Unlike patents and copyrights, the owner's exclusive rights in their trademarks have an indefinite life. So long as the owner continues to use the mark in commerce, it can prevent others from using an identical or confusingly similar mark in circumstances that are likely to confuse consumers.
Provided, trademark registrations granted by the U.S. Patent and Trademark Office7 are valid for a term of years, after which the owner must file renewal application in order to maintain the benefits and presumptions of registration.8
Registrations granted under U.S. law prior to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term.9
A renewal application must be filed within the year before the expiration date of a registration.10
Registration of Trademarks
Although, legitimate use alone creates a common-law rights in both registered and unregistered marks, successful registration of the mark with the Patent and Trademark Office provides a number of benefits to the owner, including:
Bases of Registration
There are two common bases for registering a mark:
- Use of the mark in interstate commerce or commerce between the United States and a foreign country.14
- Bona fide or good faith intention to use the mark in interstate commerce or commerce between the United States and a foreign country.15
What is "interstate commerce"?
For goods, "interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods.
With services, "interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).
What is "intent to use"?
An owner who has not used the mark, but plans to do so in the future, may file based on a good faith or bona fide intention to use the mark in commerce.
An owner does not have to use the mark before filing an application. However, the owner must begin actual use of the mark in commerce before the USPTO will register the mark.
Bases For Declining Registration
The principle determination made by the PTO's examining attorney is whether the mark proposed for registration is so similar to an existing registered mark that it is likely to cause confusion in the marketplace as to the source of the goods or services.
The principal factors considered in determining whether there would be a likelihood of confusion are:
- the similarity of the marks; and
- the commercial relationship between the goods and/or services
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.
In addition, Section 2 of the Trademark Act (15 U.S.C. §1052) contains several of the most common (though not exclusive) grounds for refusing registration:
- The proposed mark consists of or comprises immoral, deceptive, or scandalous matter;16
- The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;17
- The proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;18
- The proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;19
- The proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;20
- The proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;21
- The proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;22
- The proposed mark is primarily merely a surname;23 and
- The matter, as a whole, is functional.24
Trademark rights may be used by the owner to prevent others from using a confusingly similar mark. Trademark law supplies three basic actions to enforce this right:
In addition the Internet Corporation for Assigned Names and Numbers (ICANN) has created an uniform dispute resolution policy specifically designed to address conflicting uses of internet domain names.
Infringement
A mark infringes an existing trademark when it is likely to create confusion in the market as to the source of the identified goods or services.
To show infringement, a trademark owner must prove six elements. An owner must show that the defendant:
- without the consent of the owner;
- used in commerce;
- any reproduction or colorable imitation;
- of the owner's registered mark;
- in connection with the sale, distribution, or advertising of any goods or services; and
- that such use is likely to cause confusion, mistake, or deception.28
The federal courts are empowered to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent or remedy a violation.29
Such injunctions may include provisions directing the defendant to file a report in writing under oath setting forth in detail the manner and form in which the defendant has complied with the injunction.30
In addition to equitable relief, a successful plaintiff in a civil action is entitled to recover:
- Defendant's profits;
- Any damages sustained by the plaintiff; and
- The costs of the action.31
In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount.32
In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed.33
The court in exceptional cases may award reasonable attorney fees to the prevailing party.34
Dilution
Since 1996, owners of "famous" marks have been protected by the Federal Trademark Dilution Act (FTDA) from the commercial use of identical or similar marks without regard to the likelihood of confusion:
The owner of a famous mark shall be entitled ... to an injunction against another person's commercial use ... of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark35
A mark or trade name "dilutes" a famous mark if it diminishes the capacity of a famous mark to uniquely identify and distinguish goods or services.36
In an action brought under the FTDA, the owner of the famous mark is entitled only to injunctive relief unless the person against whom the injunction is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark.37
If such willful intent is proven, the owner of the famous mark shall be entitled to remedies including, but not limited to, actual damages, disgorgement of profits and the destruction of the infringing articles.38
There has been limited judicial commentary as to what constitutes a "famous" mark.39 However, the statute provides a non-exhaustive list of factors to be considered:
- the degree of inherent or acquired distinctiveness of the mark;40
- The duration and extent of use of the mark in connection with the goods or services with which the mark is used;41
- The duration and extent of advertising and publicity of the mark;42
- The geographical extent of the trading area in which the mark is used;43
- The channels of trade for the goods or services with which the mark is used;44
- 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;45
- The nature and extent of use of the same or similar marks by third parties;46 and
- Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.47
Cybersquatting
Passed in 1998, to address perceived shortcomings in existing trademark law, the Anti-cybersquatting Consumer Protection Act prohibits:
- registering, trafficking in or using a domain name;48
- that is (in the case of a registered mark) identical confusingly similar to the existing mark;49 or
- that is (in the case of a famous mark) dilutive of the existing mark;50
- with a bad faith intent to profit from that mark;51
