Cybertelecom Federal Internet Law & Policy An Educational Project

IP: Trademark & DNS

One of the contentious areas of Internet law has been the controversy over domain names. The intensity of this controversy is brought by the collision of two separate controversies and came to be known as the DNS Wars. [Mueller]

The first fury deals fundamentally with who controls and governs the Internet. Turns out that the decentralized Internet over which no government has control, has one functionality that is entirely centralized and presents itself as a source of tremendous government control (be it national governments or Internet self-governance). This is the Internet's address space made up of Internet numbers and domain names administered by ICANN.

The second storm deals with who gets to register a domain name. In the physical world, Cannon Towels, Cannon Fishmarket, Canon Camera and Robert Cannon can all co-exist peacefully. The trademarks at issue are distinct and not subject to confusion. But in the online world, only one gets the valuable cannon.com Top Level Domain (and in this case, cannon.com is not owned by any of the above mentioned companies - although the owner does provide a link page to an assortment of Cannons on the Net). The trademark community created tremendous pressure that trademark owners should have superior rights to domain names. Yet domain names are a valuable part of communication, necessary for other members of society as well, including those engaged in political, cultural, religious, humorous, artistic, or even pointless speech. In the physical world, the rights of trademark owners are protected under many laws and those laws are constitutionally balanced with free speech and other rights. This balance was not readily apparent in the cyberworld.

While unable to divine a new just balance for trademark, the US Congress was able to attack low hanging fruits: cybersquatters. These leaches of the information revolution added little to the New Order. They are merely speculators attempting to exploit the first come first serve order, beat trademark owners to the registration of their own names, and then hold those names for speculative ransom. Thus Congress passed the AntiCybersquatter Protect Act.

Unlike copyright which protects the intellectual property of a written text, and unlike patents which protects the intellectual property of inventions, trademarks protect the intellectual property of a mark or logo or symbol which stands for some goods or services.

A trademark is

any word, name, symbol, or device, or any combination thereof- 1) used by a person, or 2) which a person has a bona fide intention to use in commerce and applies to register on the principle register established by this Act, to identify and distinguish his or her goods from those manufactured or sold by others.

15 U.S.C. § 1127.

There is tremendous commercial value to a trademark. A company seeks to establish a certain reputation with consumers. When a consumer sees the mark of the ACME Widget company, the consumer believes, perhaps without further research, that the consumer will get a certain level of quality of a good. One of the great innovations of McDonalds was that no matter what corner of what road you were on, a McDonalds' hamburger was the same. Whether you loved them or hated them, they were the same. This was a huge innovation for an increasingly mobile populace who were not quite too sure of the no name burger joint on the corner, and had had their fair share of grissle burgers. The McDonalds trademark meant to the consumer a level of quality that the traveling consumer could not be assured of from else where.

Thus trademarks are a form of consumer protection, that you get the quality of good or service that you expect. [Ty] For the company, the trademark is reputation and good will.

Trademark owners generally have three approaches to protecting their trademarks under the Lanham Act: 15 U.S.C. §§ 1051 - 1127.

(1) General Trademark Infringement under the Lanham Act

To prevail on a trademark infringement claim for a registered trademark, Plaintiff must establish that:

• He has a valid mark that is entitled to protection under the Lanham Act;
• Defendant used the mark;
• in commerce;
• in connection with the sale or advertising of goods or services;
• without Plaintiff's consent; and
• Defendant's use of the mark is likely to cause confusion as to the affiliation, connection, or association of Defendant with Plaintiff, or as to the origin, sponsorship, or approval of Defendant's goods.

[1-800 Contacts at 406] [15 USC §1114(1)(a)] [15 USC §1124(a)(1)(A)] [Hamzik Sec. III.a.] [Chatam] [Polaroid] [Jews for Jesus] [Planned Parenthood] [Wentworth p 6]

(2) The Federal Trademark Dilution Act, 15 U.S.C. § 1127.

This is more narrow authority limited to certain unique trademarks. Dilution involves

the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception. In a federal dilution action, a plaintiff bears the burden of proving (1) that it owns a famous mark and (2) that defendant's mark dilutes the famous mark.[Chatam]

In 2003 the Supreme Court limited the reach of the Trademark Dilution Act, curbing the trend of big trademark owners automatically winning trademark cases. While it was not a domain name case, this set an important precedent for domain name disputes where domain names are similar, but where actual dilution to the famous trademark is not established. The Court clarified that mere similarity between marks is insufficient to establish dilution; there must be actual evidence of dilution to the famous mark. The Court noted that while a Utah license plate slogan "the greatest snow on earth" may make people think of the circus, the phrase "the greatest show on earth" did not make people think of Utah and was in no way harmed.[Victor's Little Secret]

(3) The AntiCybersquatter Protect Act (ACPA)

ACPA theoretically applies narrowly to the case of Internet domain names and to trademark disputes involving cybersquatting.

Remember to check state laws which may address situations as well.

Trademarks

Trademarks are generally categorized as generic, descriptive, fanciful, arbitrary, and suggestive. [Yellow Cab 927]

Fanciful

"Fanciful, arbitrary and suggestive marks "are deemed inherently distinctive and are automatically entitled to protection because they naturally 'serve[ ] to identify a particular source of a product.'" A "fanciful" mark is a combination of letters or other symbols signifying nothing other than the product or service to which the mark has been assigned." [Little Caesars 571] [Anlin Slip 10] Whether a mark is fanciful and therefore distinct does not depend on when it was first used in commerce in the context of an application for federal registration. Rather, it on the term itself, and a fanciful mark is deserving of protection from the inception of its use, which in this case was 1991." [Anlin Slip 10] [Blisscraft 700]

Trademark Registration

Information on how to file for a trademark is provided by the Patent and Trademark Office in its online guide, Basic Facts About Trademarks. Trademarks can be one of the most valuable assets of a company. In other words, this is one of those moments where it is appropriate to remind you to consider getting professional assistance prior to acting.

There is a Lanham Act cause of action for infringement of a mark that has not been federally registered. 15 USC § 1125(a). Tumblebus, Inc. v. Cranmer, 399 F3d 754, 760-61 (6th Cir 2005). Section 1125(a) requires a plaintiff to prove:

• ownership of a specific . . . mark in connection with specific [goods or] services;
• continuous use of the . . . mark;
• establishment of secondary meaning if the mark is descriptive; and
• a likelihood of confusion amongst consumers due to the contemporaneous use of the parties' . . . marks in connection with the parties' respective [goods or] services."

Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F2d 1100, 1005 (6th Cir 1991).

Registering a Domain Name does not Constitute "Use":

Registration with Network Solutions, however, does not in itself constitute "use" for purposes of acquiring trademark priority. See Panavision, 141 F.3d at 1324-25. The Lanham Act grants trademark protection only to marks that are used to identify and to distinguish goods or services in commerce -- which typically occurs when a mark is used in conjunction with the actual sale of goods or services. The purpose of a trademark is to help consumers identify the source, but a mark cannot serve a source-identifying function if the public has never seen the mark and thus is not meritorious of trademark protection until it is used in public in a manner that creates an association among consumers between the mark and the mark's owner. [Brookfield ¶ 7]

Tradmark Cancelation

• 15 USC § 1119 (gives courts the power to order the cancellation of a registered mark)
• 15 USC § 1064 (provides the requirements for a petition to cancel the registration of a mark)

See also

• CT: Fraudulent Online Identity Sanctions Act (criminalizing false WHOIS records).
• CT: Is It Legal to Link (use of trademarks in metatags)
• CT: Trademark Keywords and Advertising

Trademark Reference