A service of Stephen W. Workman P.C

Trademarks and Domain Names

"What's in a name?" Unfortunately, Shakespeare's famous line, and his poetically simple response, were penned well before the laws of trademark and the InterNic domain name registration regime came into vogue. In these times, the answer to this question - from a legal point of view - is thoroughly complex.

A person engaged in commerce may have several "names" associated with his business. He will have a company name (a "trade name") and, if his business creates products or provides services, those goods and/or services may also have identifying names ("trademarks" and "servicemarks", respectively). For example, "Chevy Corvette" is a combination of a trade name ("Chevy") and a trademark "(Corvette"), which pertains to a particular product made by Cheverolet. To take another example, the name of a web site may serve to designate the source of a particular online service, and as such may qualify as a "servicemark."

To understand what rights you may, or may not, have in a web site or domain name, you first need a basic understanding of the Lanham Act (this is a federal law, located at 15 U.S.C. Sections 1051-1127).

The Lanham Act

The Lanham Act sets forth the laws pertaining to trademarks and servicemarks and also serves to codify at the federal level the laws of unfair competition, which are a species of business torts. (By the way, since the only difference between a "trademark" and "servicemark" is that the former relates to "goods" and the latter relates to "services" - - and because the protections afforded by each are identical - - when I will use the term "trademark," I am including "servicemarks").

The purpose of the Lanham Act, like any trademark statute (the States also have them), is two-fold. One is to protect the public so that it may be confident that, when buying a particular good or service bearing a trademark which it favorably knows, it will get the good or service it has come to associate with that mark. Secondly, the law protects the investments of time, money and marketing made by the owner of a trademarked good or service from misappropriation by pirates and cheats. As stated by the Supreme Court, "the function of trademarks is the law's recognition of the psychological function of symbols." They make it possible to distinguish between the sources of goods and services.

Registered Trademarks:

A person or a company may apply to the Patent and Trademark Office of the United States (the "PTO") for registration of a name, word(s) or a symbol, as a trademark if that name, word or symbol (the "mark") has been actually used in commerce (or there is an intent to use such mark in commerce within the next six months) and the mark signifies to consumers of the particular classification goods (or services) in question the applicant as the source of those goods (or services). To be registered on the Principal Register, the mark cannot be deceptive or misleading, and it cannot be "scandalous" in nature. With regard to this latter condition - the Lanham Act authorizes the PTO to refuse registration of marks which are "scandalous," i.e., profane or libelous or otherwise not appropriate for public consumption. Of course, if the PTO refuses registration of a mark because it considers the mark "scandalous," there are administrative procedures to appeal that determination (there is also the "Supplemental Register," for marks not suitable for the Principal Register yet do in fact serve to designate the source of goods or services).

Applying for a trademark involves filling out the proper form and mailing it, along with the necessary supporting documentation and fee, to the PTO. However, I would caution against attempting to file an application for a trademark without first conducting a "trademark search."

Trademark Searches:

The federal government isn't the only body issuing trademarks. Each State also issues state trademarks. The requirements are pretty much the same as for federal trademarks, except States require actual use, "intent to use" is not recognized, and they obviously only cover the geographic territory of the state in question. In other words, if I have a California trademark in "Sensual Woman Lingerie," I cannot look exclusively to my California trademark to prevent someone else from opening a "Sensual Woman Lingerie" store in New York. Knowing that there is a "Sensual Woman Lingerie" trademark at the state level would also impact a person's decision to attempt registration of a federal trademark in the same name. The purpose of a trademark search is to find out if anyone else has a trademark, whether identical or similar to the one I want to register, at either the state or federal level.

But why should I care if someone has a trademark "similar" to the one I want to register? What if I want to register "Sexy Lady Lingerie" or "Sensual Woman Cosmetics"? Well, that leads us to the next topic of discussion: the protections afforded to a trademark owner.

Trademark Protections:

Unlike copyright law, the owner of a registered trademark does not hold a monopoly over the word or words which comprise the mark. A trademark does not confer a right to prohibit use of the word or words by others - - it only gives the owner the right to prohibit use by another if that use will result in injury to the good will of his business. On the other hand, the owner can prohibit the use of a word or word by others, even if such word or words are not identical to his trademark, if consumer confusion will result. Owners of federally registered trademarks typically enlist the provisions of Lanham Act Section 43(a) and/or 43(c) to protect their marks. Section 43(a) pertains to so-called trademark "infringement." Section 43(c) is the recently enacted provision against trademark "dilution" (also known as "tarnishment").

Infringement: Section 43(a) says, in essence, that if another person uses in commerce a mark which is likely to cause consumer confusion as to the source or origin of the product or service, the trademark owner is entitled to stop the offending use. Note that the test here is "likelihood" of confusion, no evidence of actual confusion is necessary for the trademark owner to prevail. And because we're talking about "confusion" here, use of a similar name, not just a name identical to the trademark, can trigger liability. So what is the test of "similarity"? Well, it's a combined objective and subjective consumer test, and, yes, polling and survey data is employed. The civil penalties for trademark infringement include injunctive relief, recovery of actual damages and, potentially, treble or punitive damages, and attorneys' fees.

