TRADEMARKS:
New Kinds of Infringement, Source Confusion and Dispute Resolution

© 2000 Philip R. Green, Partner, Law Offices of Green & Green

www.greenandgreen.com

The Headlines:

Ford Sues to stop “Model-E.com”

MediaCentral.com 8/7/2000 [modele.com]

Microsoft Wins Cybersquatting Case

Yahoo.com 7/27/00 [microsof.com]

244 Domain Names Ordered Transferred to Telia (Sweden)

WIPO Arb. & Med Crt. Case D2000-0599 [itelia.net…]

Where we have been – Varying degree of success

Porsche Cars North America, Inc., vs. Porsch.Com…(dozens of defendant URLs) USDC, E. Dist. Of VA, Alexandria Div. Civil Action No. 99-0006-A, filed 1/6/99

Started In rem Action over the Domain Name as property (the Res)

Trying to prevent locating worldwide infringers in many nations.

Cuts cost of litigation.

Dismissed

Hasbro, Inc. vs. Clue Computing, Inc. (1999) 52 U.S.P.Q.2d 1402

DILUTION Case: Not famous enough

failure to demonstrate likelihood of confusion in the other’s market.

Cybersell Inc. vs. Cybersell, Inc. (9th Cir.1997) 130 F.3d 414

JURISDICTION: AZ corp. that “merely” advertises commercial services over Internet, could not stop same name FL corporation that offers web page construction services over the Internet.

See Zippo Manufacturing Company vs. Zippo Dot Com, Inc. (W.D. Pennsylvania, 1997) , 65 USLW 2551, 42 U.S.P.Q.2d 1062.

Avery Dennison vs. Sumpton 51 U.S.P.Q.2d 1801 (9th Cir. 1999).

A-D not famous enough to prove dilution by Avery.net and Dennison .net

plus factor, names of real people.

Breakthrough Cases:

Panavision vs. Toeppen (9th Circuit, 1997) 46 U.S.P.Q.2d 1511

Piracy with Chutzpah

Trying to sell back to famous Hollywood Icon Panavision

Only $18,000 demanded as price.

Congress based factors of ACPA from this case.

Brookfield Communications, Inc., vs. West Coast Entertainment Corporation, U.S.C.A. (9th Cir. 1999) 174 F.3d 1036, 50 U.S.P.Q.2d 1545

The mere registration of a domain name “Moviebuff.com” does not provide any trademark priority as against a prior trademark user.

Metatags may serve as the basis for an infringement action.

Unfair Competition under State & U.S. Law

Trademarks on the run… INFRINGEMENT

These Actions also usually involve:

Copyright Infringement

Rights pf Publicity

Trade Secrets violations

Patent Infringement

Privacy and other e–commerce actions.

Defamation

Employment issues

Jurisdictional disputes

Valuation & Investors rights

1^st Amendment Rights, Foreign Laws

Violations of Anti-Trust Laws

Infringement: Confusion of source

Essence: That the mark that identifies a certain source. Query: Is public confused as to source ?

Proof that a mark is “confusingly similar to” an existing mark:

Proof that the markets are same/similar

Proof of confusion as to Source, Endorsement, “Passing Off”.

Showing that consumers are sophisticated vs. not careful in their selection.

Initial Interest Confusion Internet First

Consumer confused by URL, Search result then turns away when they know.

Post Purchase Confusion

Hermes “Kelly Bag” – When Consumer buys “knockoff” thinking they got bargain & passes off as “status” symbol confusing others. Engel Ind v. Lockformer 946 F2d 1528

Infringement Proof of ownership

Unregistered marks protectible

Registered marks: application process (prosecution history) becomes an issue

Strong and Weak marks.

Proof of Use and Dates of Use

Defendants: Breaching Licensees, Manufacturers, Distributors, Sellers, Importers of counterfeits.

Laches Applies – Write letter and follow through.

Infringement & Inter Partes Proceedings

Interferences & Oppositions

During Other’s Application Process

Timing is important.

Cancellations of registrations

Patent & TM Office / TTAB

Appeal to TTAB from Examiner of trademarks.

Appeal to U.S. Court of Appeals for the Federal Circuit from TTAB.

