Main Index : Writings of Marie A. D'Amico, Esq.

Trademarks Turned Topsy-Turvy By the Internet

Trademarks are a relatively staid subject in the law; the traditional trademark treatise encompasses merely a few volumes at your average law library. In the past two years, however, the Internet has turned trademarks topsy-turvy. Network Solutions, Inc. (NSI) , the Internet domain name registrar, the United States Patent and Trademark Office (PTO) , and some court cases are all attempting to adjust to a world where abc.com can be worth big bucks. They’re also attempting to adjudicate the tsunami of domain disputes which just now are broaching our beaches. Let’s look at what they have done and what you can do to protect your real world trademarks and digital world domains.

Determining Your Domain Name

If your domain name isn’t identical to an existing moniker, InterNIC will register it on a first come, first served basis. You fill out a form, pay $100, and you’ve got yourself a domain name. Sound simple? Up until about a year ago, it was. Then, the Internet became a Wall Street wunderkind, and InterNIC became inundated with more than 600 applications daily for domains. Applicants sometimes selected, innocently or intentionally, domains similar to real world trademarks or service marks (collectively, marks) owned by others. InterNIC was overwhelmed with complaints concerning conflicting domains. InterNIC, a private cooperative set up by NSI, the National Science Foundation, and AT&T, had neither the expertise nor the authority to act as arbiter and adjudicate these disputes.

On September 9th, NSI, InterNIC’s registrar, distributed its most recent domain dispute policy statement. A holder of a mark may present evidence to NSI (a federal or foreign trademark registration, state mark registrations are insufficient) that a domain name already assigned to an Internet user is identical to the holder’s mark. If the holder used his mark before the Internet user used his domain, NSI will require the Internet user to provide evidence he owns a federal or foreign trademark identical to his domain name. If he doesn’t, he gets a new name and the old domain name is placed on "hold" until an arbiter or court decides the ownership status. Various companies have sued NSI over its domain dispute policies.

Tips to Stay Outta Trouble

Considering NSI’s announcements and actions, what can you do to avoid arbitrating about abc.com? Until some federal agency assumes NSI’s duties or officially augments NSI’s authority, only you can prevent domain disputes. The overarching theme of prevention is to treat domains as you would real world marks. The specifics are simple:

Step 1: Before you decide upon a domain, ensure no one employs an identical or substantially similar real world mark. Trademark search services provide comprehensive reports concerning similar federal, state, or cybermarks for about $340. If that seems steep, consider it’s about one or two hours time for a trademark attorney. Enough to get him to the courthouse on time, but not to go in.

Step 2: Remember, in the real world, the PTO may authorize multiple identical marks if they cover classes of dissimilar goods or services. In the cyberworld, however, there’s only one abc.com. If someone else already uses an identical or substantially similar mark, and especially if they’re a corporation with clout, choose a different domain. Webster’s has a plethora of words, take your pick.

Step 3: Don’t adore your domain name. If you do, you’ll find it difficult to determine a new name if your search report reveals your chosen name conflicts with too many existing marks. Remain flexible or you’ll find yourself fighting in court. Benson & Hedges was wrong; often, it’s better to switch than to fight.

Step 4: Register your domain name for federal mark protection in the PTO; this gives you some ammunition for a fight with InterNIC. You can file the form yourself or consult with trademark counsel. Registration costs $245 per class. Your domain’s content, or the type of information at your website, determines your class. The PTO issued a domain name registration policy statement regarding this new breed of mark. The PTO says that many unanswered questions about cybermarks remain and the answers may affect how the PTO registers domain names. The PTO seems to suggest filing your domain registration based upon the fact that you intend to use the domain. This "intent to use" registration grants you a two to three leeway to actually prove to the PTO you used it. Get your domain registrations filed with the PTO and hopefully, the PTO will get their act together before your proof is due. Stay tuned.

Step 5: Protect your real-world marks by registering them as domain names with InterNIC. The Internet is the Next Big Thing. Get into the 90s before they’re over and register your marks. If you don’t, someone else will, and you’ll be stuck with some dopey domain name, or worse, spending your stash to snatch your domain back from whomever wisely registered it.

