Skip to main content

As a web startup (social networking website) is it necessary to have a lawyer submit trademark and/or copyright registrations?

Sugar Land, TX |

As a web startup (social networking website) is it necessary(is it necessary to do this immediately) to have a lawyer submit trademark and/or copyright registrations for my website?

+ Read More

Attorney answers 6

Posted

You are better off having this done sooner rather than later. You should also have a trademark attorney do a clearance study for your proposed trademarks to help avoid possible infringement issues.

This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.

Bruce E. Burdick

Bruce E. Burdick

Posted

Asker, Remember the 3 little pigs. You want to be the third pig because believe me there will be wolves trying to blow your website down. Copyright registration, domain registration and trademark registration are the bricks of a website. Don't substitute straw or sticks.

Posted

Under current U.S. copyright law, you need not do anything beyond publishing your work to be granted a copyright. However, I still suggest to clients that they put a copyright notice on their site.

I also suggest to clients to use a common law trademark (a superscript "TM") rather than filing a trademark from the start. To file a trademark is expensive and requires a separate registration in each catagory. A common law trademark protects you in every catagory.

If your site is successful you can think about spending the money to register the copyright and trademarks.
__________________
Andrew M. Jaffe
Attorney at Law
Practice Limited to E-Commerce and Internet Law
attorneyjaffe@aol.com
330-666-5026 www.netlaws.us

This post is provided for general informational purposes only and is not intended to be legal advice specific to you. This general information is not a substitute for the advice of an attorney in your jurisdiction. The attorney client relationship is not established by this post.

James Juo

James Juo

Posted

A few comments. First, statutory damages for copyright infringement are not available for infringing conduct that began before registration. And a copyright registration is usually required before filing suit on a copyright claim. Depending on the work in question, a copyright registration may or may not be appropriate, but filing fees for a copyright are relatively low and there is possible upside to an earlier filing. Second, a separate trademark application is not required for each class of goods or services (although an additional filing fee for each additional class would be required). There also is the potential benefit of an earlier filing date if one files an ITU application before actual use in commerce. Also, I do not believe that a "common law trademark protects you in every category." Rather, a common law trademark is limited to the geographic area where the mark is actually used and to the goods and services it is actually used with (but may further include a zone of reasonable expansion).

Bruce E. Burdick

Bruce E. Burdick

Posted

James is right. $35 government fee + a few hundred for attorneys fees on a copyright application is a bargain in comparison to the statutory damages (up to $150,000 per item) that can be lost by not registering. Please note there is a 3 month window next following publication to apply for registration of a copyright without losing statutory damages, so it is not IMMEDIATELY but do not delay and miss that window. Since a TM is so critical to a website, there is no way a knowledgable attorney will tell you to delay the clearance and registration of the trademark upon which your entire business will be built. Remember the 3 little pigs. You want to be the third pig because believe me there will be wolves trying to blow your website down.

Posted

Entire books have been written on how to establish and run a social network website. You should read a few of the books identified via the link below [see the books listed near the bottom of the page as well]. Then go visit with your own business attorney who's savvy about ecommerce and intellectual property law. Good luck.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

Bruce E. Burdick

Bruce E. Burdick

Posted

And, you should read the book BEFORE launching your site, not after. After may be too late, just as doing trademark clearance and registration after launching your site may be too late. Perhaps the worst thing for a startup website is to have to drop the name, destroy all those expensive promotional materials, reprogram, and relaunch under a new name. It can bankrupt you or make you look like an amateur to your customers. In social media everyone is struggling for the crumbs left by Facebook, but Facebook is huge and some of the crumbs are significant to small time operators.

Posted

Yes, but not legally required. It is necessary from a business standpoint as the application for trademark registration by treaty (Paris Convention) gives you international benefit of the priority of your US filing date for six months. (Do not confuse this with patents where it is 12 months, or you might delay and run into problems). That is important on websites, since they are immediately internationally accessible and there are pirates, imposters, hackers and bandits out there in the Wild Wordwide Web ready to rip off any clever new website. Even though this makes it a business best practice, in the US [unlike many foreign countries] you get trademark rights automatically just by use in commerce.

