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IP: Trademark & Domain Names

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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 Fish market, 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 Top Level Domain (and in this case, 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 gristle 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.

Derived From: Springs v. LAPORTE COUNTY CONVENTION AND VISITORS BUREAU, Ind: Court of Appeals April 15, 2013

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 2.7 ("A basic aspect of the United States economy is that of the market place policed by laws that set a minimum level of fair competition. The law of trademarks is but a branch of this broader area called the law of `Unfair Competition or `Unfair Trade Practices.'" (footnote omitted)); 20 Ind. Law Encyc. Monopolies and Unfair Trade § 8 (noting that "trademark infringement is one type of unfair competition." (footnote omitted)).

The goal of trademark protection is to allow a firm to affix an identifying mark to its product (or service) offering that will, because it is distinctive and no competitor may use a confusingly similar designation, enable the consumer to discover in the least possible amount of time and with the least possible amount of head-scratching whether a particular brand is that firm's brand or a competitor's brand.

Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604 (7th Cir. 1986); see also Carroll v. Lordy, 431 N.E.2d 118, 123 (Ind. Ct. App. 1982) ("[t]he purpose of a trademark is to identify the source of the product, not the product itself").

Trademark law is rooted in English common law, and was "largely codified" at the federal level in the Trademark Act of 1946, commonly known as the Lanham Act. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 428 (2003). The Lanham Act defines a trademark, in relevant part, as "any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C.A. § 1127 (West). A "service mark" is the same as a trademark, except that it relates to services as opposed to goods or products. Id. The Lanham Act provides the holder of a mark with a cause of action against infringers. 15 U.S.C.A. § 1125 (a) (West). The plaintiff must prove two elements in order prevail on a claim of trademark infringement under the Lanham Act:

(1) that he or she has a protectable ownership interest in the mark, and

(2) that the defendant's use of the mark is likely to cause consumer confusion.

Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010); see also Tana v. Dantanna's, 611 F.3d 767 (11th Cir. 2010).

Types of Trademarks

"In order for a trademark to be eligible for legal protection, the mark must be distinct." [Carnivale at *9 (DDel 2010)] [2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11.2 ("`Distinctive' has a special meaning in trademark law. . . . Without achieving distinctiveness . . . a designation does not have the legal status of a `trademark' or `service mark.' No distinctiveness—no mark." (footnote omitted)).] The distinctiveness of a term is determined by a four category scale that separates terms into the following categories: [Sabrina Corp. at 14 (3rd Cir. 2010)]

  • generic,
  • descriptive,*
  • fanciful or arbitrary,* and
  • suggestive.*
  • Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1976)) [Yellow Cab 927] [Bath and Body Works at 748 (6th Cir 1996)] [Fagnelli (WDPA 2010)]

    * Inherently distinctive "because their intrinsic nature serves to identify a particular source of a product[.]" Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)

    Distinctive and Famous

    Section 43(c)(1) of the Lanham Act states: In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to -

    (A) the degree of inherent or acquired distinctiveness of the mark;

    (B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

    (C) the duration and extent of advertising and publicity of the mark;

    (D) the geographical extent of the trading area in which the mark is used;

    (E) the channels of trade for the goods or services with which the mark is used;

    (F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;

    (G) the nature and extent of use of the same or similar marks by third parties.

    Shields v. Zuccarini. 254 F.3d 476, 482 (3d Cir. 2001) ("the Third Circuit found the plaintiff's mark distinctive, noting that the plaintiff ran the only operation using the mark, used the mark for fifteen years, used a domain name comprised of the mark for four years, sold merchandise under the mark across the country, and advertised the business in widely distributed magazines. Id. at 483. The Court also noted that the New York Times ran a story on the plaintiffs business, and that the plaintiffs website received in excess of 700,000 visits per month")

    Carnivale v. Staub Design, LCC, Civ. No 08-764-SLR (DDE March 31, 2010) (finding plaintiff's mark THE AFFORDABLE HOUSE distinctive where plaintiff had "used the mark for fourteen years, used a domain name comprised of the mark for twelve years, sold his goods under the mark across the country since 1996, and advertised in at least two publications (Home Building Magazine and the Seattle Times). Also two publications (Staten Island Advance and Architecture Business and Economics) have published articles reporting on plaintiffs business. "

