26.3 Trademarks

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Trademarks are defined by federal law to be any word, name, symbol, color, sound, product shape, or device, or any combination of these that is adopted and used by a manufacturer or merchant to identify goods and distinguish them from those made or sold by anyone else.^[6] Service marks are a related concept applying to services as opposed to products; for example, "American Express" is a service mark distinguishing a service rather than a particular product. Traditionally, trademarks were intended to help protect a vendor from imitators confusing customers in a geographic region.^[7] Trademarks also help provide a protection against fraud: if someone markets counterfeit goods using a trademark, the trademark holder has some legal recourse. Now that we are involved with multinational corporations doing business on the global Internet, trademarks have become more important as geographical limitations have waned.

^[6] 15 U.S.C. 1127

^[7] Hereafter, we'll use the term "trademark" to refer to both trademarks and service marks.

26.3.1 Obtaining a Trademark

Trademarks have some similarities to patents and copyrights. Establishing one involves four basic steps:

Pick your trademark and establish it in commerce or trade. Trademarks must be based on established use in the marketplace you cannot think up interesting names for trademarks and "hoard" them for later use or sale. Instead, you need to have an established and ongoing use of the trademark in the marketplace.

Simple use of the trademark establishes it, similar to the way that a copyright is established for text once it is in fixed form. However, this form of protection may not provide you with as much protection as you would like in the event of a conflict with someone else. For that, you will want to register it. But first, you will need to take the next step in this list.
Research the use of the trademark. Before registering your trademark (and, ideally, before you use it the first time), you should research the trademark to ensure that it is not currently in use by someone else. There are research services that will do this for you, usually associated with a law firm that will also handle the entire registration process for you. You should especially research the lists of already registered trademarks for duplicates or close matches.

If your search discloses a match of trademark names with one already existing, this does not necessarily mean that you cannot use your choice. Because one of the primary purposes of the trademark is to prevent confusion of products in the minds of consumers, you may be able to duplicate an existing trademark if it is for a product so dissimilar to yours that there could be no confusion in the mind of any reasonable consumer. However, this will need to be agreed upon by the current holder of the trademark, or decided in court.
Register the trademark by completing some paperwork and paying a filing fee. You would register your trademark with one or more states where you are likely to do business.^[8] Alternatively, if you are likely to use the trademark in interstate commerce, which is probable if you are using it on the Internet, you could register it as a federal trademark. Federal trademarks are given for 20 years.

^[8] All 50 U.S. states have trademark laws.
You must now properly use, display, and defend your trademark to keep it. To keep the trademark valid, you must continue to use it. You must also display it with appropriate marks or designations that it is a trademark (e.g., with a or symbol, as appropriate; do not display the symbol unless you have a federally registered trademark).

Most importantly, you must defend your trademark to keep it. If you see or hear of someone else using your trademark improperly, you must take actions to correct them or stop them from using your trademark without credit. If you fail to do so, you may lose your legal protection for the item.

26.3.2 Trademark Violations

Use of trademark phrases, symbols, and insignia without the permission of the holders of the trademark may lead to difficulties. As we noted previously, the holders of those trademarks are expected to protect them, and so they must respond if they discover someone using their trademarks improperly.

In particular, to protect yourself against such actions, be careful about putting corporate logos on your web pages. They should be placed with appropriate indications of the trademark holder. Further, you must be careful not to use the logos or names in such a way that they imply endorsement of your product or defame the actual product or holder of the trademark. That means you will probably hear from a corporate attorney if you put the logos for Sun, HP, Xerox, Microsoft, Coca-Cola, or other trademark holders on your web pages especially if you use them in a way that is uncomplimentary to those companies.

If you have a trademark of your own that you are trying to protect, you must be vigilant for violations. If you learn of anyone misusing your trademark, you must respond quickly. That response may include filing a lawsuit over improper use of your mark. Having a trademark confers some benefits to you, but it also implies some effort and expense to keep it!

26.3.3 Domain Names and Trademarks

Domain names that infringe on trademarks in the United States can be subject to action under either the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy (UDRP)^[9] or the Anticybersquatting Consumer Protection Act (ACPA). Both of these regimes specify means by which a trademark owner can take action against a domain name holder for a domain that the trademark owner believes damages the owner's trademark rights. (For information about ICANN, see Chapter 2.)

^[9] http://www.icann.org/udrp/

Under most circumstances, the ICANN UDRP is likely to be the first tool used by any party that believes they are injured by another party's domain name. The UDRP offers the promise of a proceeding that is likely to be faster and cheaper than seeing action under the ACPA. Furthermore, the UDRP is ideally suited to situations that are international in nature for example, when a domain that is registered by a Chinese company with a registrar that is in Europe violates the trademark of a company that has offices in Honduras.

The UDRP is enforced through contract law. All registrars in the top-level generic domains (currently .biz, .com, .info, .name, .net, and .org) are required to implement the agreement as a condition of their contract with ICANN. These registrars, in turn, pass on the requirements for agreeing to the terms of the UDRP in their agreements with their customers. If you have a domain name, you have agreed to be bound by the rules of the UDRP.

For domain name holders, the key paragraph of the UDRP is paragraph #2, in which the applicant makes the following representations:

2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.

Should you violate any of these representations, you agree to be bound by a "mandatory administrative proceeding." This proceeding can result in your loss of your domain name. The UDRP outlines three specific elements that must be present to result in the loss of a domain name:

The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
The registrant has no rights or legitimate interests in respect to the domain name; and
The domain name has been registered and is being used in bad faith.

Fees for the administrative proceeding are paid entirely by the complainant if a panel of three individuals is used to decide the claim; the fees are split 50/50 between the complainant and the domain holder if a single individual is used to decide the claim.

ICANN has gone to great lengths to call its adjudication process an "administrative proceeding" and not an "arbitration hearing." This is so that either party can appeal the results of the administrative proceeding to a court without prejudice. Under the UDRP, either party has ten days to file an appeal.

If you are in the United States, you can file suit against a domain name holder for violation of the ACPA. According to the ACPA:

(1)(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii) registers, traffics in, or uses a domain name that

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III) is a trademark, word, or name protected by reason of section 706 of Title 18 or section 220506 of Title 36.

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