Infringement: Commerce to e-commerce
15 U.S.C.1051:

The word “commerce” means all commerce which may lawfully be regulated by Congress.

15 U.S.C. 1051:(a) (1) USE: “The owner of a trademark used in commerce may request registration of its trademark on the principal register … filing in the Patent and Trademark Office an application and a verified statement, … and such number of specimens or facsimiles of the mark as used as may be required by the Commissioner. “

15 U.S.C. 1051(b) (1) Intent to Use (ITU or “1 b”) “A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration …[by] filing in the Patent and Trademark Office an application…”

In the ecommerce world USE may be easier, cheaper and instantly worldwide.

Infringement Defenses: Is it a trademark

To act as the source indicator the mark should be fanciful and not describe the goods/services.

Fanciful Suggestive Descriptive

It can be a "sound alike," a face, a character, words, drawing (logo), and many "trade dress" styles can be distinctive of a restaurant, or "package dress" as a way of packaging software, by way of examples.

A mark must not be misdescriptive, geographically misleading, or fraudulent.

Must NOT be CONFUSINGLY SIMILAR to another mark, registered or not.

Infringement TRADEMARK law is Territorial

It does NOT operate outside of the U.S.

ICANN rules for ADR are meeting the U.S. policy by allowing the First Use date to serve as the "test" date to calculate priority for US marks. The U.S. could change its rules also.

International cooperation predicted; the EU trademark, GATT

TRIPS Trade Related Intellectual Property

Portions of Uruguay Agreement

The period of non-use of a mark which triggers a presumption of abandonment was raised from two to three years. Registration of new geographic names for wines and spirits was barred unless the product comes from the place named.

Customs seizure of infringing goods/services does not exist on Internet, e-seizure?

REGISTER MARKS WORLD WIDE

Infringement Typical Defenses:

No Use of a trademark in the U.S. in commerce: Section (a) Commerce Congress has the power to regulate Commerce . . . among the several States. And internationally

U.S. Const. art. I, §8, cl. 3

No Bona fide INTENT TO USE the mark in commerce soon. (A “Sec. (b)” mark)

Prosecution history shows a flaw in application

Applicant knew of another similar mark

Mark is WEAK

Innocent Infringement

Fair Use is becoming a more often used defense.

Note that there is also “Registration Priority”

Dilution: A “Famous” Mark

15 U.S.C. 1125 (c ) (1)Famous marks – Dilution or “How to Stop a trademark infringer without proof of public confusion”

Differing views on what is “famous”

Factors: inherent or acquired distinctiveness, duration and extent of use, extent of advertising and publicity, geographical extent of the trading area, channels of trade, degree of recognition of the mark, nature and extent of use of the same or similar marks by third parties; and whether the mark was registered.

Dilution : No need to prove “Public Confusion”.

Greatest Show On Earth” Ringling Bros.-Barnum & Bailey v. Utah Div. of Travel Dev., 42 U.S.P.Q.2d 1161 (E.D. Va. 1997), (famous, but not diluted by “THE GREATEST SNOW ON EARTH”).

“Sporty’s farm” for airline catalogs is famous. Sporty's Farm L.L.C., V.Sportsman's Market, Inc, Omega Engineering, Inc., Nos. 98-7452(L), 98-7538(XAP) U.S.C.A. 2nd Cir., Feb. 02, 2000, 2000 WL 124389 (famous enough to stop “sportys.com”

Dilution : How

Blending - The selling, under a mark not the seller’s, a variety of goods or services not intended by the original owner to be associated with its goods or services.

This causes the distinctiveness of the mark to be diluted.

Tarnishment

By placing the mark in disdain by selling bad goods under the mark.

By having goods “passed off” as those of a a known Brand when the goods do not originate with the trademark owner.

METATAGS Factors:

Hidden text not generally visible in browsers like a watermark.

Searchable by most web search services such as:

Yahoo!

AOL

Google and others.

E commerce on the WWW depends on “TRAFFIC” OR “HITS” AND exploration of a web site by buyers and users.

Search Engines find web sites by text contained in them.

Repeated use of a word attracts searches.

METATAGS Cases:

Playboy Enterprises, Inc. v. Calvin Designer Label, (N.D. Cal. 1997) 985 F. Supp. 1220, 44 U.S.P.Q.2d 1156, Playboy Enterprises, Inc. v. AsiaFocus Int'l, Inc. 1998 WL 724000 (E.D. Va. 1998)

Use of “playboy” invisible yet searchable can be unfair competition.