The ACPA provides a non-exclusive list of factors to be considered by the court in determining the existence of "bad faith" on the part of a defendant:
- The trademark or other intellectual property rights of the person, if any, in the domain name;52
- the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;53
- The person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;54
- The person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;55
- The person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;56
- The person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;57
- The person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;58
- The person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties;59 and
- The extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of the Federal Trademark Dilution Act.60
Bad faith intent shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.61
In any civil action involving the registration, trafficking, or use of a domain name, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.62
In the case of domain name registered after the effective date of the ACPA, a successful plaintiff can also claim the defendant's profits, any damages sustained by the plaintiff, as well as the costs of the action.63 The court in
exceptional cases may award reasonable attorney fees to the
prevailing party.64
The ACPA provides two advantages over a claim of simple infringement:
- Owners of distinctive, but non-famous, marks need not prove that use of the domain name is likely to result in actual consumer confusion, simply that the domain name is confusingly similar to the owner's mark;65 and
- Claimant's do not need to show a use in commerce.66
These factors are an especial advantage in prosecuting claims against domain name warehousers who clearly seek to profit from wholesale registrations of third-party marks but make no public or commercial use of the names. Indeed, insofar as warehousers avoided actual use in commerce, it's unclear that this practice was in fact contrary to law prior to passage of the ACPA.67
However, because of the ACPA's steep specific intent requirements, many, particularly subjectively innocent instances of conflicting domain name uses may be more efficiently addressed as matter of simple infringment or through the the alternative remedy discussed below.
Indeed, because the ACPA is not intended as an exclusive remedy,68 it can always be joined with alternative claims of infringement, dilution and/or false designation in an action by a registrant.69
ICANN Uniform Domain Name Dispute Resolution Policy
The Uniform Domain Name Dispute Resolution Policy, an alternative remedy specifically crafted to address domain name conflicts was established by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999.
Formed in October 1998, ICANN is a non-profit, private-sector corporation that has been recognized by the U.S. and other governments as the global consensus entity to coordinate the technical management of the Internet's domain name system. Among its responsibilities, ICANN is charged with accreditation of registrars in the .aero, .biz, .com, .coop, .info, .museum, .name, .net, and .org top-level domains (TLDs).
In this last capacity, ICANN has promulgated its Uniform Domain Name Dispute Resolution Policy (commonly known as the UDRP) which is mandatory for its accredited registrars as well as registrants of secondary domain names within the subject TLDs.
Under the UDRP, trademark owner can initiate a domain name dispute by filing a complaint with an ICANN-approved dispute resolution provider. There are presently four active providers: the World Intellectual Property Organization (WIPO); the National Arbitration Forum (NAF); CPR Institute for Dispute Resolution (CPR); and the Asian Domain Name Dispute Resolution Centre (ADNDRC).
The complaint shall be submitted in both hard copy and in electronic form and shall, among other requirements, describe the grounds on which the complaint is made, and in particular:
- The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- Why the domain-name holder should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint; and
- Why the domain name should be considered as having been registered and being used in bad faith
The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
Within 20 days of the filing of the complaint, the respondent must file a response. The Response must reply specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name.
Within five days of receiving the response, a provider must appoint a panelist or panelists to hear the dispute. If either a complainant or a respondent chooses to utilize a three-person panel, each must submit a list of three panelists. The provider will select one panelist from each list, and the third panelist from its own list.
The relevant factors the ICANN panel will consider are:
- Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- Whether the domain-name holder has any rights or legitimate interests in the domain name that is the subject of the complaint; and
- Whether the domain name has been registered and used in bad faith
Note that to prevail on a UDRP claim the trademark owner must prove both that the registrant has no legitimate rights in the domain name and that the registrant exhibited bad faith in the registration and use of the name.
The UDRP provides an extensive, but non-exclusive, list of factors to be considered by the panel in determining (1) the existence of the respondent's legitimate rights, if any, in use of the domain name; and (2) the existence of respondent's bad faith, if any, in the registration and use of the domain name:
- Rights and Legitimate Interests of Respondent: Any of the following circumstances, if proved, are considered to demonstrate the Respondent's rights or legitimate interests to the domain name:
- Before any notice to the respondent of the dispute, respondent's 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
- Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- Respondent is 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.
- Bad Faith Registration and Use: Any of the following circumstances, if proved, are considered evidence of the registration and use of a domain name in bad faith. Circumstances indicating that:
- The respondent registered or has 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, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
- The respondent has 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 Respondent has engaged in a pattern of such conduct; or
- The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- By using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's web site or location or of a product or service on the respondent's web site or location.
The remedies afforded by the UDRP are limited to the cancellation or transfer of the disputed domain name(s) to the complainant/trademark owner. Significantly, the UDRP does not provide for damages or additional forms of injunctive relief.
