PROTECTING TRADEMARKS & DOMAIN NAMES BY REGISTRATION, ETC.

An owner often develops some protection for trade names, logos, domain names, slogans, etc. just by using them. Registering the trademarks and service marks, though, increases that protection -- and also provides more notice to others that the marks are owned by someone. Domain names can also develop trademark protection if they are used properly.

  1. DEFINITIONS

    1. "Trademarks" identify GOODS.

    2. "Service marks" identify SERVICES.

    3. "Mark" means either a trademark or service mark.

    4. "Trade names" are used to identify businesses, and may or may not constitute marks.

    5. Marks can be names, phrases, logos–or a combination of them.

    6. The more fanciful a name is, the easier it is to register and protect; the more descriptive a name is, the harder it is to register and protect.

  2. COMMON LAW RIGHTS

    1. Rights to a mark are created by using the mark. Even without registration, this creates "common law" rights to the mark.

    2. The first user retains the right to use the mark in that field within those geographic areas even if someone else obtains federal registration for the mark.

      1. If that occurs, though, the first user generally will not be able to expand use of the mark beyond that user’s original geographic areas where goods or services were provided.

    3. Common-law rights can be strengthened by adding a superscriptTM (for trademarks) or a superscriptSM (for service marks) after the mark.

  3. STATE AND FEDERAL REGISTRATION

    1. Registration (at the state or federal level) gives the owner exclusive use of the mark for that field throughout that jurisdiction against all LATER users of the mark.

    2. State registration is relatively simple and quick, but it gives protection only in that state – though other parties are likely to be reluctant to use a mark nationally if it has already been registered in California.

      1. Non-attorneys can easily handle California applications, which are available at http://www.ss.ca.gov/business/ts/ts_formsfees.htm. (Use the "Registration of Trademark/Service Mark" form.)

    3. Federal Registration

      1. Federal Registration provides nationwide protection, although the application process is far more complicated and takes far longer.

        1. One problem: the United States Patent and Trademark Office ("USPTO") now has an unofficial policy of objecting to every application. To continue the registration process, one has to respond with legal arguments.

      2. Federal Registration requires sales across state lines or to foreign countries.

      3. One can "reserve" a federal mark prior to actual use by filing an "intent to use" application stating that the mark will be used within the next six months.

        1. This period can be extended in six-month blocks for up to approximately two years total so long as progress is being made toward getting the goods or services sold outside the state.

        2. Once the mark is in use, the registration is retroactive back to the initial reservation date (rather than the date the mark was first used out of state, which is the usual effective date).

      4. With a federally registered mark, an ® must be used after the mark to get the full legal benefits of registration. This symbol can only be used for marks registered with the federal government. (Registration on a state register is not sufficient.)

  4. INTERNATIONAL REGISTRATION

    1. Registration in foreign countries traditionally had to be done country by country (except for the European Union); there was no single international registration.

    2. In November of 2003 the United States finally became a functioning member of the international "Madrid Protocol" for trademarks.

      1. The Madrid Protocol vastly simplifies international trademark registration because a single application covering multiple countries can be filed in the trademark owner’s home country. Approximately 71 countries are participants in the Madrid Protocol.

      2. Under the Madrid Protocol, the applicant pays a basic fee of approximately $450 to $650, plus and a fee for each designated country of only about $50. Some countries may also charge additional fees, but these fees cannot be higher than the country’s internal fees.

      3. In contrast to the current system, applicants using the Madrid Protocol do not need to retain a local trademark attorney for each country where they seek registration.

      4. Once international registration is granted under the Madrid Protocol, the applicant only needs to submit a single request for renewal, as opposed to the current system of making individual renewal requests for each country.

    3. Still, for registration covering multiple countries in Europe, registering with the European Union is still usually the way to go. The application may be submitted in English, and the application covers all EU countries. (With the Madrid protocol, a separate filing fee for each European country where registration is wanted is required – and each country can reject the registration.)

  5. RENEWAL

    1. With U.S. federal registrations, you must file a Section 8 declaration of use on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth (6th) anniversary date).

      1. Failure to file a section 8 declaration will result in cancellation of the registration.

    2. U.S. federal registrations issued or renewed on or after November 16, 1989, whether on the Principal Register or on the Supplemental Register, remain in force for ten years from their date of issue or the date of renewal, and may be further renewed for periods of ten years.

