Trademarks are the signatures of products created by their owners. A mark identifies a product such as, “Harley Davison, McDonald’s golden arches,” and the “Play Boy Bunny.” The owner of the mark can apply for protection by registering it in accordance with the federal law called the Lanham Act, 15 USC 1050-1127 which prevent other competitors from using their trademark. The increase of e-commerce has created new challenges for trademark owners, specifically Cybersquatters, who sell domain names that is similar to a particular trademark. Still the first challenge for a business owner is to receive the trademark protection for his mark.
Not all marks are approved for trademark protection. Referencing to the matter of American Online, Inc. v AT&T Corporation, 243 F3d 812 (4th Cir 2001) were American Online, Inc. “sued its Internet competitor AT&T for trademark infringement over the use of the words “You have Mail!” relating to e-mail service.” However, the words “You have Mail” are commonly used words and would not be considered exclusive trademark property. Moreover, the word “Boston” used for “Boston Beer” was denied trademark protection because the term “Boston” is known as geographic. Boston Beer Co. v Slesar Bros. Brewing Co., 9 F3d 125 (1st Cir 1994). That is not to say all geographic terms have been denied trademark protection. Some terms that have primary meaning often acquire a secondary meaning. Through long use, a product is identified and becomes known by the public such as for example, Philadelphia cream cheese.
The identity of a mark could not be truer today, as technology has paved the way for business to set up shop on the Internet thus acquiring a domain name that is unique and can be identified by its consumers. For example, “helium.com” and these domain names are also known as trademarks. Cybersquatters [individuals who register and setup domain names on the Internet for resale] have created domain names that are identical or confusingly similar to existing trademarks. The Federal Trademark Dilution Act has been used as protection from Cybersquatters. Such as in the case in Panavision v Toeppen, 945 F Supp 1296 (CD Cal 1996) were Toepppen registered the domain name “panavision.com” with Network Solution, Inc. “The court held that Toeppen diluted Panavision’s famous mark by preventing it from identifying and distinguishing it goods on the Internet.” Trade mark owners and famous individuals have become victims of cybersquatters and legal remedies were not always certain. In 1999, to address these uncertainties Congress passed The Federal Anticybersquating Consumer Protection Act Pub l 106, 113 Stat 1536, 15 USC 1051 (ACPA). In addition to providing legal remedies, the ACPA was designed to prohibit the practice of cybersquatting and cyberpiracy.
Trademark litigation is an expensive lesson for any business; to avoid this it is important to investigate your selected domain name before purchasing it. The Internet Corporation for Assigned Names and Number (ICANN) offers “fast-track arbitration procedures to protect trademark owners from conflicting online domain names. Such as the case of Victoria’s Secret Stores v Artco, 194 F Supp2d 204 (SD Ohio 2002) were “Victoria’s Secret stores arbitrated the “victoriassecrets.net” domain name held by Howard Goldberg’s company Artco.” The panel transferred the ownership of the name to Victoria’s Secret stores. Further, “actions were brought against Goldberg and Artco for damages and injunctive relief under trademark laws.”
As illustrated, trademark law can be a complicated nightmare, so as you pondering on a creative mark for your business it is very important as a business owner to do your research. Before you apply for trademark protection, it is prudent to hire an attorney who specializes in Trademark law, property rights, and the Internet. Not only will this help protect you from expensive litigation it may also protect your newly created trademark.
Reference:
Twomey and Jennings, (2008). Anderson’s Business Laws and the Legal Environment Comprehensive Volume 20e: Thomson West