Is Trademarking Your SL Brand Worth it to You?

But if the SL XCITE is selling SL representations of XCITE RL items then I think the rl company would take priority no?

The purpose of me establishing my company as a RL company was so I could maintain my brand in both worlds, not just SL.

Yes I do know this. Establishing yourself in real life means not hiding behind an avatar
A step I had to take (you'll find out much more if you watch CNBC tonight )

However, I don't think it was approriate for you to point everyone to my rl details do you? That is what pm is for. Hugs

Well, some people might not be comfortable with that - another reason not to trademark, really.

I guess each person has to decide whether or not its worth it to them. Hence the thread title

Yes I do know this. And thanks to YOU everyone else who reads this will know now also. So whether or not I was ready to share that information with everyone I guess you made that decision for me eh?

For me, establishing yourself in real life means not hiding behind an avatar
A step I had to take (you'll find out much more if you watch CNBC tonight )

However, I don't think it was approriate for you to point everyone to my rl details do you? That is what pm is for. Hugs



I guess it depends on whether or not it's worth it to YOU! Hence the thread topic.

Yes I do know this. And thanks to YOU everyone else who reads this will know now also. So whether or not I was ready to share that information with everyone I guess you made that decision for me eh?

For me, establishing yourself in real life means not hiding behind an avatar
A step I had to take (you'll find out much more if you watch CNBC tonight )

However, I don't think it was approriate for you to point everyone to my rl details do you? That is what pm is for. Hugs



I guess it depends on whether or not it's worth it to YOU! Hence the thread topic.

It'd take months to make that much in SL, LOL. I'm not seeing that it's worth it for me. Besides, it IS just for fun, for me at least. By the same token, I'd be pretty pissed off if someone started using my logo and name.

Your trademark is worthless if you can't enforce it.

The first thing you have to do is find the violations. That sounds like a random proposition, though maybe the new search features help.

The second thing you have to do is find the identity of the offender- a name and address to which you can mail your cease-and-desist letter, or serve your lawsuit.

You do not have to hire an attorney to sue someone. But if real money were at stake, you'd be a fool not to.

Then, even if you were successful in your lawsuit, would the defendant have the money to pay the judgment? Your judgment is worthless if you can't collect it.

So then, does the time, trouble, and probability of successfully defending your trademark justify the money you are making from the trademark? I would guess that for the overwhelming majority of Second Life businesspersons, the answer is no.

You could operate under the theory that registering the trademark will deter violation. That might be the case outside of the internet. The internet culture, however, is one that has no respect for intellectual property. When property gets digital, internet users suddenly feel they have the sacred, divine right to steal others' intellectual property, and are openly contemptuous of anyone asserting intellectual property rights.

Unless Linden Labs provides a mechanism for enforcing trademarks, the cost of enforcing a trademark in Second Life is probably going to be prohibitive for just about everyone.

I tried to PM this to you, but your PM mailbox was full. I've edited my posts above so that mentions of that fact are removed. If you edit yours likewise, they will be gone, and I'll remove this message too. I'm sorry.

The DMCA (or one thing or another) actively protects LL from being named a party in copyright infringement committed by any of us (as long as they comply with properlly filled out notices).

There's no such legal safe haven for them when it comes to trademark infringement however. If they're made aware of it, they have to take it down (and unlike copyright, *anyone* can bring it to their attention, it doesn't have to be the owner of the mark).

The damage has been done. Yours as well as mine have already been quoted by others and seen by many. It was nice of you to apologize though.

As a general rule, as long as there is no identical or very similar mark in the same International Class (IC) of your trademark, it's easy to register a mark (as a Word Mark) that is owned by someone else in a different International Class. You can't (usually) use this as a loophole to exploit other existing trademarks. Having the same name is fine; trying to pass off your goods as coming from a different originator is not.

