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TRADEMARKS IN CYBERSPACE

Written by: David M. Adler

Article Overview: Trademarks and Service marks - definition, why important, how obtained (common law vs. federal registration), protection; domain names - relationship to trademarks, securing and protecting.

TRADEMARKS IN CYBERSPACE

(c) 2000 David M. Adler, Esq.

Copyright Notice: Certain portions of this article contains information obtained from materials available on the United States Patent and Trademark Office web site.

Introduction

The Internet has rapidly moved from a loosely organized decentralized public network for research, educational and governmental collaboration to a globally networked economy for the efficient exchange of communications and currency. This global free enterprise system functions in a very tangible way, though it occupies the digital netherworld.

The Internet allows users to access millions of web sites and web pages. Web pages are computer files that can consist of words, pictures, sounds and links. Id. Every web page has its own web site that is similar to a street address or telephone number in that it is the address for that web page on the Internet. This Internet address is commonly referred to as the "domain name."

Domain names are the familiar and easy-to-remember names that end in "dot com" or "dot net" (e.g., "www.yourbusinessname.com"). They correspond to unique Internet Protocol (IP) numbers (e.g., 243.11.241.78) that serve as addresses on the Internet and allow computers to find one another. The Domain Name System (DNS) translates Internet names into the IP numbers needed for transmission of information across the network.

Domain names always consist of a second level domain (a term or series of terms, e.g. "ecommerceattorney") followed by a top level domain ("TLD"), such as ".net" for networks, ".org" for not-for-profit groups and ".com" for commercial entities. The TLD ".com" also functions as the default "catchall" for most Internet users. To obtain a domain name, a registrant files an application with Network Solutions, Inc. ("NSI") or a similarly ICANN-authorized domain name registrar. NSI makes no independent determination of a registrant's right to use a particular domain name.

Web users most easily locate a web site through the web site's domain name. Web users assume that, as a general rule, the domain name of a particular company will be the company name followed by ".com." Sometimes, a trademark is even better known than the company name, in which case a web user will assume that the web address is "trademark.com." When a web surfer does not know a specific domain name he has two (2) options: try to guess the correct domain name or use an Internet "search engine." Search engines are searchable databases of web pages and web content. When a user enters a key word or phrase, the search engine return links of web sites that contain key words in the body and meta information sections of the web page. Key words are often found in a web site's meta tags, and are invisible to the casual web page viewer.

The incidence of conflicts between owners of trademarks and businesses on the Internet who may, intentionally or otherwise, use a similar name in their Internet addresses appears to be on the rise. Registered trademark owners that wish to protect their business goodwill on the Internet may seek protection of federal trademark laws under (a) Section 32 of the Lanham Act 15 U.S.C. ß 1114 for trademark infringement; (b) Section 43(a) of the Lanham Act 15 U.S.C. ß 1125(a) for dilution or unfair competition; or (c) under state unfair competition laws.

Trademarks and Service marks - Definition

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

Why are Trademarks and Service marks important? Federal registration is not required to establish rights in a mark (see below), nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.

Since the PTO's authority is limited to determining the right to register, only a court may render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding.

How are Trademark Rights Obtained? Trademark rights arise from either actual use of the mark, or the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress.
There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Securing and Protecting Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (r), may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues.

Domain Names - Relationship to Trademarks When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address. Today, advertisements for all types of products and services routinely include a URL for the web site of the advertiser. Just as the average person with no special knowledge recognizes "800" or "1-800" followed by seven digits or letters as one of the prefixes used for every toll-free phone number, the average person familiar with the Internet recognizes the format for a domain name and understands that "http," "www," and a TLD are a part of every URL.
Applications for registration of marks consisting of domain names are subject to the same requirements as all other applications for federal trademark registration. A mark composed of a domain name is registerable as a trademark or service mark only if it functions as a source identifier. The mark as depicted on the specimens must be presented in a manner that will be perceived by potential purchasers as indicating source and not as merely an informational indication of the domain name address used to access a web site.

In In Re Eilberg, the Trademark Trial and Appeal Board held that a term that only serves to identify the applicant's domain name or the location on the Internet where the applicant's web site appears, and does not separately identify applicant's services, does not function as a service mark.

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Article Tags: commercial entities, domain name registrar, domain name system, free enterprise system, internet names, internet protocol ip, ip numbers, name domain, netherworld, network domain names, network solutions inc, networked economy, nsi, office web site, patent and trademark office, profit groups, second level domain, top level domain, united states patent, united states patent and trademark office



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