Playboy Ent., Inc. v. Terri Welles F.Supp.2d 1098. U.S.D.Ct, S.D. Cal., May 21, 1998.

Former "Playmate of the Year" (pmoy) defendant was entitled to "fair use" defense in connection with her use of title "Playmate of the Year" in her web page heading and link page, her use of the "Playmate Of the Year (PMOY) '81"

Brookfield Communications, Inc. v. West Coast Entertainment Corp., (9th Cir. 1999) 174 F.3d 1036, n.23, 50 U.S.P.Q.2d 1545, n.23

Broadest definition of Metatags as including all machine readable code.

METATAGS Fair Uses…

Rare case where a fair use can be found.

Truthful statements major factor in PMOY case.

Legitimate use: The Welles site was also meant to be her own fan club site and not an imitation of Playboy.

Use of terms "Playmate of the Year" on her web page and "Playboy" and "Playmate" marks as meta tags, did not create likelihood that web surfers would be confused that her website was endorsed or sanctioned by Playboy.

METATAGS Can be Offensive:

The offences are:

Trademark infringement

Copyright infringement

Patent infringement

Right of Publicity (Name & Likeness) violation

Passing Off and fraud

Trademark dilution

Others….

The Internet Factor

The Internet and the ability to display logos and other forms of trademarks on the Web has transformed a somewhat difficult issue into a legal GRAY area:

Now one can instantly "use" a mark internationally, and in commerce that Congress regulates, via the Web.

The Internet Factor

What has Happened to trademark law because of the Internet

WHAT A TRADEMARK IS:

SECTION 45 of Trademark Law Revision Act (TLRA) defines trademarks as

“any word, name, symbol or device or any combination thereof (1) used by a person, or

(2) which a person has bona fide intention to use in commerce and applies to register on the principal register to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source or goods, even if that source is unknown.”

The Internet Factor

THE LAW CHANGES: TLRA 1988: TTIA 1999

TLRA Revised trademark law to allow for ITU.

Public Law 100–667, 102 Stat. 3935

Trademark Law Treaty Implementation Act 1999

In order to simplify and harmonize U.S. Law with the WIPO treaty of 1994.

Send 1 specimen

Renewal now not conditioned on Use (Sec 9) (But beware of Sec 8 continuity)

Privatization of the Patent & TM Office

Changes to: Fees, Applications, Rules.

eTEAS Online Registration System.

The Internet Factor: Classes of Goods/Services

It’s a Small Universe:

Fewer classes on the Global Network:

8 Internet vs 42 classes in brick & mortar (real) world

Classes 9, 35, 36, 37, 38, 39, 41 & 42 means more clashes COMBINED with the unique nature of URLs

9=e-goods, 35=business services, advertising, 36=banking & financial, insurance services, 37=repair; installation services 38=Telecommunications, 39=travel arrangement services 41=entertainment services, educational, 42=misc. services.

The Internet Factor: Clashes Increase

The Internet introduces more potential for clashes because markets and audiences are all in a small niche of advertising, marketing and selling e-goods and financial and travel services. it is a smaller cyber world out there.

Upside: I-Infringers are easier to find.

The Internet Factor:”Branding”

Initial Interest Confusion

The Internet Factor

Does Mark + ".com" serve as a trademark?

Considered as an Address by PTO.

A mark using a Domain Name is registrable as a trademark only IF it serves as a source identifier. In RE Eilberg (TTAB 1998) 49 USPQ2nd 1955 (no trademark use shown by atty letterhead, cards)

Advertising One’s Own Services on the Internet is not a Service Use. Because it is that activity the name is used for. It IS the source, not its identifier.

Solution: Need to use mark in Other Media – buses, posters, TV

Ok to show only the 2^nd level domain name on drawing.

A gTLD (The “.com” part) Has NO trademark significance. (Section 1 (c), (d))

USE is NOT established by registration of a Domain Name alone.

The Domain Name:

The numeric address of a server in alphabetical terms.
Greenandgreen.com = 123.456.78.12 (example)

Top level (.com, ,org. .edu, .gov etc.)
Soon: “.firm”, “.info”, “.store” and several others.

