by Juan Robin II
I meet some cool, smart people in my course about affiliate marketing.
One of them is Zack Strebeck and he wrote this post. I have no clue about legal dealings, laws, or trademarks. I actually never really paid much attention to any of the sort other than not using another company’s name in my brand.
Laws are confusing and so Zack breaks it down for us.
Do you hate lawyers?
I do too, but unfortunately, I am one. I’m also a niche site owner, like you.
For most niche and authority site owners, the legal aspects of things don’t really come into play.
While there are many types of law that intersect with websites, I’m going to touch on just one in this guide – Trademark law.
Why Trademark Law?
Trademarks impact you in a number of ways throughout your niche to authority site journey. Having some basic knowledge can save you lots of trouble and actually benefit you down the road!
Whether you spend money on a lawyer or don’t take any action at all, it’s good to have a background on how trademark can intersect with your site building at different stages of its success.
I’ve broken this guide up into three distinct parts, based on the maturity and success of your site at those different points.
Let’s get started.
The Niche Site Phase
When you’re just starting a site, you don’t really know if it’s going to be a success or not. Most likely, you’re pouring a bunch of time and money into it, trying to get the site built up with a well-researched niche and highly-targeted keywords.
This probably isn’t the time to be spending money on trademark registrations and other expensive legal moves regarding your site’s name.
However, you can plant the seeds for later branding success at this stage, by understanding just a few important aspects of trademark law.
The whole reason for trademark law to exist is to protect consumers (with the secondary benefit of protecting brands).
How it does this is by giving a brand exclusive rights to a name, so that consumers aren’t confused about the source of the goods and services they are receiving.
Here’s an example:
You love Coca-Cola, and want to buy a bottle to drink. You walk into a store and head to the soda aisle but notice that they’re selling lots of different sodas with the “Coca-Cola” branding, but the actual drinks are different colors and flavors than what you expected.
If the law allowed anyone to use any branding, this is the potential situation you could get in as a consumer.
Trademark law is there to stop this from happening.
The Coca-Cola Bottling Company is the only one allowed to use the words “Coca-Cola” as branding for soda and similar types of goods.
Let’s look at it in the website context.
If you called your niche site “amazonbestdeals.com” and chose the best deals from Amazon to highlight, customers wouldn’t immediately know that you’re NOT Amazon (or officially endorsed by them).
Amazon would rightly nuke your site from orbit because you’re infringing on their very valuable “Amazon” trademark.
I actually did this in an early niche site experiment with selling Microsoft Certifications. This was before I knew what I was doing, and if Microsoft had come after me for trademark infringement, they would have been right to do so
Let’s look at how we avoid this.
Avoiding Infringement Of Other Trademarks
It’s simple, really.
If you follow a few simple Do’s and Don’ts in how you name and operate your site, you should be able to avoid stepping on other brands’ toes (and getting a nasty cease and desist letter from their legal department).
- Choose a strong, distinctive brand name for your site
- Do a proper clearance search on your name before starting it
- Develop goodwill for your own brand
- Pick a name that’s too generic or descriptive of the products you’re offering
- Jump into a new site without checking for competitors with names that are too closePiggyback on someone else’s brand name to take advantage of their customers
It sounds simple, but the devil is in the details.
Choosing A Strong Brand Name
When choosing a strong trademark, “distinctiveness” is the key. This means that your particular brand name is “distinct” from others in the same field.
How do you do this?
By sticking with the stronger side of the “distinctiveness spectrum” for trademarks:
- Fanciful – these are totally made up words (Exxon)
- Arbitrary – this is where the trademark is completely disconnected from the actual products or services (Apple for electronic devices)
- Suggestive – this is where the trademark is far enough away from the actual products and services that a small imaginative leap is required (Netflix)
- Descriptive – these trademarks simply describe the thing they’re selling (International Business Machines (IBM))
- Generic – trademarks that are exactly the same as the product themselves (Apple for selling apples)
Sticking to the first three will give you a much stronger trademark and brand!