If you are starting a website, the last thing you want to happen is to have to switch the website name midway through a marketing launch. Starting over can be catastrophic due to the tight budget of most startups. So, a trademark clearance and domain name clearance followed immediately by an online US trademark application for registration of the name and then registration of the domain name are the first and most important two steps, Since both can be done online in minutes by your IP attorney, it is foolish not to do that. You want the two to be the same or similar and you don't want to run into hassles once you settle on your name.

Bottom Line: Yes, as a practical matter it is necessary, but it should be preceded by a trademark clearance search.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

Posted

Although not required, most applicants for trademarks and copyrights use a lawyer for legal advice regarding use, filing the application, and providing an opinion on the likelihood of success in the registration process, since not all applications proceed to registration. A lawyer may help you avoid many potential pitfalls. You should submit an intent to use application for the trademark you will use for the site as soon as possible. The copyright application can probably wait until you have the site built out and launch the beta version.

If you want to submit the applications yourself, the links below provide instructions on how to do that.

619-881-2305. This response to your question is general in nature, as not all the facts are known. Please consult an experienced attorney to review all your facts to receive specific advice for your matter. Mr. Paul's response does not create an attorney/client relationship.

Posted

There are several advantages that you will enjoy if your application to register any trademark that you use or intend to use, is approved by the Patent and Trademark Office. Likewise, it is to your advantage to register your copyrights.

That said, it is not strictly necessary to use a lawyer. Nor is it strictly necessary to register immediately. Whether or not it is strictly necessary, however, you may still want to ask yourself whether it is prudent and reasonable to seek legal services in this regard, and to do so quickly. Let me respectfully suggest that hiring a lawyer to help with this process, and doing so right away, is the prudent thing to do.

A registration of a trademark does not actually confer ownership of the trademark. Rather, ownership of a trademark or service mark is secured by using your mark in commerce. Registration is a notice mechanism, to alert the world of your claim that you own the trademark or service mark. Your registration, if the Patent and Trademark Office approves your application to register, will confer several procedural advantages on you, including serving as evidence of nationwide priority, if you ever have to enforce your trademark or service mark against an infringer. Especially if the infringer happens to be a counterfeiter, the remedies under the Trademark Act for the owner of a registered mark are stronger than the remedies that the owners of unregistered marks enjoy. So, again, while it is not strictly necessary to register immediately, several good reasons exist to register sooner rather than later.

Many clients find the trademark registration process goes much better, and often they have better success in choosing stronger trademarks, if they get a well-qualified lawyer involved at the earliest possible opportunity. I often ask clients if they would cut their own hair. Legal services are not much different, when it comes to whether a do-it-yourself approach really delivers good value to you.

As for copyright registrations, again, the registration process is distinct from the legal mechanism of obtaining a copyright owner's exclusive rights in a work. You (or, if it is a work made for hire, the person for whom you are working) will obtain ownership of the copyright as soon as the work at issue is fixed in a tangible medium of expression. Thus, registration is not an absolute prerequisite for the copyright to exist. Registration principally comes into play in the enforcement context, when it comes time to take action against an infringer. The remedies available under the Copyright Act are much better for you, if you have registered your copyright. The forms that you would file to register a copyright are not complicated, and I have sometimes helped clients set up a system to file their own registration forms with the Copyright Office. I would recommend that you talk to a lawyer about whether making your own copyright registration filings makes sense for you, or whether it makes more sense to hire an attorney to do it.

This answer is based on the limited information and is not to be relied upon as legal advice. No attorney client relationship is formed as a result of this question and answer. All readers are advised to consult an attorney confidentially, so as to enable the attorney to ask questions and ascertain all the facts, before taking any action related to this inquiry and answer.

Business topics

Recommended articles about Business

What others are asking

Can't find what you're looking for?

Post a free question on our public forum.

Ask a Question

- or -

Search for lawyers by reviews and ratings.

Find a Lawyer