    Fagnelli Plumbing Co., Inc. v. Gillece Plumbing and Heating, Inc ., Civil Action No. 2:10-CV-00679-AJS (WDPA July 27, 2010) ("In order to be distinctive, "a mark must either be suggestive, arbitrary or fanciful, or descriptive with a secondary meaning." Id. A descriptive mark acquires a secondary meaning "when the trademark is interpreted by the consuming public to be not only an identification of a product, but also a representation of the product's origin." E.T. Browne Drug Co. v. Cococare Prods., 538 F.3d 185, 199 (3d Cir. 2008) . In determining the distinctiveness of a mark for the purposes of section 1125(d), the United States Court of Appeals for the Third Circuit considers the factors outlined in 15 U.S.C. § 1125(c) [5] . Shields, 254 F.3d at 482 . After considering the factors outlined in section 1125(c), the United States Court of Appeals for the Third Circuit considered the mark "Joe Cartoon" distinct when: (1) the owner used the term "Joe Cartoon" for a period of fifteen years; (2) the owner had used the domain name to advertise and sell products for a period of approximately four years; (3) the "Joe Cartoon" products were nationally advertised and sold through multiple media outlets; and, (4) the website received more than 700,000 visits per month. Id. at 482-83.")



    "A suggestive mark is inherently distinctive, but a descriptive mark that lacks secondary meaning is not distinctive and is not entitled to trademark protection. Id. (citing Two Pesos, Inc . v. Taco Cabana, Inc ., 505 U.S. 763, 768 (1992) )." Lahoti 9th Cir. 2011

    " Here, for example, consumers must separate "veri" from "check" and reason that "veri" is short for "verification services." In addition, similar marks have been found to be suggestive. See, e.g., Pilot Corp. of Am. v. Fisher-Price, Inc ., 501 F. Supp. 2d 292, 303 (D. Conn. 2007) (holding that "Magna Doodle" is only suggestive of children's magnetic drawing toy, noting that it "requires some imagination to get from `magna' to `magnetic'"); In re Shutts, 217 U.S.P.Q. (BNA) 363, 364-65 (T.T.A.B. 1983) [1] (holding that "Sno-Rake" is not merely descriptive of snow removal tool); Levi Strauss & Co. v. R. Josephs Sportswear Inc ., 28 U.S.P.Q. 2d (BNA) 1464, 1471 (T.T.A.B. 1993) (holding that "Action Slacks" is suggestive of pants made of stretchy fabric). " - Lahoti 9th Cir. 2011

    Fagnelli Plumbing Co., Inc. v. Gillece Plumbing and Heating, Inc ., Civil Action No. 2:10-CV-00679-AJS (WDPA July 27, 2010) ("Suggestive marks "require consumer `imagination, thought, or perception' to determine what the product is." Id. at 222 (quoting A.J. Canfield Co., 808 F.2d at 297 ).")

    "Suggestive marks connote, without describing, some quality, ingredient, or characteristic of the product. Coppertone®, Orange Crush®, and Playboy® are good examples of suggestive marks because they conjure images of the associated products." Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).


    "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]

    "Fanciful marks are, in essence, made-up words expressly coined for serving as a trademark. Some examples of fanciful marks are Clorox®, Kodak®, Polaroid®, and Exxon®." Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).


    Fagnelli Plumbing Co., Inc. v. Gillece Plumbing and Heating, Inc ., Civil Action No. 2:10-CV-00679-AJS (WDPA July 27, 2010) ("Arbitrary or fanciful marks are defined as "terms that neither describe nor suggest anything about the product" and "`bear no logical or suggestive relation to the actual characteristics of the goods'" or services. A & H Sportswear, Inc., 237 F.3d at 221 (quoting A.J. Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir. 1986) ).")

