Marketing “Artificial Intelligence” Needs Careful Planning to Avoid Trademark Troubles

As the market for all things artificial intelligence continues heating up, companies are looking for ways to align their products, services, and entire brands with “artificial intelligence” designations and phrases common in the surging artificial intelligence industry, including variants such as “AI,” “deep,” “neural,” and others. Reminiscent of the dot.com era of the early 2000’s, when companies rushed to market with “i-” or “e-” prefixes or appended “.com” names, today’s artificial intelligence startups are finding traction with artificial intelligence-related terms and corresponding “.AI” domains. The proliferation of AI marketing, however, may lead to brand and domain disputes. But a carefully-planned intellectual property strategy may help avoid potential risks down the road, as the recent case Stella.ai, Inc. v. Stellar A.I, Inc., filed in the U.S. District Court for the Northern District of California, demonstrates.

Artificial Intelligence startups face plenty of challenges getting their businesses up and going. The last things they want to worry about is unexpected trademark litigation involving their “AI” brand and domain names. Fortunately, some practical steps taken early may help reduce the risk of such problems.

According to court filings, New York City-based Stella.AI, Inc., provider of a jobs matching website, claims that its “stella.AI” website domain has been in use since March 2016, and its STELLA trademark since February 2016 (its U.S. federal trademark applications was reportedly published for opposition in April 2016 by the US Patent and Trademark Office). Palo Alto-based talent and employment agency Stellar A.I., formerly JobGenie, obtained its “stellar.ai” domain and sought trademark status for STELLAR.AI in January 2017, a move, Stella.ai claims, was prompted after JobGenie learned of Stella.AI, Inc.’s domain. Stella.AI’s complaint alleges unfair competition and false designation of origin due to a confusingly-similar mark and domain name. It sought monetary damages and the transfer of the stellar.ai domain.

In its answer to the complaint, Stellar A.I. says that it created, used, and marketed its services under the STELLAR.AI mark in good faith without prior knowledge of Stella.AI, Inc.’s mark, and in any case, any infringement of the STELLA mark was unintentional.

Artificial Intelligence startups face plenty of challenges getting their businesses up and going. The last things they want to worry about is unexpected trademark litigation involving their “AI” brand and domain names. Fortunately, some practical steps taken early may help reduce the risk of such problems.

As a start, marketers should consider thoroughly searching for conflicting federal, state, and common law uses of a planned company, product, or service name, and they should also consider evaluating corresponding domains as part of an early branding strategy. Trademark searches often reveal other, potentially confusingly-similar, uses of a trademark. Plenty of search firms offer search services, and they will return a list of trademarks that might present problems. If you want to conduct your own search, a good place to start might be the US Patent and Trademark Office’s TESS database, which can be searched to identify federal trademark registrations and pending trademark applications. Evaluating the search results should be done with the assistance of the company’s intellectual property attorney.

It is also good practice to look beyond obtaining a single top-level domain for a company and its brands. For example, if “xyzco.ai” is in play as a possible company “AI” domain name, also consider “xyzco.com” and others top-level domains to prevent someone else from getting their hands on your name. Moreover, consider obtaining domains embodying possible shortcuts and misspellings that prospective customers might use (i.e., “xzyco.ai” transposes two letters).

Marketers would be wise to also exercise caution when using competitor’s marks on their company website, although making legitimate comparisons between competing products remains fair use even when the competing products are identified using their trademarks. In such situation, comparisons should clearly state that the marketer’s product is not affiliated with its competitor’s product, and website links to competitor’s products should be avoided.

While startups often focus limited resources on protecting their technology by filing patent applications (or by implementing a comprehensive trade secret policy), a startup’s intellectual property strategy should also consider trademark issues to avoid having to re-brand down the road, as Stellar A.I. did (their new name and domain are now “Stellares” and “stellares.ai,” respectively).

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