Secondary level (Someone’s TM .com) = trademark

There are many 10,000’s being registered each month.

Used to Identify and Attract Traffic

Conflict with trademarks.

CYBERSQUATTING: Anti Cybersquatting Consumer Protection Act (ACPA) Under 15 USC 1125(d)(1)(A):

The registration of a domain name with bad faith intent to profit from the mark of another.

Taking another’s trademark as your secondary level domain name constitutes the act of Cybersquatting.

This is as much an act of piracy as copyright or patent infringement.

Cybersquatting Elements:

Registers, traffics in, or uses a domain name
of

a mark that is distinctive at the time of registration of the domain name

that is identical or confusingly similar to that mark or

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.

With the bad faith intent to profit from that mark

Cybersquatting Bad Faith Intent to Profit - Factors:

The trademark & intellectual property rights of the parties

The extent the Domain Name consists of another’s mark or name

Prior uses if any of the Domain Name in offering goods/services

Any “fair use” factors like non-profit

An intent to divert traffic (users) to another site than the trademark owner’s.

Intent to Dilute

Offering to sell the Domain Name.

Cybersquatting Bad Faith Intent- Offers to sell the Domain Name:

Offers to sell: to the trademark owner or others (hold the Domain Name for ransom)

The quantity of the Domain Name user’s content vs. “valid” content

1^st Amendment “content” concerns – The “Sucks” cases Verizon (really sucks)

The story of why a Domain Name was chosen and

Did the Domain Name registrant know of the offended trademark?

SPORTY'S FARM L.L.C., v.SPORTSMAN'S MARKET, INC, Docket Nos. 98-7452(L), 98-7538(XAP) U.S.C.A., 2^nd Cir. Feb. 02, 2000, 2000 WL 124389.

“Cybersquatting involves the registration as domain names of well-known trademarks by non-trademark holders who then try to sell the names back to the trademark owners.”

Cybersquatting In Rem Action:

15 U.S.C. 1125 (d) (2) (A) provides for an In Rem action

In Rem - against the property rights in a Domain Name

See Porsche case (USDC, E. Dist. Of Virginia Alexandria Division Civil (Action No. 99-0006-A (filed 1/6/99 )

It can be difficult and expensive to litigate every Domain Name squatter – they are all over the world.

Cybersquatting In Rem: Rules

If you cannot locate the Domain Name owner by notice to the registered owner

Then you may, by publication of notice as ordered by a court, obtain in rem jurisdiction into the district of the

Court where the register has its offices.

Cybersquatting In Rem: Issues

to what extent is a URL property?

Recent case: Network Solutions Inc vs. Umbro International Va. S. Court 4/21/00 No 991168, suggests that if the URL is a or permits a service, it is not garnishable under Virginia’s garnishment laws.

Sec. 1125 (d) allows courts to order the Domain Name register to turn over a URL to a trademark owner.

No Money Damages in an In rem Action.

Cybersquatting Retroactivity of the ACPA.

The act applies to domain names that were registered before and after the law's enactment, however:

Injunctive relief and transfer of the domain name are the only available remedies if the domain name was registered before the law's enactment.

Damages (whether actual or statutory) are available only if the domain name was registered after the law's enactment (which was Nov. 18, 1999).

Cybersquatting Personal Names: 15 U.S.C. 1129 CIVIL ACTION:

Any person who registers a domain name that consists of the name of another living person

substantially and confusingly similar thereto,

without that person's consent

with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party.

Note that California civil code 3344 creates a Right of Publicity and that this extends to deceased personalities.

Characters names are trademarks, not treated as personal names.

Cybersquatting Personal Names: BIG Exception: ©

If such name is used in, affiliated with, or related to a work of authorship protected under Title 17, including a work made for hire as defined in section 101 of Title 17,

and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work…

There may be no liability

Cybersquatting Personal Names: DAMAGES

a court may award injunctive relief, including:

the forfeiture or

cancellation of the domain name or

the transfer of the domain name to the plaintiff.

The court may also, in its discretion, award costs and attorneys fees to the prevailing party.

Effective date not retroactive: This section shall apply to domain names registered on or after November 29, 1999.

