You are on the Board of your association (ABC Association). Unfortunately, as often happens, someone has decided to complain about EVERYTHING. First they complain to the Board. Then to every unit owner that will listen. This particular complainer is both convincing (because he does not know or care to actually understand all of the facts) and determined. Worse yet, some of the neighbors are starting to listen. The Board sends out a letter explaining the facts. To retaliate, the unit owner starts a web page and ongoing blog to identify every issue that the unit owner sees as unjust. To further this process the unit owner obtains the domain names ABCAssociaiton.net and ABCAssociationOwners.biz and puts the Association’s logo on these pages, even though the Association owns and runs ABCAssocition.com, and has not granted any permission to use their logo. The intentional implication is that this unit owner’s pages are somehow legitimate, when really the unit owner represents no one, has no fiduciary duties and can say whatever he or she wants. You call your association attorney and demand that the unit owner be forced to take down the web pages or at least stop using your association’s name and logo. You believe the name is confusingly similar – intentionally. BECAUSE IT IS.
The first question from your association attorney should be has your association obtained a registered trademark in the name or logo? The reason is that if the association name, domain name or logo of your association conflicts with the name or logo of other companies, who have a registered trademark, the association, or in the above example the unit owner (assuming the association has obtained the registered trademark) could be forced to give it up.
The cost to file a trademark application is about $875 (consisting of filing fees of $275 and attorney fees of about $600). Anyone can make the filing, but you want to make sure you use someone with experience because:
- There are many ways to do it wrong;
- You want to check to make sure the name or logo has not already been trademarked and that your filing is not confusingly similar to another association anywhere in the country (otherwise, you are just wasting your money); and
- Getting it right will save you lots of time and effort when THAT unit owner problem arises.
Choosing a Name
When it comes to the domain name, even if the name of your association is available, there is still an issue of potential confusion if the domain name you are planning on using is similar to others (especially since the word “association” or “condominium” is found in most of them). “Similar” considers the sight, sound, and appearance of the mark. Thus, marks that are phonetically equivalent are considered similar for trademark purposes. Before you begin the application process, you can research the tradename or trademark to see if it’s already taken by checking the Trademark Electronic Search System Database. Alternatively, an attorney can conduct a search for the tradename or trademark, which typically costs about $500 for a clearance knock-out search.
The Process of Registering
To register a tradename (your association name or domain name) or a trademark (logo), you must file an application with the United States Patent and Trademark Office (“USPTO”). After filing, the USPTO will examine the application to ensure (1) that all application formalities have been satisfied and (2) that the mark is not confusingly similar to a prior-registered mark. Although uncommon, existing trademark holders can assert an objection to an application if they believe the name or mark applied for is too similar to their own name or mark. It is important to note that person’s names, geographic locations and common words are themselves ineligible for trademark protection.
Disagreements over names, domain names and logos are frequent, mostly between businesses in the same industry or market. Since the internet does not separate by municipality or state, it is important to be the first to protect your association’s valuable name and other intellectual property (logo and domain name). There is a difference between how the respective disputes are handled:
- Domain Names. A process for dispute resolution has been created by the Internet Corporation for Assigned Names and Numbers (known as “ICANN”). The process is called the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and is typically managed through arbitration. A cease and desist letter is often sent before initiating a UDRP proceeding.
- Tradename, Mark or Logo. If there is a dispute over the use of a tradename, mark or logo, there is generally a two-step process:
- Initially a cease and desist letter is sent; and
- If the letter does not work, the association can initiate suit (trademark infringement action).
If you don’t do your research before you begin using any names or logos, your association risks not only the unit owner problem identified above, but also that your money and time spent could be lost if the name or mark is already being used or is similar enough to a prior name or mark being used by another association, even across the country.