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Protecting Your Trademark on the Internet

by Glen Emerson Morris
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Union Pacific was the first railroad to threaten legal action against anyone posting Union Pacific labeled add-ons for Microsoft Train Simulator on the Internet. Union Pacific's move came months before the World Trade Center attack, but the motivation was still fear. Union Pacific said they were afraid association of their trademark with MS Train Simulator might encourage someone to hijack one of their trains.

While Union Pacific has been allowing model trains with the Union Pacific logo to be marketed for decades, the company initially drew the line at sanctioning anything connected with the all-digital MS Train Simulator. The problem is that MS Train Simulator is so accurate in describing how to run a locomotive that anyone familiar with the simulator could hop into a real locomotive and take off. When this eventually happens, and the video tape is played over and over again on CNN, Union Pacific wants to be sure the hijacked train won't have a Union Pacific trademark on it.

After initially calling MS Train Simulator "dangerous," Union Pacific softened its opposition, but with reservations. Regardless of whether their position is correct or not, Union Pacific is raising issues about trademarks and the Internet that the advertising industry might want to consider. Union Pacific isn't just trying to protect its trademark, it's trying to protect company property and lives, not to mention goodwill and the trust of the public.

Few businesses have any policies and procedures in place to even notice, let alone deal with, a situation like Union Pacific is facing. Given the additional risk we are all living under now, it might be time to create those policies and procedures. It wouldn't take much, just a little common sense, and making the effort to do things trademark owners should be doing anyway.

Under current trademark law, a trademark owner's job of protecting his rights merely begins when the trademark is registered. It's up to the owner to actively police the market, or world, for that matter, for violations. Once discovered, it's up to the trademark owner or licensee to take action against those infringements. The Internet has added a new dimension to the job of policing for trademark infringements, but the law is still the same.

Protecting a trademark on the Internet involves implementing a set of policies and procedures that are understood, and strictly followed, by a company on a long-term basis.

The policy issue is relatively easy. Trademark owners need to consider if, and under what circumstances, they want their trademarks to appear on the Internet. Most businesses can only benefit from consumers trading trains, planes, and old time radio shows with their trademarks in them, but there may be exceptions. Times change, so do risks, and a company's trademark policy should reflect this.

To enforce a company's trademark policy, two procedures must be set up; one for searching the net for unauthorized use of the company's trademark, and another for authorizing, or rejecting, requests for trademark use.

As procedures go, searching the Internet for trademark infringements is relatively easy due to the number of search engines available. A few minutes on Yahoo can give a rough idea of the extent of unauthorized trademark use. Another good place to check is eBay. All a company needs to do is to assign someone to do searches on a regular basis, and to pass the results on to appropriate management (if that isn't themselves).

If American Airlines had assigned someone to see how their trademarks were being used on the Internet a couple of years ago, they just might have avoided a boycott set off when their licensing agency signed an ill-considered exclusive contract with an MS Flight Simulator add-on manufacturer. The manufacturer demanded that all flight simulator Websites cease and desist offering downloads of American Airlines planes, and won. Unfortunately for American Airlines, most flight simulator fans got mad at them, not the add-on manufacturer or the licensing agency.

The second procedure required to enforce trademark policy involves the creation of a designated person, department, or agency, to approve or deny requests for use of the company's trademarks. As a result of its recent experience, American Airlines has set up a process to quickly grant approval for non-commercial distribution of flight simulator aircraft bearing the American Airlines trademark.

As both Union Pacific and American Airlines have proven, it's relatively easy to enforce trademark law on the Internet, once there is a will to enforce it. The law is heavily on the side of the trademark owner, and usually just threatening to invoke it will achieve results, but there is a new exception to consider. Recent comments by Supreme Court justices in a pending compulsory arbitration case suggest that even trademark disputes may be subject to compulsory arbitration clauses. If this is the case, it means that if you sign a contract involving your trademark, and you agree to compulsory arbitration, you will not be able to enforce your rights in state and federal courts. The arbitration judge you will be assigned will not be required to know trademark law, or even care about it. As a rule, never agree to compulsory arbitration concerning your trademark.

Other new and unknown risks for trademark owners lie ahead. It will pay to have a system in place to discover them, and to effectively respond to them. The general idea of millions of Internet users trading digital files loaded with trademarks and logos of their favorite companies is very appealing to advertisers, as free publicity always is. However, recent events have shown that the downside of high visibility can be beyond our ability to predict, sometimes even comprehend.

Some may accuse Union Pacific of being alarmist, but no one can accuse them of ignoring the issues.

Copyright 1994 - 2010 by Glen Emerson Morris All Rights Reserved

' keywords: Internet advertising, Internet marketing, business, advertising, Internet, marketing. For more advertising and marketing help, news, resources and information visit our Home Page.

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