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How Brand a Trademark On the Web
U.S. Law - The Commerce Clause Introduction To qualify a mark (trademark or service mark) generally one must use the mark in commerce that congress may regulate..That's what a real USE is about in trademark law. The "use" was easier to define before the ubiquity of the WWW than it is today. The Internet and the ability to display logos and other forms of trademarks on the Web has transformed a once somewhat difficult issue into a legal gray area. Now one can technically "use" a mark internationally and certainly in commerce that Congress regulates via the Web, instantly. On the other hand, the U.S. law as recently amended is no longer as concerned with date of use, and is more in conformity with international standards that one must register a mark to gain it securely. And if you use the mark on the Internet CAUTION to register it in most if not all countries. Trademark law is, for now, not extraterritorial. There maybe international patents granted but not so with trademarks and copyrights. The Commerce Clause of the U.S. Constitution states that Congress: "regulate[s] Commerce with foreign Nations, and among the several States..." It is USE in this commerce that constitutes a technical ability to claim exclusive use of a mark and to secure its registration (See the article U.S. TM Basics, "What's In a Name?" for the other possibilities, such as use in a foreign country). Thus, USE is the best way to obtain the FIRST right to exclusivity, rather than relying on the intent to use "reservation." Registration provides one with "prima facie" evidence of exclusive rights to use the trademark. What does this mean to the "user" of a mark on the Internet? How may one make a technically correct legal "use" of a mark on the Web and have it be enforceable in the user's class of goods or services? The answer lies in the following analysis: Trademarks and service marks fall under classes of use. For example: A trademark for computers, such as the fanciful "Macintosh®" is in CLASS 9
(Electrical and scientific apparatus) and may exist in peace and harmony with a trademark
like "Macintosh®" for raincoats in CLASS 25 (clothing). Yet there can be only
ONE domain name such as "Macintosh.com." This is one huge worldwide place where
domain names clash with trademarks on the Internet. [see the Trademark
vs. Domain Names on the World Wide Web and How To Understand The Frustration of the Trademark Owner The old InterNIC policy basically stated that if one has registered a trademark, InterNIC may place on HOLD a URL that is the same as a mark. The URL might remain on hold while the litigation between the trademark owner and the URL claimant proceeds. To register, it is required that you have used the mark "in commerce." The new ICANN Uniform Rules state that a mark's date of first use in those countries with that policy of priority such as the U.S., that date will apply. See ICANN - Uniform Domain Dispute Rules & Guidelines. To USE a mark, one must be ADVERTISING services and DISPLAYING the mark in or on labels for the GOODS. On the web, as in a magazine, one cannot sell most goods through the phone lines, but only advertise them, unless the goods are downloaded. So of you cannot send certain goods or perform some services on the Internet, there cannot be a use of the mark for those goods/services. Thus the advertisement on the Web for goods for sale is NOT a "use" or sale in the physical sense in commerce for those goods. It is just like a magazine ad, it is only the advertisement, and this falls under the "services" classification of use of retail service of selling, in class 042 "miscellaneous" or class 035, "business services." To be a "use" on line the goods being SOLD must be downloaded, like software. Therefore you can make a "USE" in commerce for software. The owners of confusingly similar marks for goods and/or services in the SAME class will clash in the Real World. Users of similar names on very different goods and services may generally coexist in the Real World. On the Web, however while they may co-exist in the real world, makers of the raincoat and of the hamburger will be classified into the same class of services (advertising the goods they sell on the Internet), and they will clash on the Web. Therefore, a musical group who wants to establish a "use" for their band name for trademark purposes, on the Web, for sound recordings (goods in class 09) might have to allow users to hear "sound bytes" of the music as an inducement and to order downloaded music on line to qualify for a class 09 (electronic goods, like CD-ROMS of or tapes of music). They cannot otherwise establish a use in that goods class, but only in the services class 041, entertainment services. The entertainer or group who advertises but does not allow ordering and downloading may only have a use for "advertising" its "services" as a musical performing and recording group, in class 41, entertainment services. How then to use the mark on the Internet and have it Qualify: A company that uses its trademark to sell goods on line would only qualify for a "use" in the miscellaneous class 42 or business services, 035 for the retail sales (class of business services). This would work like a store, where the site is used to take orders or where the user calls an 800 number to place an order and the goods are delivered by a fulfillment house. THE WAY to use a mark such as "Stonhenge" is to have it, perhaps with a logo, near the top and certainly in the first view of the "index.html" or "home page." It should be in large type, be accompanied by a small "TM" or "SM" (usually superscripted). Do not use "®" until you have the mark registered. The mere registration of a URL does NOT make a "use" of the name as a trademark. See How to Register a Mark If the mark is a "DOT COM" such as "Stonhenge.com SM" the mark changes its character. The ".com" becomes an added factor in the PTO analysis of the mark. It may ask the term ".com" be disclaimed "apart from the mark" or it might require proof of use "as a source indicator." What this means is, does the entire mark, ".com" included serve as a trademark? If it is in large type near the top and used as in THE WAY, above, it could so serve. Used on the side of a bus or in TV and radio commercials as the NAME of the services and not only as the address it may be sufficient. CAUTION: every use is on a case by case basis. If it is on a letterhead as are the phone number and other information, then it is NOT serving as a source indicator but only as an address. To get an in-depth PTO treatise on this see: http://www.uspto.gov/ The PTO has become a public corporation. With a goal of self funding, rates have increased from $245 to $325 per application and other fees have changed and will change. With the passage of the Trademark Law Treaty Implementation Act the U.S. has made a leap towards parity with other international legislation. This is law in flux like the waves in the ocean. Stay Tuned! |