Julia Roberts: Won with WIPO but got sued for reversal.

Cybersquatting Cases Since ACPA: Many Successes

Joseph C. Shields, Individually And T/A The Joe Cartoon Co., John Zuccarini 54 U.S.P.Q.2d 1166 No. CIV. A. 00-494. U.S.D.C. E.D. Pa, March 22, 2000

The Joe’s Cartoons Case also has the distinction that it awards Statutory Damages.

Sporty's Farm V.Sportsman's Market, Inc, Omega Engineering, Inc., Docket Nos. 98-7452(L), 98-7538(XAP) U.S.C.A. 2^nd Cir.

The First ACPA case originally a Dilution case.

Sportsman’s showed bad faith intent by his poor story of originality.

ADR: International Arbitration Alternative

WIPO – ICANN Uniform Rules Apply

See www.icann.org

Start Case by “submitting a complaint in accordance with the Policy”*

Detailed rules and instructions.

Form complaint and published fees

*Uniform Domain Name Dispute Resolution PolicyAs Approved by ICANN on October 24, 1999

ADR: How To Use The Rules

CASES SUBJECT TO WIPO ADR:

(i) Conflicting domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) Conflicting URL owner has no rights or legitimate interests in respect of the domain name; and (iii) conflicting domain name has been registered and is being used in bad faith.

Notice to the Respondent with Evidence of Registration and Use in Bad Faith.

This is a VERY difficult policy to fulfill 15 U.S.C. may have more chance of success.

ADR: WIPO – ICANN Uniform Rules UDRP

ICANN can transfer Domain Names:

The ADR provider’s receipt of written or appropriate electronic instructions from you or your authorized agent to take such action;

receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or

receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN.

ADR: - Procedure

Choose Arbitration administrator

1-3 ARBITRATORS

File Complaint, send copy to Respondent

Decisions are Published

Limited time to appeal

Have appeal ready before arbitration.

ADR: Selection of Provider.

The complainant selects the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation…”

Consolidation.

In the event of multiple disputes between a respondent and a complainant, either party may petition to consolidate the disputes before a single Administrative Panel

Fees. All fees charged by a Provider … shall be paid by the complainant

These are by Internet published schedule.

ADR: Remedies.

The remedies available to a complainant are limited to:

requiring the cancellation of the infringing domain name or

the transfer of the infringing domain name registration to the complainant.

Cases Since ACPA: Successes for trademark owners:

Joseph C. Shields, Individually And T/A The Joe Cartoon Co., John Zuccarini 54 U.S.P.Q.2d 1166 No. CIV. A. 00-494. United States District Court, E.D. Pa, March 22, 2000

The Joe’s Cartoons Case also has the distinction that it awards Statutory Damages.

Sporty's Farm L.L.C., V.Sportsman's Market, Inc, Omega Engineering, Inc., Docket Nos. 98-7452(L), 98-7538(XAP) United States Court of Appeals, Second Circuit. Argued: March 17, 1999 Decided: Feb. 02, 2000

The First ACPA case.

Sportsman’s showed bad faith intent by his poor story of originality.

Cases Since WIPO-ADR: Still Complex World for trademark owners

Worldcup.com

13 of 15 transferred but ‘wc’ is not distinctive.

Formula One vs F1.com

F1 not distinctive enough

Julia Roberts Case –

Win ADR then get sued.

Julia Fiona Roberts v. Russell Boyd Case No. D2000-0210

Hendrix Family, Warner/EMI Win Domain Name Rights

Billboard.com 8/9/00

Caution –Estates: Register Celebrity names.

Niketown.com

Bad Faith found in holding URL hostage in contract dispute.

Complexities remain for the Future:

New Laws Enacted

New Cases Decided

U.S. Continues to Prosper on IT Growth

Bots to buy Anything You Want…Stay Tuned!