      1. An application for renewal must be filed within one year before the expiration date of the registration, or within the six-month grace period after the expiration date of the registration. If no renewal application is filed within this period, the registration will expire.

    3. European Union registrations must be renewed each 10 years.

    4. With the Madrid Protocol registrations also must be renewed after 10 years. The renewal should be made before the end of the 10-year period, although there is a six-month grace period if higher fees are paid.

    5. With California, the registration is active for ten years. At the end of ten years, the mark may be renewed for another ten years. The mark may be renewed every ten years as long as the mark is in continual use. The application for renewal must be made during the last six months of the 10-year period.

  6. CHOOSING A MARK

    1. Arbitrary and fanciful names make the strongest marks then, in descending order, suggestive names and descriptive names.

    2. Fanciful marks involve a "coined" word, such as Clorox bleach or Kodak film.

    3. Arbitrary marks use words, symbols, pictures etc. that are in common use but which do not suggest or describe any characteristic of the product; for example, Black & White scotch or Tea Rose flour.

    4. Suggestive marks are those that require a bit of thought to reach a conclusion as to the nature of the goods, for example Chicken Of The Sea or Coppertone sun-tan oil.

    5. Descriptive marks describe the goods’ or services’ intended purpose, function, use, size, users, desirable characteristics, or end-effect upon the user. Marks that are laudatory are regarded as being descriptive, for example, Gold Medal flour or Blue Ribbon beer.

      1. Descriptive terms – for example SHREDDED WHEAT – can be registered on the principal federal register ONLY if the owner can show that buyers associate that mark with the particular manufacturer of the product (giving it "secondary meaning"). Generally this is proved by surveys. Without such proof, a descriptive mark can be registered only on the supplemental register.

      2. Registration on the principal register is better, because it:

        1. shifts the burden of proof to the defendant in a claim for infringement;

        2. bars a defense of unknowing infringement;

        3. allows the mark to become incontestable after five years; and

        4. bars the importation of goods with infringing marks.

      3. However, after a mark has been on the federal supplemental register for five years, an application for registration on the principal register may be made – and will be granted.

    6. Generic terms cannot be registered – or someone would be able to register the word "car". In addition, deceptive names (for example, false descriptions of origin), national insignia, and the name or image of a living person who does not consent cannot be registered.

  7. NAME SEARCHES

    1. It’s better to perform a name search in advance of registration rather than spend the money on a registration application – and spend time and money building up the brand – then receive a "cease and desist" letter from a senior user.

    2. A key question is whether someone else using a similar name is in the same field.

    3. The following should be done for a search:

      1. Perform Internet key-word searches. (Google is probably the best for this currently.)

      2. Check to see if the domain name is taken.

        http://www.netsol.com/cgi-bin/whois/whois

      3. Check the California business-name list. (http://kepler.ss.ca.gov/list.html)

      4. Conduct a search of the federal trademark register.

        (http://tess2.uspto.gov/bin/gate.exe?f=tess&state=3pon1j.1.1)

      5. Perform an Canadian search

        (http://strategis.ic.gc.ca/cgi-bin/sc_consu/trade-marks/search_e.pl)

      6. Also do a Dialog or similar search for state and business-name registries.

        1. On this one there is currently no free search. You start setting up a Dialog account by completing the form at http://www.dialog.com/contacts/forms/member.shtml. The service you want is probably DialogSelect.

  8. INFRINGEMENT

    1. A newer mark infringes on an earlier one if it causes "likelihood of confusion". Although there are many intricacies, the basic test is whether it is probable that an appreciable number of reasonable customers or potential customers will be confused, mistaken or deceived regarding the two marks due to similarities in sight, sound or meaning.

    2. In determining likelihood of confusion, the court will examine (among other factors) the similarity of the marks, the similarity of the goods, the marketing channels used, the strength of the plaintiff's mark, and the defendant's intent in adopting the mark.

    3. There is no likelihood of confusion if the two marks are used in completely different commercial fields. For example, THUNDERBOLT used as a mark for software does not conflict with use of THUNDERBOLT for aircraft.

      1. Actual confusion by customers is the best proof of the likelihood of confusion, but is not required.

      2. However, at least PROBABLE confusion (versus possible confusion) is required.

      3. The confusion may be based on similarities in the sight, sound or meaning of the marks; for example, PHYDEAUX may conflict with FIDO.