    "The mark, taken as a whole, does not suggest or describe the goods or services offered thereunder, namely x-ray supplies, films and equipment. As such, it is an arbitrary mark and is entitled to the greatest degree of protection. See Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999) (an arbitrary mark is a word or phrase that bears no relationship to the product and is the strongest type of mark); Sun Banks of Florida, Inc. v. Sun Federal Savings and Loan Assoc., 651 F.2d 311, 315 (5th Cir. 1981) ("Sun Bank" is an arbitrary or fanciful mark when applied to banking services); [4] Victoria's Cyber Secret, 161 F. Supp. 2d at 1349 (holding the mark "Victoria's Secret," which does not suggest or describe the goods or services offered, was arbitrary.) " [KSR X-Ray SDFL 2001]

    Arbitrary marks consist of words or symbols that are in common usage, but are arbitrarily applied to the goods or services "because they do not suggest or describe any quality, ingredient, or characteristic of the goods they serve . . . . Examples include Tea Rose® flour, Camel® cigarettes, and Apple® computers." Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).

    Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1032-33 (9th Cir. 2010) (explaining the strongest end of the trademark spectrum as arbitrary marks, which are "actual words with no connection to the product," and fanciful marks, which are "made-up words with no discernable meaning")

    Not Distinctive:

    Descriptive marks and generic marks, on the other hand, are not inherently distinctive. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763.


    Fagnelli Plumbing Co., Inc. v. Gillece Plumbing and Heating, Inc ., Civil Action No. 2:10-CV-00679-AJS (WDPA July 27, 2010) ("Descriptive marks are defined as terms that "`convey[] an immediate idea of the ingredients, qualities or characteristics of the goods,'"")

    "If consumer response requires any sort of `multistage reasoning process' to identify the characteristic of the product which the mark suggests, then the mark should not be regarded as `merely descriptive.'" 3 Louis Altman & Malla Pollack, Callmann on Unfair Competition, Trademark and Monopolies § 18:10 (4th ed. Supp. 2010).

    Springs v. LAPORTE COUNTY CONVENTION AND VISITORS BUREAU, Ind: Court of Appeals 2013:

    Descriptive marks describe "`the ingredients, qualities, or characteristics of an article of trade or a service[.]''' Platinum Home Mortg. Corp. v. Platinum Fin. Group, Inc., 149 F.3d 722, 727 (7th Cir. 1998). As a general matter, descriptive marks are not protectable as trademarks, "`both because they are poor means of distinguishing one source of services from another and because they are often necessary to the description of all goods or services of a similar nature.'" Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153 (7th Cir. 1996) (quoting Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir. 1986)). Descriptive marks will become protectable, however, "where the holder can establish that the mark has acquired `secondary meaning' in the collective consciousness of the relevant community." Id. (quoting Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 907 (7th Cir. 1983)). Secondary meaning exists when consumers regard the designation not as a description, but as the name of the product or service itself. Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001). Geographically descriptive designations generally fall within the descriptive category; thus, to be protected, they must have acquired secondary meaning. 2 McCarthy §§ 14:1 ("`[i]f a geographic term is used merely to indicate the location or origin of the goods and services, it is purely descriptive"). A mark's proper placement on the spectrum of distinctiveness is a question of fact. Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007).

    Geographically Descriptive

    Springs v. LAPORTE COUNTY CONVENTION AND VISITORS BUREAU, Ind: Court of Appeals 2013 (holding that Visit Michigan City La Porte is geographically descriptive and therefore must have acquired a secondary meaning to be protectected): "geographic composite mark ... is "one composed of geographic matter coupled with additional matter (e.g. wording and/or a design element)." U.S. Patent and Trademark Office, Trademark Manual of Examining Procedure § 1210.02(c) (hereinafter TMEP), available at Such marks are classified based on their primary significance. Id.; see also I.C. § 24-2-1-3 (providing that marks that are "primarily geographically descriptive" are not registerable unless they have acquired distinctiveness (emphasis supplied))"


    A generic mark cannot be protected as a trademark. [Leelenau Wine Cellars at 513 (6th Cir. 2007)] Generic terms "function as the common descriptive name of a product class" and are never protectable because protection would "deprive competing manufacturers of the product [] the right to call an article by its name." Canfield, 808 F.2d at 297 (quoting Abercrombie, 537 F.2d at 9). [Carnivale DDE 2010] [General Conference Corporation of Seventh Day Adventists, Sec. II.C. (6th Cir. 2010)] A mark is subject to cancellation if it "becomes the generic name for the goods or services, or a portion thereof, for which it is registered." 15 U.S.C. § 1064(3); accord Park `N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985).