See the State Bar Web Site and watch it grow. http://www.calbar.org/buslaw



	© 2000 Philip R. Green, Partner, Law Offices of Green & Green
	www.greenandgreen.com


	Ford Sues to stop “Model-E.com”
		MediaCentral.com 8/7/2000 [modele.com]
	Microsoft Wins Cybersquatting Case
		Yahoo.com 7/27/00 [microsof.com]
	244 Domain Names Ordered Transferred to Telia (Sweden)
		WIPO Arb. & Med Crt. Case D2000-0599 [itelia.net…]


Porsche Cars North America, Inc., vs. Porsch.Com…(dozens of defendant URLs) USDC, E. Dist. Of VA, Alexandria Div. Civil Action No. 99-0006-A, filed 1/6/99
	Started In rem Action over the Domain Name as property (the Res)
	Trying to prevent locating worldwide infringers in many nations.
	Cuts cost of litigation.
	Dismissed
Hasbro, Inc. vs. Clue Computing, Inc. (1999) 52 U.S.P.Q.2d 1402
	DILUTION Case: Not famous enough
	failure to demonstrate likelihood of confusion in the other’s market.
Cybersell Inc. vs. Cybersell, Inc. (9th Cir.1997) 130 F.3d 414
	JURISDICTION: AZ corp. that “merely” advertises commercial services over Internet, could not stop same name FL corporation that offers web page construction services over the Internet.
		See Zippo Manufacturing Company vs. Zippo Dot Com, Inc. (W.D. Pennsylvania, 1997) , 65 USLW 2551, 42 U.S.P.Q.2d 1062.
Avery Dennison vs. Sumpton 51 U.S.P.Q.2d 1801 (9th Cir. 1999).
	A-D not famous enough to prove dilution by Avery.net and Dennison .net
	plus factor, names of real people.


	Panavision vs. Toeppen (9th Circuit, 1997) 46 U.S.P.Q.2d 1511
		Piracy with Chutzpah
		Trying to sell back to famous Hollywood Icon Panavision
		Only $18,000 demanded as price.
		Congress based factors of ACPA from this case.
	Brookfield Communications, Inc., vs. West Coast Entertainment Corporation, U.S.C.A. (9th Cir. 1999) 174 F.3d 1036, 50 U.S.P.Q.2d 1545
		The mere registration of a domain name “Moviebuff.com” does not provide any trademark priority as against a prior trademark user.
		Metatags may serve as the basis for an infringement action.


	Trademarks on the run… INFRINGEMENT
	These Actions also usually involve:
		Copyright Infringement
		Rights pf Publicity
		Trade Secrets violations
		Patent Infringement
		Privacy and other e–commerce actions.
		Defamation
		Employment issues
		Jurisdictional disputes
		Valuation & Investors rights
		1^st Amendment Rights, Foreign Laws
		Violations of Anti-Trust Laws


		Essence: That the mark that identifies a certain source. Query: Is public confused as to source ?
		Proof that a mark is “confusingly similar to” an existing mark:
			Proof that the markets are same/similar
			Proof of confusion as to Source, Endorsement, “Passing Off”.
			Showing that consumers are sophisticated vs. not careful in their selection.
		Initial Interest Confusion Internet First
			Consumer confused by URL, Search result then turns away when they know.
		Post Purchase Confusion
			Hermes “Kelly Bag” – When Consumer buys “knockoff” thinking they got bargain & passes off as “status” symbol confusing others. Engel Ind v. Lockformer 946 F2d 1528


	Unregistered marks protectible
	Registered marks: application process (prosecution history) becomes an issue
		Strong and Weak marks.
	Proof of Use and Dates of Use
	Defendants: Breaching Licensees, Manufacturers, Distributors, Sellers, Importers of counterfeits.
	Laches Applies – Write letter and follow through.


	Interferences & Oppositions
		During Other’s Application Process
		Timing is important.
	Cancellations of registrations
	Patent & TM Office / TTAB
		Appeal to TTAB from Examiner of trademarks.
		Appeal to U.S. Court of Appeals for the Federal Circuit from TTAB.


	The word “commerce” means all commerce which may lawfully be regulated by Congress.
	15 U.S.C. 1051:(a) (1) USE: “The owner of a trademark used in commerce may request registration of its trademark on the principal register … filing in the Patent and Trademark Office an application and a verified statement, … and such number of specimens or facsimiles of the mark as used as may be required by the Commissioner. “
	15 U.S.C. 1051(b) (1) Intent to Use (ITU or “1 b”) “A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration …[by] filing in the Patent and Trademark Office an application…”
	In the ecommerce world USE may be easier, cheaper and instantly worldwide.