Put Up Your Dukes

Suppose you discover a domain name which is identical or substantially similar to one of your real-world marks. Engage in fifteen minutes of self-flagellation for failing to follow Step 5 above. Then, complain to NSI and hopefully, they take it away from the dastardly domain-grabber (if he has no federal or foreign mark registration) who owns it. NSI then dumps the domain in their limbo "hold" status and you must convince a federal court or arbiter to assign it to you. Courts consider about five or eight factors in allegations of mark infringement. On a case-by-case basis, they balance the factors and conclude whether the concurrent use of the marks will confuse consumers.

The Price of Fame

Most of the current cases of domain-to-mark infringement shouldn’t be classified under traditional trademark infringement analysis. Instead, they should be categorized as famous mark cases. Under the new Federal Trademark Dilution Act , signed by Clinton on January 16th, 1996, if you own a famous mark, a court can issue an injunction against another’s use of your mark if it dilutes the distinctive quality of your mark. Senator Leahy (D-VT) says the statute should "help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others."

On January 25th, 1996, toymaker Hasbro, Inc. sued Internet Entertainment Group, Ltd. (IEG) for the latter’s use of candyland.com as a site for sexually explicit materials. Hasbro established CandyLand’s fame with evidence Hasbro sold 23 million CandyLand copies worldwide and a whopping 94% of all mother are aware of CandyLand. The judge ordered IEG to delete all current candyland.com content and, while permitting them to provide a referral to their new adult site, he banned a hyperlink to it. Take the simple "consumer confusion" smell test on this one: when you think candyland, do you think adult content or child’s game? If you were ever a five year old, the answer is the latter.

Adam Curry’s famed fight with the MTV Networks (MTVN) over mtv.com occurred prior to the passage of the Federal Trademark Dilution Act. An analysis under the act, however, would yield a judgment for MTVN. If you hear mtv and don’t think of the eponymous cable channel, you’re not living on the third rock from the sun. While a careful critique of the case reveals unresolved issues, consumers would be confused if mtv.com was owned by an entity other than MTVN. The parties settled and MTVN owns mtv.com.

Zero Micro Software registered micros0ft.com. A communications company registered dianetics.com. A Colorado-based company registered another Hasbro name, clue.com. A Newsweek writer registered mcdonalds.com. A New York company registered avon.com. It’s easy to see that these marks are so renowned that consumer confusion would ensue should someone other than the mark owner use the domain name.

The Little Guy v. The Little Guy

No court has considered the quandary the Internet imposes on the little guy v. the little guy. In traditional trademark analysis, the court considers, for example, the current marketing channels of the competing goods or services. In the real world, if a company owned overdrive for trucking magazines and another owned overdrive for video consulting services, these marks could co-exist because neither mark is famous and consumer confusion is unlikely. A court would not likely find infringement. In the digital world, however, there’s only one marketing channel - the Internet - and there’s only one overdrive.com. The court’s customary trademark analysis, assuming the world can be divided into discrete divisions, fails.

What’s Fair?

It seems equitable that, barring consumer confusion, the first to file for a domain name, who intends to and does employ it personally or commercially within two years, owns it. In my overdrive example, the video consultant, a sole proprietor, relinquished overdrive.com rather than fight the small, albeit feisty trucking magazine. He and I await a court’s careful consideration of the intricate intersection between the Internet and real-world marks and an analysis which places domain-to-mark infringement firmly on terra firma.

Sidebar: Helpful Resources

Articles:

Thorough Discussion of Domain Names and Trademarks

Working Group on Intellectual Property Rights Statement About Domains and Trademarks

Cases:

Description of Many CyberMark Cases

InterNIC Registration Services:

http://rs.internic.net or InterNIC Registration Services, PO Box 1656, Herndon, VA 22070, (703) 742-4777.

Send domain name requests to hostmaster@internic.net. Registration for two years is $100; additional annual maintenance fee of $50 per year is required.

InterNIC’s Current Policy Statement on Domain Names

Modifications to InterNIC’s Policy Statement

Statutes:

Trademark Act

Federal Trademark Dilution Act :

Trademark Search Services:

Thomson & Thomson or (800) 692-8833.

U.S. Patent and Trademark Office (PTO)

Statement Regarding Registration of Domain Names

Detailed Trademark Manual, write to:

Trademark Manual of Examining Procedure
Superintendent of Documents
U.S. Government Printing Office, PO Box 371954
Pittsburgh, PA 15250-7954
(202) 512-1800

Worth it’s weight in Netscape stock, but only $19 (payable to Superintendent of Documents).

* This statement was recently removed from the PTO’s official website.

Questions? Send me email .