The IC codes break down all possible goods or services into a 42 different classes. Almost all Second Life goods will fall into IC 009 "Electrical and Scientific Apparatus", the class that includes most software. Services are more complicated, as it is possible to offer many RL services via Second Life, so a number of the Services IC codes (035 to 045) might be possible.

Taking a look at two of the examples you gave, Yumi, "N30" and "Glowbox" we can see how this applies in practice.

There is only one "N30" registered Trademark. That's in IC 005 for the Goods & Services of "Dietary Supplments". Unless you were engaged in some sort of passing off (say marketing a "virtual dietary supplement", that trademark would be very easy to get and defend in IC 009.

There is also only one "Glowbox" listed. This time in IC 016, for the Goods & Services of "high resolution photographs of astronomical bodies contained in shadow-box frames with a self-contained light source, all sold as a unit." However, there is also another fairly close trademark extant, "Globox" which is registered in IC 009, this time for the Goods & Services of "Computer stand and storage cabinet specifically designed for holding computers and accessories".

If Michael Bigwig's Glowbox Designs needs to be registered in IC 009, then this will be a problem. It is possible that he could convince the Examining Attorney that the differences in Goods & Services and Channels of Trade are sufficient so he could still register his mark. It's a crapshoot, really. However, if Glowbox Designs doesn't make virtual stuff, but instead provides a service (Micheal calls it a "design firm" via the medium of Second Life, then he most likely can register it under one of the Services classes.

no I can't afford it, no I don't think it would be enforced (I'm a cynic), but yes I intend to at some point... for both RL and SL purposes

hmm maybe I am being dense but I assume we are talking about Registered trademarks here and not just the standard right of claim available to everyone? I didn't see that the poll specified Registered - but maybe that was implied. I only mention it because it is a rather unknown fact that your copyright and trademark rights are protected even if you do NOTHING. Whether or not you are better protected from having spent money at the copyright or trademark office is debatable. My RL profession requires I stay up to date on all this info - as I am especially vulnerable to infringements. Placing a lovely little ™ (keyboard shortcut alt 0153 to place this symbol after your company name) after your brand does WONDERS. It says - hey shmuck I am serious about this - really - don't mess with me. Yet it saves one $395 USD. As for international copyright - I don't bother - it's relatively useless - you need either very deep pockets or a very good case. And if you have either of those then a registration receipt won't matter a whole lot.

FROM http://www.uspto.gov/go/tac/doc/basic/register.htm

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Thanks Brigid! That actually explains a lot of what my RL employer does. We have a bunch of the "TM" and "R" stuff and I never knew the difference and the marketing people always yell at me when I use the wrong one, LOL! Thanks!

yeah they should stop that yelling and just explain! glad i could help!

It's "Glowbox Designs" --quite different than just "Glowbox" and "Globox." Saying the trademark "Glowbox Designs" is an infringement on a company like "Globox" is like saying a store called "Navy" is infringing on "Old Navy" --I think this is correct. Having just a portion of the name in your name doesn't make it the same name.

My company is not just a SL company--I am actively freelancing design under that title in real life. And to bring it back the OP's question: in the case of duel-meta-real companies...it's best to trademark it.

Actually, I checked this myself. Nobody has quoted the statement that your details are available, except myself and you. The statement that "someone has trademarked 'never 30', which might be MadamG but I'm not sure" _has_ been quoted, but with the removal of your post confirming it there will be nothing to suggest that's anything more than speculation. (It was only because you posted the message confirming that 'yes, that is me' that I wrongly concluded that you were OK with people knowing that those were your details)

Thank you for your additional public clarification, Yumi.
I think you left out some details but deleting posts does not remove them from the database...I wouldn't think. I have nothing further to discuss publicly with you at this time. Please do not expect any further replies.

It very likely would not matter. The US Patent & Trademark Office would almost certainly classify the "Designs" part of "Glowbox Designs" as "merely descriptive" and require you to disclaim that part of the mark in your application, saying something like "No claim is made to the exclusive right to use DESIGNS apart from the mark as shown." From there, they would judge your mark as if it were just "Glowbox".