Let’s take two authority site examples:
First, the Wirecutter. I’d classify this as a “suggestive” trademark since it requires the consumer to make a small leap in imagination to go from the words themselves to the actual products being reviewed on the site (originally, electronics).
This is the kind of “not quite exactly” naming that you should be shooting for, at the very least.
On the other hand, we’ve got Health Ambition, the authority site created by the guys over at Authority Hacker. I’d say that this is more of a “descriptive” trademark since it’s just kind of describing what’s on the site (health information).
Creating A Strong Brand For Long-term Growth
If you’re looking for long-term branding and have your sights set on becoming an authority at some point, it’s best to avoid these kinds of trademarks.
However, I realize that there are some difficulties in this:
- Coming up with a strong brand (which isn’t already taken) isn’t easy
- If you’re not describing your site’s focus in the title (Super Bike Gear), it’s not immediately obvious what the point of it is – you need to spend time earning goodwill
I’d argue that both of these aren’t difficult enough to avoid coming up with a strong brand, though.
For the first one, yes, it’s more difficult, but a more abstract branding allows you to expand the types of products you’re reviewing and selling in your niche.
Nobody questions why they’re reviewing Exercise Resistance Bands on a site called The Wirecutter – it’s just broad enough to be more all-encompassing that something like Health Ambition.
On the second point, does this even really matter for niche sites? We rely on Google traffic from search results, which takes people looking for answers to their queries right to our posts. No one is typing our niche site URLs into their web browser.
So now you’ve chosen a great name and you’re starting to grow your site.
The Growth Phase
As your site begins to get traction and more sales and notoriety, you may want to start thinking about protecting your brand.
This can be especially helpful if you’re looking to sell the site at some point – a prospective buyer may be more interested if they see a federal trademark registration and other steps taken to safeguard against infringement.
What kind of steps can you take?
Registering Your Trademark
The first thing you may want to look into is getting a US trademark registration for your site’s brand name.
This can help with a few important things:
- Allows you to sue someone in federal court for violating your trademark rights
- Allows you to more easily take down Facebook pages and other social media brand pages that are infringing on your trademark
- Lets you sign up for Amazon Brand Registry if you’re going to be selling your own white-labeled products through FBA (see below)
- Gives you the option to start a UDRP proceeding against a confusingly-similar domain name that might be infringing on your brand
The process takes the better part of a year after you file the application, which is why I’ve put it in the growth phase.
However, your trademark rights will date back to the first day you started using your brand name “in commerce.”
This basically means when you put your site up in connection with the services you’re claiming rights over (running a website, usually).
Obviously, there are costs involved, which is why I didn’t list this in the niche site phase – if you don’t know that your site is going to work out and start bringing in income, then it’s probably not worth the expense of trademark registration.
You can expect this to cost between $500 and $1000, depending on what service you use and how much they help out.
A good trademark lawyer or service will also conduct a trademark clearance search, which can help to gauge whether there are other brands out there that are too close to your name.
In that case, you may want to pivot to a new name before growing any larger. If your site pre-dates theirs, then you may consider going after them through the legal means we discuss below.
Amazon Brand Registry
Many niche and authority site owners like to transition out of the Amazon affiliate model at some point, into more lucrative affiliate programs and even white-labeled products that they sell through their own Amazon store.
For example, if you run a health site and your brand is big enough, maybe you start selling your own branded protein powders and other supplements through Amazon’s “Fulfillment By Amazon” (FBA) service.
This is where Amazon warehouses your goods and fulfills any orders placed by your customers, avoiding the need to deal with the logistics of keeping and shipping all of these products.
In that case, Amazon offers a great service that helps you to protect your brand on the site – Amazon Brand Registry.
With Amazon Brand Registry, you can:
- Register your trademark with Amazon
- Control the appearance of your Amazon store
- Use Amazon’s search tools to find counterfeits
- More easily get these infringers taken down from the site
- Unfortunately, Brand Registry requires that you’ve registered a trademark in whatever country you want to sign up for. If you’re in the US, that means filing a trademark application with the US Patent and Trademark Office.