	To act as the source indicator the mark should be fanciful and not describe the goods/services.

	Fanciful Suggestive Descriptive
	It can be a "sound alike," a face, a character, words, drawing (logo), and many "trade dress" styles can be distinctive of a restaurant, or "package dress" as a way of packaging software, by way of examples.
	A mark must not be misdescriptive, geographically misleading, or fraudulent.
	Must NOT be CONFUSINGLY SIMILAR to another mark, registered or not.


	It does NOT operate outside of the U.S.
	ICANN rules for ADR are meeting the U.S. policy by allowing the First Use date to serve as the "test" date to calculate priority for US marks. The U.S. could change its rules also.


TRIPS Trade Related Intellectual Property
	Portions of Uruguay Agreement
		The period of non-use of a mark which triggers a presumption of abandonment was raised from two to three years. Registration of new geographic names for wines and spirits was barred unless the product comes from the place named.
Customs seizure of infringing goods/services does not exist on Internet, e-seizure?
REGISTER MARKS WORLD WIDE


No Use of a trademark in the U.S. in commerce: Section (a) Commerce Congress has the power to regulate Commerce . . . among the several States. And internationally
		U.S. Const. art. I, §8, cl. 3
No Bona fide INTENT TO USE the mark in commerce soon. (A “Sec. (b)” mark)
Prosecution history shows a flaw in application
	Applicant knew of another similar mark
	Mark is WEAK
Innocent Infringement
Fair Use is becoming a more often used defense.
Note that there is also “Registration Priority”


	15 U.S.C. 1125 (c ) (1)Famous marks – Dilution or “How to Stop a trademark infringer without proof of public confusion”
	Differing views on what is “famous”
	Factors: inherent or acquired distinctiveness, duration and extent of use, extent of advertising and publicity, geographical extent of the trading area, channels of trade, degree of recognition of the mark, nature and extent of use of the same or similar marks by third parties; and whether the mark was registered.


		Greatest Show On Earth” Ringling Bros.-Barnum & Bailey v. Utah Div. of Travel Dev., 42 U.S.P.Q.2d 1161 (E.D. Va. 1997), (famous, but not diluted by “THE GREATEST SNOW ON EARTH”).
		“Sporty’s farm” for airline catalogs is famous. Sporty's Farm L.L.C., V.Sportsman's Market, Inc, Omega Engineering, Inc., Nos. 98-7452(L), 98-7538(XAP) U.S.C.A. 2nd Cir., Feb. 02, 2000, 2000 WL 124389 (famous enough to stop “sportys.com”


Blending - The selling, under a mark not the seller’s, a variety of goods or services not intended by the original owner to be associated with its goods or services.
		This causes the distinctiveness of the mark to be diluted.
Tarnishment
	By placing the mark in disdain by selling bad goods under the mark.
	By having goods “passed off” as those of a a known Brand when the goods do not originate with the trademark owner.


	Hidden text not generally visible in browsers like a watermark.
	Searchable by most web search services such as:
		Yahoo!
		AOL
		Google and others.
	E commerce on the WWW depends on “TRAFFIC” OR “HITS” AND exploration of a web site by buyers and users.
	Search Engines find web sites by text contained in them.
	Repeated use of a word attracts searches.


	Playboy Enterprises, Inc. v. Calvin Designer Label, (N.D. Cal. 1997) 985 F. Supp. 1220, 44 U.S.P.Q.2d 1156, Playboy Enterprises, Inc. v. AsiaFocus Int'l, Inc. 1998 WL 724000 (E.D. Va. 1998)
		Use of “playboy” invisible yet searchable can be unfair competition.
	Playboy Ent., Inc. v. Terri Welles F.Supp.2d 1098. U.S.D.Ct, S.D. Cal., May 21, 1998.
		Former "Playmate of the Year" (pmoy) defendant was entitled to "fair use" defense in connection with her use of title "Playmate of the Year" in her web page heading and link page, her use of the "Playmate Of the Year (PMOY) '81"
	Brookfield Communications, Inc. v. West Coast Entertainment Corp., (9th Cir. 1999) 174 F.3d 1036, n.23, 50 U.S.P.Q.2d 1545, n.23
		Broadest definition of Metatags as including all machine readable code.