Since you are apparently offering design services, you probably would not have any problem with the "Globox" registered in IC 009, you would probably be registering your mark in one of the International Classes for Services.

Keep in mind I'm not talking about what is infringing or not. I'm talking about what the USPTO will register without you having to spend a bunch of time and money fighting them on it.

Actually, I believe that Michael is correct. There is a difference between Globox, Glowbox, and Glowbox Designs. It is the entire phrase, taken together, that is being registered. It also depends on what marks are being registered - design marks, word marks, etc. and what classes they are in. The focus is on what the likelihood of confusion is. Unless you have a truly fanciful name like Kodak, you aren't likely to get protection for a single word. Would someone really be confused between Glowbox Designs and Glowbox Studios or Glowbox Haute Couture?

That would make sense. But that's not how the PTO does it. It's the government, after all. See for yourself. Go to the PTO's TESS trademark search engine:

http://tess2.uspto.gov/bin/gate.exe?f=tess&state=a6phdn.1.1

Now pick "New User Search Form (Basic)" and on the page it takes you to enter "Designs" and take a look at the results. Ignore results that don't have a Registration Number assigned. Those are still pending. But if you click on any of the Marks that have gone through the process to registration, you will find that the record page for all of those marks that are in the form of "_______ DESIGNS" have a Disclaimer of "no claim is made to the exclusive right to use "design" apart from the mark as shown".

And once you have disclaimed "Designs" (the "merely descriptive" part of the mark), the PTO evaluates your proposed mark on the remaining part of the mark. In the case of "Glowbox Designs", they evaluate it as if it were "Glowbox".



"Likelihood of confusion" is only one of several tests that the PTO focuses on in evaluating marks. They will also initially reject marks for being "merely descriptive", "geographically descriptive", and for having similar "channels of trade". These are only the most common reasons for initial rejection. There are other, less common ones, too.

The distinction between classes, however is vital. As I pointed out in the example of "Glowbox Designs", since the other similar "Globox" mark is registered in IC 009 (for computer accessories), and Michael's "Glowbox Designs" is a service, his mark would very likely be registerable.

The difference between Design Marks and Word Marks can be important but it is not definitive. For example, if Second Life had their logo with the eye-in-hand registered but not their "Second Life" word mark, I could not register a mark for a different Second Life logo design in the same field. (To the best of my knowlege, LL has protected the "Second Life" word mark.)



If a single word is not a common part of language it can be easier to get registration for than a phrase. "Glowbox" is a good mark from that point of view.

One other note: there are a HUGE amount of other complexities to the trademark registration process. I've barely scratched the surface. There are ways around many of initial rejections that the PTO commonly makes. There is an appeals process for "final" rejections (which are not final). There is a Supplmental Register of marks that some marks that can not be registered on the Primary Register may be eligible for. How long you have used the mark in trade also factors in.

There are specialized lawyers who do nothing but trademark application, prosecution, appeals, and protection. For the non-lawyer, registering your own trademark is complex but do-able. If you can figure out Second Life, you can figure out the basics of the PTO

Trademarketing?

It's bad enough some of these self called 'designers' actually have deluded themselves into thinking they actually invented whatever items they bring out. Without adding a TM to the mix.

I disagree. They can't determine (for me) what part of my brand is 'descriptive.' The name of my company is 'Glowbox Designs', not 'Glowbox.' In fact, I could name my company Glowbox Designs, and sell cupcakes...they still have to accept the full name I'm trademarking.

That would be like saying...hey, we know you're a 'Mart', so...we'll take that off and leave you with 'K.'

But hey...I know what you are saying. I think a company has a right to have their company listed exactly as it is named...determining what service it is involved in shouldn't manipulate what part of your 'brand name' is being etched in stone, and what part is just a 'groupie'

An SL company that has been ripping off the Nikon Camera trademark.