PROTECTING TRADEMARKS, SERVICEMARKS, & DOMAIN NAMES
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
"Trademarks" identify GOODS.
"Service marks" identify SERVICES.
"Mark" means either a trademark or service mark.
"Trade names" are used to identify businesses, and may or may not constitute
Marks can be names, phrases, logos–or a combination of them.
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.
COMMON LAW RIGHTS
Rights to a mark are created by using the mark.
Even without registration, this creates "common law" rights to the mark.
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.
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.
Common-law rights can be strengthened by adding
a superscriptTM (for
trademarks) or a superscriptSM
(for service marks) after the mark.
STATE AND FEDERAL REGISTRATION
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.
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.
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.)
provides nationwide protection, although the application process is far more
complicated and takes far longer.
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.
Registration requires sales across state lines or to foreign countries.
"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
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
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
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.)
Registration in foreign
countries traditionally had to be done country by country (except for the
European Union); there was no single international registration.
In November of
2003 the United States finally became a functioning member of the international
"Madrid Protocol" for trademarks.
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
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
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.
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.
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.)
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).
Failure to file a
section 8 declaration will result in cancellation of the registration.
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.
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.
registrations must be renewed each 10 years.
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.
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.
CHOOSING A MARK
fanciful names make the strongest marks then, in descending order, suggestive
names and descriptive names.
marks involve a "coined" word, such as Clorox bleach or Kodak
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.
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
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.
– 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
Registration on the
principal register is better, because it:
shifts the burden
of proof to the defendant in a claim for infringement;
bars a defense of unknowing infringement;
allows the mark to become incontestable after five years; and
bars the importation of goods with infringing marks.
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.
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.
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.
A key question is
whether someone else using a similar name is in the same field.
The following should be done for a search:
key-word searches. (Google is probably the best for this currently.)
Check to see if the
domain name is taken.
California business-name list. (http://kepler.ss.ca.gov/list.html)
Conduct a search of
the federal trademark register.
Perform an Canadian
Also do a Dialog or
similar search for state and business-name registries.
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.
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.
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.
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.
Actual confusion by
customers is the best proof of the likelihood of confusion, but is not required.
However, at least
PROBABLE confusion (versus possible confusion) is required.
The confusion may
be based on similarities in the sight, sound or meaning of the marks; for
example, PHYDEAUX may conflict with FIDO.
advertising which names a competitor in a non-confusing
and truthful comparison does not constitute trademark infringement. [August
Storck K.G. v. Nabisco, Inc. ]
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.]
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.]
infringement, there may be dilution.
[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.
For example, Playboy
Magazine was able to obtain an injunction prohibiting a fiberglass manufacturing
business from using the name.
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.]
"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:
competition between the owner of the famous
mark and other parties, or
likelihood of confusion, mistake, or
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.
TRADEMARK REGISTRATION OF DOMAIN NAMES
First, it is
necessary to have a functioning web site that offers a service or product
associated with that domain name (versus just reserving
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
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
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.)
AMAZON.COM was registrable. The basic test is whether the party’s goods or
services is known by that domain name itself.
CONFLICTS BETWEEN TRADEMARKS AND DOMAIN NAMES
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.
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.
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.
ICANN has the power
to cancel or transfer a domain name.
Bad faith is shown if:
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
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
registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
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.
You can prove legitimate
interest in the domain name by showing:
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
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
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.
Consumer Protection Act. [15 U.S.C. Section 1125(d), www4.law.cornell.edu/uscode/15/1125.html.]
These actions are
brought in federal district court.
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.
A court is likely
to decide that a domain-name holder used the name in bad faith if the
Sought to divert
customers from a trademark owner's website to another either for purposes of
commercial gain or to tarnish the mark.
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.
Provides false or
misleading identification information when applying for registration.
number of names similar to existing trademarks.