    Primary Significance Test

    "The primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used." 15 U.S.C. § 1064(3).

    Under the primary-significance test, a mark is not generic when "the primary significance of the term in the minds of the consuming public is not the product but the producer." Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938); see Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) ("What do the buyers understand by the word for whose use the parties are contending?"). [Carnivale DDE 2010] See E. T. Browne, 538 F.3d at 193-94 ("[T]he primary significance test remains the central test of genericness in our Circuit."). Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 976 (10th Cir. 2002) (identifying the word "cola" as an example of a generic designation).

    "If a mark's primary significance is to describe a type of product rather than the producer, it is generic . . . ." [Nartron Corp. at 404 (6th Cir. 2002)]. See also [Fagnelli (WDPA 2010) ("generic marks "`function as the common descriptive name of a product class.'"")] Rudolph Int'l, Inc. v. Realys, Inc., 482 F.3d 1195, 1198 (9th Cir. 2007) (quoting Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999)).

    In order to become generic the principal significance of the word must be its indication of the nature or class of an article, rather than an indication of its origin." Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 256 (2d Cir. 1962) (emphasis added). Moreover, "casual, non-purchasing uses of [marks] are not evidence of generic usage" because primary significance is determined by "`the use and understanding of the [mark] in the context of purchasing decisions.' "2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:8 (4th ed. 2014) (quoting Restatement (Third) of Unfair Competition § 15 cmt. c (1995)) [hereinafter "McCarthy"].

    "The salient question is the primary significance of the term to the consumer. If the term indicates a product of a single producer to the consumer, it is a valid trademark." S. Rep. No. 98-627, at 5, reprinted in 1984 U.S.C.C.A.N. 5718, 5722.

    Two generic terms when combined can make a new distinctive term. [Berner Intl Corp, at 981 (3rd 1993)] [Carnivale (DDE 2010) ("Terms are examined as a whole and, when taken together, words that on their own could not qualify as marks may be protectable.")

    A term that in generic as applied to its meaning, may be a distinctive mark when applied to something outside of its meaning: [Trump EDNY 2013]

    a term is only generic to the extent that it "name[s] the species or object to which the mark applies." Nabisco, Inc. v. PF Brands, Inc., 191 F. 3d 208, 215 (2d Cir. 1999), abrogated on other grounds, Moseley v. Secret Catalogue, Inc., 537 U.S. 418 (2003). However, an otherwise generic term can become non-generic, and entitled to protection, when used in connection with goods or services unrelated to its generic meaning. See J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition, § 12:1 (4th ed.) ("Certainly, a term can be a generic name of one thing but be a valid trademark for some other product. For example: APPLE is a generic name for the edible fruit of the apple tree, but is a trademark for computers." (footnote omitted)). When an otherwise generic term is used as a trademark for a good or service that bears little or no relationship to its ordinary generic meaning, it becomes "arbitrary and fanciful," and thus is inherently distinctive. See Virgin Enters. Ltd. v. Nawab, 335 F. 3d 141, 148-49 (2d Cir. 2003) ("In relation to the sale of consumer electronic equipment, the VIRGIN mark is inherently distinctive, in that it is arbitrary and fanciful; the word `virgin' has no intrinsic relationship whatsoever to selling such equipment."); Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F. 2d 1072, 1075-76 (2d Cir. 1993) ("An arbitrary term is one that has a dictionary meaning — though not describing the product — like IVORY for soap."); Omega S.A. v. Omega Eng'g, Inc., 228 F. Supp. 2d 112, 123 (D. Conn. 2002) ("The Court has no doubt that the marks `omega' and `O', as used in connection with the manufacture and sale of watches, clocks, and electronic timing equipment, are inherently distinctive. The meanings associated with the word `omega' and letter `O' do not suggest time or watches.").

    A particular faith as generic: [General Conference Corporation of Seventh Day Adventists, Sec. II.C. (6th Cir. 2010)]

  • Christian Science Bd. of Dirs. of the First Church of Christ, Scientist v. Evans, 520 A.2d 1347, 1352-53 (N.J. 1987) ("Christian Science" is a religion and therefore a generic name not entitled to trademark);

  • McDaniel v. Mirza Ahmad Sohrab, 27 N.Y.S. 2d 525, 527 (N.Y. Sup. Ct. 1941) (holding that Baha'ism is a religion and that the use of word "Baha'i" could not be enjoined because "members of the same religion[] have an equal right to use the name of the religion");

  • New Thought Church v. Chapin, 159 A.D. 723, 724-25 (N.Y. App. Div. 1913) (denying injunction because plaintiffs claimed that "New Thought" referred to a religion and they could not "claim a monopoly of teaching this form of religious faith");

  • cf. TE-TA-MA Truth Found.-Family of URI, Inc. v. World Church of the Creator, 297 F.3d 662, 666 (7th Cir. 2002) ("Church of the Creator" describes a Christian denomination, not a religion, and is not generic);

  • Nat'l Spiritual Assembly of the Baha'is Under the Hereditary Guardianship, Inc. v. Nat'l Spiritual Assembly of the Baha'is, Inc., 150 U.S.P.Q. 346, 354 (N.D. Ill. 1966) (enjoining defendants' use of "Baha'i" because "the public has come to recognize the designation[] `Baha'i' . . . as identifying the [plaintiff organization] and the Baha'i Faith as administered by [it]").

  • Trademark Violations

    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.

    Ownership of Mark

    15 U.S.C. § 1125(d) (requiring that a plaintiff bringing a cybersquatting claim be "the owner of a mark")

    Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 930 (4th Cir. 1995) ("In order to prevail under §§ 32(1) and 43(a) of the Lanham Act for trademark infringement and unfair competition, respectively, a complainant must demonstrate that it has a valid, protectable trademark and that the defendant's use of a colorable imitation of the trademark is likely to cause confusion among consumers.")

    B & J Enterprises, Ltd. v. Giordano, 329 F. App'x. 411, 416 (4th Cir. 2009) ("in order to prevail on either a trademark or cybersquatting claim, a plaintiff must first and most fundamentally prove that it has a valid and protectable mark") (internal quotation omitted)

    Use in Commerce:

    "Use" required for Cause of Action

    "the exclusive right to use a mark is acquired through adoption and use of the mark in commerce. See Johnson v. Glassley, 118 Ind. App. 704, 83 N.E.2d 488 (1949) ("[t]he mere adoption of a particular name as a trade name, without actual use thereof in the market, confers no right thereto, even though such adoption is publicly declared"); Hartzler v. Goshen Churn Ladder Co., 55 Ind. App. 455, 104 N.E. 34 (1914)"

    Emergency One, Inc. v. Am. Fire Eagle Engine Co., Inc., 332 F.3d 264, 267 (4th Cir. 2003) "To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services."

    Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 20 (C.A.D.C. 2008) "[C]ontinuous commercial utilization" of the mark is required to satisfy the actual use requirement; "[s]poradic or minimal" commercial activity is not enough.

    15 USC § 1127 The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce

    (1) on goods when-

    (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

    (B) the goods are sold or transported in commerce, and

    (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

    Registration is not "Use" "At common law and by statute, trademark rights are established through use, not registration or mere adoption." [Rearden] See Sengoku Works Ltd. v. RMC Int'l Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996) ("To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services."); 15 U.S.C. § 1125(a) ("Any person who . . . uses in commerce any word, term, [or] name . . . which is likely to cause confusion . . . shall be liable in a civil action . . . ."); Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1539-40 ("Under the California Trade Name Statute, Cal. Bus. & Prof. Code §§ 14400-14416, the first entity to file articles of incorporation . . . and use the corporate name set forth in the articles or certificate, is entitled to a presumption that it has an exclusive right to use that name within California."); AcademyofMotionPictureArts & Sciencesv. NetworkSolutions, Inc., ___ F.Supp. ___, 1997 WL 810472 (C.D.Cal. Dec.22, 1997) (the mere registration of a domain name does not constitute a commercial use); LockheedMartinCorp. v. NetworkSolutions, Inc., 985 F.Supp. 949 (C.D.Cal.1997) (NSI's acceptance of a domain name for registration is not a commercial use within the meaning of the Trademark Dilution Act).

    "Under the Lanham Act, use in commerce requires "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." 15 U.S.C. § 1127. Specifically, a trademark that designates the provision of a service, as opposed to a good, is considered to be in use when "it is used or displayed in the sale or advertising of services and the services are rendered in commerce, . . . ." Id. (emphasis added). "For both goods and services, the `use in commerce' requirement includes (1) an element of actual use, and (2) an element of display." Chance v. Pac-Tel Teletrac, Inc., 242 F.3d 1151, 1159 (9th Cir. 2001) ." [Rearden] (Informational news coverage of alleged TM holder, office lease agreements, contractor agreements and e-mail services correspondence do not demonstrate use or display of trademark to potential customers to sell or advertise services.)]

    Fagnelli Plumbing Co., Inc. v. Gillece Plumbing and Heating, Inc., Civil Action No. 2:10-CV-00679-AJS (WDPA July 27, 2010) (Defendant's alleged registration of plaintiff's trademark as domain name and redirecting traffic to defendant's website constitutes 'use in commerce' for trademark purposes):

    In J.G. Wentworth, S.S.C. Ltd. Partnership v. Settlement Funding LLC, the United States District Court for the Eastern District of Pennsylvania determined that "purchase and use of a trademark-protected keyword for the purpose of triggering internet advertising constitutes the type of `use of commerce' contemplated by the Lanham Act." Civ. A. No. 06-0597, 2007 U.S. Dist. LEXIS 288 at *11 (E.D. Pa. Jan. 4, 2007). The plaintiff alleged that defendant infringed on its mark when it used plaintiff's mark as a keyword through Google's AdWords program "so that an internet search for those terms produces a Sponsored Link to defendant's website." Id. at *5. The court held that "defendant's use of plaintiff's marks to trigger internet advertisements for itself is the type of use consistent with the language in the Lanham Act which makes it a violation to use `in commerce' protected marks." Id. at *17.

    Furthermore, multiple district courts have held that a defendant uses a plaintiff's marks in commerce by operating a website. See Dluhos v. Strasberg, Civ. A. No. 00-3163, 2005 U.S. Dist. LEXIS 34383 at *22 (D.N.J. June 23, 2005) (holding defendant uses plaintiff's marks in commerce by operating a website); see also Trade Media Holdings Ltd. V. Huang & Assocs., 123 F. Supp. 2d 233, 242 (D.N.J. 2000) (holding "[u]sing a domain name to operate a website is a `use in commerce' because it affects a plaintiff's ability to offer services.''); see also Planned Parenthood, No. 97 Civ. 0629, 1997 U.S. Dist. LEXIS 3338 at *10-11 (S.D.N.Y. Mar. 24, 1997) (noting that establishment of a typical home page on the Internet satisfies Lanham Act's `in commerce' requirement).

    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]

    HQM, Ltd. v. Hatfield, 71 F. Supp. 2d 500, 507 (D. Md. 1999). "nearly every Court to have decided whether mere registration or activation of a domain name constitutes `commercial use' has rejected such arguments."

    Pure Imagination, Inc. v. Pure Imagination Studios, Inc., No. 03 C 6070, 2004 WL 2474317, at *3 (N.D. Ill. Sept. 30, 2004) ("The law is clear that the mere registration of a domain name does not constitute the use of the domain name as a trademark.")

    KERODIN v. ServiceMAGIC, INC., Dist. Court, D. Maryland 2013 (Deft Motion to Dismiss granted; Plaintiff failed to demonstrate use of mark in commerce; mere registering of domain name insufficient).

    Confusingly Similar

    "Courts analyzing the likelihood of confusion look at eight factors:

    1. the strength of the mark;
    2. the similarity of the marks;
    3. proximity of the goods/services;
    4. similarity in the marketing channels used;
    5. the type of goods/services and the degree of care likely to be exercised by purchasers;
    6. evidence of actual confusion;
    7. defendant's intent in selecting its mark; and
    8. likelihood of expansion into other markets.

    "See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341-49, 348 (9th Cir. 1979), abrogated on other grounds by Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 n.19 (9th Cir. 2003) . Specifically in the internet context, "the three most important Sleekcraft factors. . . are

    1. the similarity of the marks,
    2. the relatedness of the goods or services, and
    3. the parties' simultaneous use of the Web as a marketing channel."

    Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th Cir. 2002) . When this internet trinity suggest a likelihood of confusion, the other Sleekcraft factors must weigh strongly against a likelihood of confusion for the court to find no infringement. Id." - Lahoti 9th Cir. 2011

  • TAIKWOK YUNG v. Trump, Dist. Court, ED New York 2013 (finding trumpbeijing, trumpindia, trumpmumbai and trumpabudhabi to be confusingly similar to registered mark TRUMP)
  • Omega S.A. v. Omega Eng'g, Inc., 228 F. Supp. 2d 112, 127 (D. Conn. 2002) ("[T]he Court concludes . . . that the domain names `OMEGATIME' and `OMEGAWATCH' are confusingly similar to the marks `omega' or `O'.")
  • Mattel, Inc. v. Adventure Apparel, 2001 WL 1035140, at *2 (S.D.N.Y. Sept. 7, 2001) ("The similarities between `', `' and the BARBIE trademark are apparent on their face.")
  • Prime Publishers, Inc. v. American-Republican, Inc., 160 F. Supp. 2d 266, 280 (D. Conn. 2001) ("We do not believe the Defendant's addition of a generic or geographic term such as `ct' is sufficient to distinguish the domain name from Plaintiff's protected mark.")
  • Domain Names

    "Courts generally have held that a domain name that incorporates a trademark is confusingly similar to that mark if consumers might think that [the domain name] is used, approved, or permitted by the mark holder." DaimlerChrysler v. The Net Inc., 388 F.3d at 205-206 (internal quotation marks and citation omitted).

    "[S]light differences between domain names and registered marks, such as the addition of minor or generic words to the disputed domain names are irrelevant." DaimlerChrysler v. The Net Inc., 388 F.3d at 205-206 (accused domain name "" is confusingly similar to the trademark DODGE for autos).

    McCarthy on Trademarks § 25:78 ("The addition in the accused domain name of generic or descriptive matter to the mark will usually not prevent a finding of confusing similarity."

    "When evaluating whether a domain name is confusingly similar to a trademark, a district court disregards the top-level domain name ( e.g., `.com', `.org', `.net' etc.)." Omega S.A. v. Omega Eng'g, Inc., 228 F. Supp. 2d 112, 126 n.36 (D. Conn. 2002) (citing Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489, 497-98 (2d Cir. 2000)).

    "The fact that confusion about a website's source or sponsorship could be resolved by visiting the website is not relevant to whether the domain name itself is identical or confusingly similar to a plaintiffs mark." Coca-Cola Co. v. Purdy, 382 F.3d 774, 783 (8th Cir. 2004) .

    Initial Interest Confusion

    OBH, Inc. v. Spotlight Magazine, Inc.,  86 F.Supp.2d 176, 191 (W.D.N.Y.2000)  ("Thus, even if users will easily recognize, upon reaching defendants' web site, that it is only a parody, the use of plaintiffs' mark as the site's domain name ... creates initial interest confusion")

    Common Law

    Kos Pharms. V. Andrx Corp., 369 F.2d 700, 706, 708-09 (3d Cir. 2004) (evaluating federal and common law trademark infringement and unfair competition claims under the same standard)


    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).

    Springs v. LAPORTE COUNTY CONVENTION AND VISITORS BUREAU, Ind: Court of Appeals 2013: "Although the Lanham Act protects both registered and unregistered marks, registration is desirable because it constitutes prima facie evidence of the mark's validity. See 15 U.S.C.A. §§ 1057(b), 1115(a). Thus, federal registration of a mark "`entitles the plaintiff to a presumption that its registered trademark is not merely descriptive or generic, or, if merely descriptive, is accorded secondary meaning.'" Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 301 (7th Cir. 1998) (quoting Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d at 936). The plaintiff bears the burden of establishing that an unregistered mark is entitled to protection. Platinum Home Mortg. Corp. v. Platinum Fin. Group, Inc., 149 F.3d 722."


    Trademark Cancellation


    See also


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