    4. Other exceptions.

      1. Comparative advertising which names a competitor in a non-confusing and truthful comparison does not constitute trademark infringement. [August Storck K.G. v. Nabisco, Inc. ]

      2. Using someone’s trademark as part of complaining about their goods or services is not infringement. [Bally Total Fitness Holding Corporation v. Faber, the famous "Bally Sucks" case.]

      3. Using another’s mark in a truthfully descriptive way is permitted. There was no liability for a former Playboy "Playmate of the Year" who built a Web site that used the plaintiff’s "Playmate of the Year", "Playmate of the Month" and "Playboy" trademarks, both on the site itself and as metatags. [Playboy Enterprises, Inc. v. Terri Welles.]

  9. DILUTION

    1. Even without infringement, there may be dilution.

    2. California law [Business & Professions Code Section 14330] provides for injunctive relief against dilution of the distinctive quality of a registered mark or a common-law mark despite the absence of competition between the parties or the absence of confusion as to the source of goods or services.

      1. For example, Playboy Magazine was able to obtain an injunction prohibiting a fiberglass manufacturing business from using the name.

    3. In addition, the Federal Trademark Dilution Act protects "famous" marks from "dilution". [15 U.S.C. Section 1125(c), www4.law.cornell.edu/uscode/15/1125.html.]

      1. It defines "dilution" as "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."

      2. In a March 4, 2003 case, involving Victoria’s Secret [Moseley v. V Secret Catalogue, Inc.] the Supreme Court held that a plaintiff must show actual dilution, rather than merely a likelihood of dilution in order to prevail.

  10. TRADEMARK REGISTRATION OF DOMAIN NAMES

    1. First, it is necessary to have a functioning web site that offers a service or product associated with that domain name (versus just reserving a URL).

    2. In addition, a domain name is registrable as a mark only if it is used in a manner that will be perceived by potential purchasers as branding the goods or services – and not as merely as the path used to access a web site.

      1. The USPTO refused to register an attorney’s proposed mark WWW.EILBERG.COM (Eilberg was the attorney's last name). It held that the asserted mark merely indicated the location where the applicant’s Web site appeared and did not separately identify the applicant's legal services. [In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).]

        1. In other words, the attorney was not using WWW.EILBERG.COM as a service mark because he wasn’t calling his practice EILBERG.COM or simply EILBERG. (Of course, www.LawOfficesofWilliamEilberg.com might have been OK, assuming that was the name of his law practice.)

      2. In contrast, AMAZON.COM was registrable. The basic test is whether the party’s goods or services is known by that domain name itself.

  11. CONFLICTS BETWEEN TRADEMARKS AND DOMAIN NAMES

    1. In general, whoever began using the name first (usually the trademark owner) wins in disputes involving federally registered trademarks and domain names (assuming the domain is being used in such a way that trademark protection applies). A traditional lawsuit for infringement can be brought, though there are some other alternatives as well.

    2. The Uniform Domain Name Dispute Resolution Policy (UDRP) can be found at http://www.icann.org/dndr/udrp/policy.htm. (WIPO is a service provider for this; see http://arbiter.wipo.int/center/publications/guide-en-web.pdf.) The rules for the UDRP, which contain information on how to file a complaint, can be found at http://www.icann.org/dndr/udrp/uniform-rules.htm.

      1. Disputes over domain names (as in the case of alleged trademark infringement) are handled by mandatory ICANN (Internet Corporation for Assigned Names and Numbers) arbitration – unless someone files a lawsuit.

      2. ICANN has the power to cancel or transfer a domain name.

      3. Bad faith is shown if:

        1. You have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant; or

        2. You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

        3. You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

        4. You have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

      4. You can prove legitimate interest in the domain name by showing:

        1. Before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

        2. You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

        3. You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

    3. The Anti-cybersquatting Consumer Protection Act. [15 U.S.C. Section 1125(d), www4.law.cornell.edu/uscode/15/1125.html.]

      1. These actions are brought in federal district court.

      2. The mark owner must establish both that a) that the squatter has a domain name that is identical to or confusingly similar to the owner’s distinctive or famous trademark or dilutes the famous trademark and b) bad faith.

      3. A court is likely to decide that a domain-name holder used the name in bad faith if the domain-name holder:

        1. Sought to divert customers from a trademark owner's website to another either for purposes of commercial gain or to tarnish the mark.

        2. Attempts to sell the domain name for financial gain to either the trademark owner or someone else without having used it or without intending to use it.

        3. Provides false or misleading identification information when applying for registration.

        4. Registers a number of names similar to existing trademarks.