights, which are the exclusive rights afforded to creators of literary, artistic and other works to control the reproduction, display or performance of their works. Nor should trademarks be confused with patents, which are limited-term rights granted by the government to inventors for the exclusive rights in their novel, non-obvious, and useful ideas (when described, reduced to practice, and filed publicly in a particular way with the patent office). Unlike copyrights and patents which have a limited term, trademarks may be enforced indefinitely, so long as the mark continues to be used in commerce. Trademarks can be strong, and subject to great protection from use by others, or weak and entitled to less protection, depending on how distinctive the marks are. Strong trademarks include arbitrary or fanciful marks that have no ordinary connection to the services being offered (e.g., Kodak, Amazon, Apple) and suggestive marks that imply something about the product but don't exactly describe what's being offered (e.g., Fresh Direct, Speedy's). Descriptive marks (e.g., "Burger Shop" for a hamburger vendor) are weak but protectable if they acquire "secondary meaning" (i.e., they become associated with a particular source), but generic marks (which simply identify the product) are unprotectable. A trademark owner may lose the right to use the mark if it becomes generic. As a general rule, owners of marks that are relatively strong or which have acquired secondary meaning can prevent others from using the same or substantially similar mark on similar goods and services where there would be a likelihood of consumer confusion upon encountering the junior (later) user's mark. Courts apply a variety of factors to determine whether there is a likelihood of confusion. Owners of famous marks can even prevent others from using confusingly similar marks where there is no likelihood of confusion under a legal theory called dilution.