Because of the lengthy process to get a trademark registered in the US (as I said, as long as a year), if you have plans to do this, it’s best to get started sooner than later.
Taking these steps allows you to more confidently grow into “Authority Site” status and really protect your now-valuable brand.
The Authority Site Phase
Once you’ve reached “authority” status, you’re kind of a big deal.
That’s when people start trying to steal your customer goodwill and infringe on your trademarks. This can happen in a number of different ways:
- Someone starts a new site with a very similar domain name
- Someone sets up a confusingly similar Facebook, Twitter, or other pages
- Your content starts appearing on other sites, either in full or in part
- Mobile apps, e-books, and other electronic products come out that have the same or similar name to your site
- If you sell on Amazon, either the products or the brand name starts appearing on other stores that you don’t control
The list goes on and on.
What can you do?
Going After Infringement Of Your Trademark
Luckily, lots of sites online have an easy way to report trademark infringement. Some of the ones I work with regularly are:
You generally just fill out a form to report the infringement, and they will often take the offending site, product, or page down soon after.
If you need to escalate, and the infringing party is reachable via email or postal mail, a demand letter is another way to deal with this. I send these on behalf of clients all the time – you basically demand that they stop infringing your trademark, and even demand a license or settlement fee.
If they don’t pay or you can’t otherwise settle, you threaten to file a lawsuit.
Usually, this works and the infringement stops with the letter. Sometimes, lawsuits need to be filed (I don’t do that work, but work with lawyers who do).
However, there are other methods for stopping trademark infringement, particularly when it comes to “cybersquatting” or confusingly similar domain names.
Cybersquatting And UDRP Proceedings
If someone has registered a domain name that’s very close to yours or is obviously trying to trade on your site’s goodwill (like I did in my Microsoft Certification website example in the beginning), you have a couple of options.
The simplest one is using a UDRP proceeding. This is a standardized dispute resolution set up by ICANN (the domain registry).
There are three things you’re required to prove in order to recapture an infringing domain name:
- The other domain is the same or confusingly-similar to yours
- The infringer doesn’t have any rights to the trademark (and you do)
- The infringer registered the domain in bad faith
“Bad Faith” in this case basically means that they’ve registered the domain name to either sell it to you, to someone else or to create a competing website that sells the same kinds of goods and services as you.
A trademark registration can help out a lot in establishing that you have trademark rights and is also helpful in showing that your trademark rights in the name were public.
Therefore, when they registered their competing domain, they were acting in bad faith.
You start the process by filing a complaint with ICANN and paying the filing fee (about $1500). The owner of the infringing domain then has the ability to file a response to your complaint. Then, someone at ICANN will review both documents and make a decision.
If you win (and in most cases the complaining party wins), the domain name is transferred to you. There’s no monetary damages or anything – just ownership of the domain name.
You can read more about the UDRP process on my blog here.
If you’re looking to get some money out of the other party, you can go through the traditional legal process in the United States under the Anticybersquatting Consumer Protection Act (ACPA).
The elements for proving a case under the ACPA are similar, and you have the ability to get penalties out of the infringer.
It also takes a lot longer and costs a lot more, so if it’s a fly-by-night infringer with no real assets, it’s generally not worth going after them. UDRP is the better option to get a resolution quickly and move on with your life.
Selling Your Site?
If you are looking into selling your site, I’m of the opinion that having a strong trademark can only help.
Having a valid registration is the icing on the cake.
While many buyers probably don’t care, there are those that do and want to see that you’ve taken steps to protect the valuable intellectual property in your site.
If they’re spending a lot of money on what is essentially a virtual asset, having that trademark protection in place (along with copyright protection for your site content) can be a sign that you take this business seriously.
I’m sure many will disagree, and that’s fine. Again, while it’s not required for selling your site (to my knowledge), it certainly can’t hurt.
If you have any questions about trademark law and other legal questions regarding websites, leave them in the comments and I’ll try to answer them as best I can.
If enough questions come in, I’ll write a second post addressing other legal issues for niche site owners, as well.
Here are some other resources that might be helpful: