Intellectual Property: Trademark Law
This site contains an overview of Trademark Law issues, including:
Trademark Legislation
Trademark Topics
Search Engine Advertising
Selected Cases
Selected Articles and Reports
Forms and Resources
Other Useful Links
Trademark Legislation
Lanham Act of 1976
The Lanham Act is found in Title 15 of the U.S. Code and contains the federal statutes governing trademark law in the United States. However, this act is not the exclusive law governing U.S. trademark law, since both common law and state statutes also control some aspects of trademark protection. This index contains links to each of the sections of the Lanham, and was last updated in March, 2000.
Trademark Topics
Choosing a Business Name FAQ
By Nolo Press. Answers to commonly asked questions about choosing and registering a successful business name, such as, "How do I pick a name for my business?", or "How do I find out if the business name I want is available?", or "What is a trademark?".
Cybersquatting: What It Is and What Can Be Done About It
By Nolo Press. A new law cracks down on people looking to profit from other people's trademarks. This report outlines how to recognize cybersquatting, what you must prove to win, what you can sue for, and recovering your good name.
Frequently Asked Questions (and Answers) about Trademark
What to Expect When You're Expecting to Be Sued for Trademark Infringement - This primer by M. Alexandri and the Berkman Center explains trademark law as it dissects the anatomy of an average cease and desist letter (C&D). Most trademark C&Ds have at least one, and perhaps all, of the following six elements: (1) gorilla chest thumping; (2) recitation of facts; (3) citation to cases and statutes;
(4) a laundry list of potential remedies; (5) mention of the Anti-Cybersquatting Consumer Protection Act; and (6) a reservation of rights.
Linking
By Chilling Effects Clearinghouse. Some companies claim that linking to their web sites requires prior permission, or allege that your links falsely imply that they sponsor or endorse your site. This topic area addresses the issues that arise regarding linking and other web navigation (frames and pop-ups, for example), in legal terms including copyright, trademark, false advertising, the safe harbor for "information location tools," and contract (what effect do a site's "terms of use" really have?).
Madrid System for the International Registration of Marks
By WIPO. "This system gives a trademark owner the possibility to have his mark protected in several countries by simply filing one application with a single Office, in one language, with one set of fees in one currency (Swiss francs)."
Protest, Parody and Criticism Sites
By Chilling Effects Clearinghouse. Even though the Constitution guarantees freedom of expression, trademark and copyright owners do have rights. These rights may or may not be violated by the name or content of a web site dedicated to protest, criticism or parody.
Trademark: An Overview
By the Legal Information Institute. A brief overview of trademark law and links to materials for further research.
Trademarks: International
By WIPO. Information from the World Intellectual Property Organization regarding international trademarks.
Uniform Domain Name Dispute Resolution Policy (UDRP)
The Uniform Domain Name Dispute Resolution Policy ("UDRP") is an online procedure for resolving complaints made by trademark owners about domain names. It isn't a court nor is it an arbitration, but the authority that established it in 1999 (ICANN) has the power to order the deletion or transfer of domain names. The UDRP Policy explains what trademark owners have to prove in order to take a domain name away from the holder, as well as what domain name holders can use to show that they should be allowed to keep the domain registration.
Ten new domain name, including .asia, .cat, .jobs, .travel and .post, are filed with ICANN for approval, full text of the application and RFP are available at http://www.icann.org/.
Search Engine Advertising
American Airlines Inc v. Google Inc
“This lawsuit relates to the use of trademarks on the Internet, particularly Google’s unauthorized use of world-famous trademarks and service marks that identify American Airlines to Internet users”
Accuimage Diagnostics Corp v. Terarecon, Inc.
“Defendant has charged them in excess of the “daily budget” they set for their advertising campaigns, and have thereby asserted claims on behalf of themselves and all others similarly situated for breach of contract, breach of implied covenant of good faith and fair dealing, unfair competition in violation of Cal. Bus. & Prof. Code 17200 et seq., untrue and misleading advertising in violation of Cal. Bus. & Prof. Code 17500 et seq., and unjust enrichment.”
S & L Vitamins, Inc. v. Australian Gold, Inc Motion for Summary Judgment granted in part in case involving trademarks in metatags , and hyperlinks.
Brookfield Communications v West Coast Entertainment, 174 F.3d 1036(9th Cir. 1999) (Court concluded that "using a competitor's trademark in the metatags of such web site is likely to cause what we have described as initial interest confusion." Defendant's use of plaintiff's mark resulted in initial interest confusion because defendant was improperly benefiting from the goodwill plaintiff developed in its mark).
Playboy Enterprises Inc. v Netscape Comm Corp., 354 F.3d 1020 (9th Cir 2004) (where Netscape used trademark keyword "playboy" to trigger unlabeled banner ads for competitor's web site, court found that Netscape trademark infringement based on initial interest confusion, take particular note of fact that banner ads were unlabeled as contributing to consumer confusion).
Papers
Kendall Bodden, Pop Goes The Trademark? Competitive Advertising on the Internet, 1 Shidler J. L. Com. & Tech. 12 (Aug. 2, 2005)
Trademarks on the Internet - Fair Play or Fair Game, IPFrontline (Mar 2006)
Mark Lemley and Stacey L. Dogan, Trademarks and Consumer Search Costs on the Internet, TPRC 10/2/2004
Selected Cases
AOL claims ‘Instant Messenger’ its own
American Online was able to reverse a previous ruling by a trademark
examiner who found ‘Instant Messenger’ to be a generic term. In the new decision Judge Albin F. Drost found that enough evidence and documentation was presented by AOL to support its claim that the term was created with its marketing support and was referred to in news articles in reference to AOL’s Instant Messenger service. The court determined in its verdict that the term was descriptive however developed its distinctiveness through AOL’s efforts and usage.
"A search engine that sells online advertising on its search engine pages based on the user's search of a particular keyword that may include protected trademarks could constitute trademark infringement. Such "sponsored links" that allow advertisers to bid on the trademarks and pay the search engine to be linked to the trademarks when the user is looking for another product or service, may be sufficient for a prima facie trademark infringement claim."
See Government Employment Insurance Co. v. Google, Inc., E.D. Va. No. 1:04vc507, August 25, 2004
Importance of a domain name search
Kate Spade, LLC v. Darmstadter Designs. A recent case held that a domain name was registered in "bad faith" because a trademark search was not first reviewed to assure it was not being used by another company.
Pop-up ads may cause consumer confusion and constitute trademark infringement, cases inlude:
1-800 Contacts Inc. V. WhenU.com, S.D.N.Y., No. 02 Civ.8043 (DAB), 12/22/03
Selected Articles and Reports
Intel forces yoga group to fight for its name
By D. Lazarus, San Francisco Chronicle. Intel sues the Yoga Inside Foundation for violating the chipmaker's "Intel Inside" trademark.
MetsOnline.net Ordered To Cease and Desist
MetsOnline.net site administrator Bryan Hoch -- a 20-year-old college student at the State University of New York at Rockland -- received a cease-and-desist order via electronic mail from Major League Baseball Properties dated July 25, 2002. The e-mail ordered Hoch to deactivate MetsOnline.net and transfer its domain name, as well as all information regarding its operations, to MLBP effective 5 p.m. July 30.
Ruling Expands Web Trademark Protections
By S. Lafferty. San Francisco-based attorneys for a South Carolina company have convinced a federal judge to temporarily stop a company from manipulating search engine results to confuse consumers. This article discusses unfairly using a competitor's trade name in metatags -- key words hidden in the computer code that affect search results from search engines such as Google or Alta Vista.
Forms & Resources
Federal Trademark Electronic Search System (TESS)
TESS contains more than 3 million pending, registered and dead federal trademarks. This electronic search system is intended for use by the general public.
Federal Trademark Electronic Application System (TEAS)
This is the online application system of the United States Patent and Trademark Office (USPTO). TEAS allows you to fill out a form and check it for completeness over the Internet. Using e-TEAS you can then submit the form directly to the USPTO over the internet, making an official filing on-line. Or using PrinTEAS you can print out the completed form for mailing to the USPTO.
Google Information for Webmasters
How do I get my site listed on Google? If you are responsible for a web site, the following information may be of interest to you.
InterNIC
The InterNIC® web site is a public information resource for Internet users worldwide. It provides information on the domain-name system, the domain-name registration process, and domain-name registrars.
Thomson & Thomson
Thomson & Thomson is the world leader in trademark and copyright services. Thomson offers intellectual property research products and services that have gained an unmatched reputation for reliability, accuracy and comprehensiveness. Their online service, SAEGIS, is recognized as the industry's leading online trademark research tool.
Other Useful Links
Chilling Effects Clearinghouse
A joint project of the Electronic Frontier Foundation and Harvard, Stanford, Berkeley, University of San Francisco, and University of Maine law school clinics. Chilling Effects aims to help you understand the protections that the First Amendment and intellectual property laws give to your online activities. Chilling Effects encourages respect for intellectual property law, while frowning on its misuse to "chill" legitimate activity.
Internet Corporation for Assigned Names and Numbers (ICANN)
The Internet Corporation for Assigned Names and Numbers (ICANN) is a technical coordination body for the Internet. Created in October 1998 by a broad coalition of the Internet's business, technical, academic, and user communities, ICANN is assuming responsibility for a set of technical functions previously performed under U.S. government contract by IANA and other groups. Suggested ICANN links include the following:
ICANN ASO
ICANN's Address Supporting Organization (ASO) is concerned with the system of IP addresses, such as 128.9.128.127, that uniquely identify the Internet's networked computers.ICANN Public Comment Forum
The ICANN Public Comment Forum is designed to provide interested Internet users with means to communicate online with each other, and with the ICANN Board of Directors and staff, about pending ICANN issues and activities. ICANN will regularly post proposals and recommendations for public review and comment. The Public Comment Forum provides an open threaded messaging mechanism in which public comments can be posted, reviewed, and responded to.ICANN At Large Membership Program
ICANN’s At Large Membership program is a new way for Internet users from all over the globe to participate directly in the ICANN process. The At Large Membership program is an experiment, giving interested individuals a means to be informed about and connected to the policymaking structure for the Internet's domain name and numbering systems.
Internet Assigned Numbers Authority (IANA)
The Internet Assigned Numbers Authority ( IANA) is dedicated to preserving the central coordinating functions of the global Internet for the public good. They are responsible for technical coordination of the assignment of parameters in over 120 identifier spaces used on the Internet
International Trademark Association
The International Trademark Association (INTA) is a not-for-profit worldwide membership organization of trademark owners and advisors. INTA represents trademark owners to protect and advance the importance of trademarks as essential elements of international commerce. INTA shapes public policy, advances practitioners' knowledge and educates business, the media and the public on the significance of trademarks.
U.S. Patent and Trademark Office
The PTO is a non-commercial federal entity, and one of 14 bureaus in the Department of Commerce (DOC). Its primary services include processing patents and trademarks and disseminating patent and trademark information.
Legal Information Institute: Trademark Law