	Rare case where a fair use can be found.
	Truthful statements major factor in PMOY case.
	Legitimate use: The Welles site was also meant to be her own fan club site and not an imitation of Playboy.
	Use of terms "Playmate of the Year" on her web page and "Playboy" and "Playmate" marks as meta tags, did not create likelihood that web surfers would be confused that her website was endorsed or sanctioned by Playboy.


	The offences are:
		Trademark infringement
		Copyright infringement
		Patent infringement
		Right of Publicity (Name & Likeness) violation
		Passing Off and fraud
		Trademark dilution
		Others….


	The Internet and the ability to display logos and other forms of trademarks on the Web has transformed a somewhat difficult issue into a legal GRAY area:
	Now one can instantly "use" a mark internationally, and in commerce that Congress regulates, via the Web.


	What has Happened to trademark law because of the Internet
	WHAT A TRADEMARK IS:
		SECTION 45 of Trademark Law Revision Act (TLRA) defines trademarks as
	“any word, name, symbol or device or any combination thereof (1) used by a person, or
	(2) which a person has bona fide intention to use in commerce and applies to register on the principal register to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source or goods, even if that source is unknown.”


THE LAW CHANGES: TLRA 1988: TTIA 1999
TLRA Revised trademark law to allow for ITU.
	Public Law 100–667, 102 Stat. 3935
Trademark Law Treaty Implementation Act 1999
	In order to simplify and harmonize U.S. Law with the WIPO treaty of 1994.
		Send 1 specimen
		Renewal now not conditioned on Use (Sec 9) (But beware of Sec 8 continuity)
Privatization of the Patent & TM Office
	Changes to: Fees, Applications, Rules.
	eTEAS Online Registration System.


It’s a Small Universe:
Fewer classes on the Global Network:
	8 Internet vs 42 classes in brick & mortar (real) world
	Classes 9, 35, 36, 37, 38, 39, 41 & 42 means more clashes COMBINED with the unique nature of URLs
		9=e-goods, 35=business services, advertising, 36=banking & financial, insurance services, 37=repair; installation services 38=Telecommunications, 39=travel arrangement services 41=entertainment services, educational, 42=misc. services.


	The Internet introduces more potential for clashes because markets and audiences are all in a small niche of advertising, marketing and selling e-goods and financial and travel services. it is a smaller cyber world out there.
	Upside: I-Infringers are easier to find.
	The Internet Factor:”Branding”
	Initial Interest Confusion


		Does Mark + ".com" serve as a trademark?
	Considered as an Address by PTO.
	A mark using a Domain Name is registrable as a trademark only IF it serves as a source identifier. In RE Eilberg (TTAB 1998) 49 USPQ2nd 1955 (no trademark use shown by atty letterhead, cards)
	Advertising One’s Own Services on the Internet is not a Service Use. Because it is that activity the name is used for. It IS the source, not its identifier.
		Solution: Need to use mark in Other Media – buses, posters, TV
	Ok to show only the 2^nd level domain name on drawing.
	A gTLD (The “.com” part) Has NO trademark significance. (Section 1 (c), (d))
	USE is NOT established by registration of a Domain Name alone.


	The numeric address of a server in alphabetical terms. Greenandgreen.com = 123.456.78.12 (example)
	Top level (.com, ,org. .edu, .gov etc.) Soon: “.firm”, “.info”, “.store” and several others.
	Secondary level (Someone’s TM .com) = trademark
	There are many 10,000’s being registered each month.
	Used to Identify and Attract Traffic
	Conflict with trademarks.


	The registration of a domain name with bad faith intent to profit from the mark of another.
	Taking another’s trademark as your secondary level domain name constitutes the act of Cybersquatting.
	This is as much an act of piracy as copyright or patent infringement.


	Registers, traffics in, or uses a domain name of
	a mark that is distinctive at the time of registration of the domain name
	that is identical or confusingly similar to that mark or
	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.
	With the bad faith intent to profit from that mark


	The trademark & intellectual property rights of the parties
	The extent the Domain Name consists of another’s mark or name
	Prior uses if any of the Domain Name in offering goods/services
	Any “fair use” factors like non-profit
	An intent to divert traffic (users) to another site than the trademark owner’s.
	Intent to Dilute
	Offering to sell the Domain Name.