Dilution: Section 43(c) is a recent addition to the Lanham Act (many States have long had "anti-dilution" statutes, but not the federal government, until this). This provision of the Lanham Act says that the owner of a "famous mark" is entitled to legal relief in the event his mark, or a deceptively similar mark, is used by another person in such a fashion as to degrade, blur or tarnish the integrity (i.e., "goodwill") of the owner of that mark. Essentially, "dilution" theory picks up where the "likelihood of consumer confusion" test leaves off…it grants protection to strong, famous marks from being associated with goods or services which would have the effect of cheapening, lessening or impugning their commercial reputation. For example, if you were to register "coca-cola.org" and link it to a porn site, CocaCola would sue the daylights out of you under Section 43(c), because you are associating their mark with content previously and, in their view, preferably, unassociated with that company. (In the world of the adult webmaster, this portion of the Lanham Act is deserving of great attention, due to the content they are dealing with.) So what if I have "Cokke.com" linked to a sportwear site, is that a problem? It could be, if a court were to decide that your typographic error ("Cokke" vs. "Coke") is sufficiently similar to that famous mark such that consumers could either be misled into an association or, due to typographic error, whether a sufficient number of consumers, having innocent expectations, mistakenly found themselves viewing porn and perceived, albeit inaccurately, an affiliation with CocaCola. The civil remedies available to a successful plaintiff in a dilution action are the same as those provided for trademark infringement, described above.

Anti-Cybersquatting Act: Congress recently amended the Lanham Act to include a new provision, Section 43(d), concerning the registration of a domain name which incorporates another's trademark. I address this important new law in a separate article, also found on this web site.

Unfair Competition

The Lanham Act also provides protection to owners of business, product and service names which, while not registered as "trademarks", are used in commerce as source designations. This portion of the Act serves to protect the owners of such unregistered names from "misappropriation," "palming off" or "passing off." Basically, these occur when a person seeks to profit from the hard work of another by deceiving the public into thinking that his goods or services originate with the owner of the unregistered name. This area of the law is a species of business tort, wrongs asserted against economic interests founded in public confusion or deception. The Lanham Act's scope of protections and remedies in this area are concurrent, although not cumulative, with that found under the unfair competition laws found in State statutes and State common law.

Domain Names

As you are know, domain name space is construed as a hierarchy, divided into top-level and second-level domains. A domain name is an alphanumeric address serving as your uniform source locator. At present, Network Solutions, Inc. ("NSI") still enjoys a monopoly over the issuance of top-level .com, .net, .org and .edu domains. This will change in 1999 or 2000 as the Department of Commerce transfers registration authority to ICANN who, in turn, will inject competition into the industry through "privatization."

Obtaining a domain name registration gets you an address. It does not, per se, constitute a trademark. However, because your domain - - for the very fact that it is an address - - operates to identify a source of goods and/or services, it has the potential to serve as a trademark.

Can a Domain (or Site) Name be Registered as a Trademark? Absolutely, but your use of the domain name (or website name) must fall within the particular guidelines set forth by the Trademark Office on this subject. Most of you have invested significant time, money and resources in developing websites, and I recommend that you investigate the possibility of registering your site and/or domain name as a trademark for at least two good reasons: first, you will have solid leverage in the event your domain registration falls out of NSI's system (this is not an infrequent occurrence, as you know) and someone else grabs it. Second, it will afford you significant legal rights should another webmaster develop a site, or register a domain, which is similar sounding to your own and diverts traffic away from you.

What Do I Do if I Receive a "Cease and Desist" Letter? Some clever (or, depending on your point of view, "devious") webmasters enjoy registering domain names which are identical, or quite similar, to corporate names and logos. . . then they wonder why they receive cease and desist letters. If you receive such a letter, don't panic, and certainly don't agree to relinquish the domain without talking to an attorney who understands the issues. The cease and desist letter may be valid, or it may not be, depending on the specific circumstances. The mark owner and his lawyers could be out of bounds in their analysis . . . I have many clients who have received such letters and, it turns out, were fully entitled under law to keep their domains (or sell them through fair dealings at a profit). Obviously, it would be foolish to ignore such a letter - - the arguments could have merit, and the consequences of failing to respond could be substantial or, at a minimum, serve to prejudice your position in judicial or administrative proceedings.

If the domain name which is the subject of a cease and desist letter constitutes a parody, "play on words" or commentary of another's trademark, it may well be immune from challenge as constitutionally protected free speech or otherwise entitled to assert the defenses set forth in Section 43(c )(B)(1) and (2).

Another option which may be available to you, as the recipient of a cease and desist letter, is to challenge the validity of the trademark asserted against you. I have found that many allegedly "valid" trademarks asserted against my clients were, in fact, not in conformance with federal guidelines and use requirements. In other words, simply because a complaining party faxes you a "trademark registration," don't assume that his rights in that mark are unassailable.

Conclusion

The federal and state laws pertaining to trademarks and unfair competition are complex, particularly in their relation to domain names as the Internet emerges as a vast commercial marketplace. Understanding this relationship is essential, not only to avoid legal pitfalls, but also to maximize the protections to which you are entitled as you continue to invest your money and energies in establishing a commercial presence on the world wide web.

Steven W. Workman is an intellectual property, entertainment law and new media attorney, specializing in e-commerce and the Internet industries. Mr. Workman is a member of the bars of the States of California and Illinois and is a pending member of the Florida bar. Mr. Workman received his J.D. with highest honors from the University of Illinois in 1986.