Lesson 1

Lesson 2

Lesson 3

Lesson 4

Lesson 5

Lesson Three: The basics of trademark laws

This section includes: history, definitions of trademark, tradename and service mark, trademark symbol, Internet, cybersquatting, news items, and domain names.

Lesson Three will provide you with the background information needed to better comprehend what a trademark is and the existing U.S. trademark laws. Every student should know that the United States trademark law begins in Title 15 section 1051 -1127 of the United States Codes (15 U.S.C. § 1051). The entire text of the Trademark Law can be found on the web at: http://fedlaw.gsa.gov/fedfra23.htm The official U.S. Patent and Trademark Office web site is located at http://www.uspto.gov.

Brief Trademark Law History
Let's begin Lesson Three with a brief history of the U.S. trademark laws.

What is Trademark?
A trademark includes any word, name, symbol, or device, or any combination thereof -
1. used by a person, or
2. which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. (1)

What is Trade Name?
A trade name and commercial name mean any name used by a person to identify his or her business or vocation. (2)

What is Service Mark?
A service mark is any word, name, symbol, or device, or any combination thereof-
1. used by a person, or
2. which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinguished features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor. (3)

What Does Mark Mean?
The term mark includes any trademark, service mark, collective mark, or certification mark. (4)

Other Marks
Distinctive Mark
Descriptive Mark
Certification Mark
Collective Mark

Who Needs to Include the Trademark Symbol?
Unlike the copyright symbol, the "R in a circle", or ® symbol, informs the public that the mark is registered with the U.S. Patent and Trademark Office. Failure to provide the trademark symbol may result in some loss of your trademark rights. (5)

The use of the "TM" (or "SM" for service mark) next to a mark is to inform the world that someone has claimed ownership of the mark. There is no legal requirement to providing this type of notice.

Other Issues
There are many more issues for discussion in relation to trademark laws, such as the duration of a trademark, more details about the trademark law, fair use and trademarks, the Official Gazette publication, trademark search, and international trademark laws. At the end of this lesson, you will find a list of web sites that will provide more information about the above topics.

Trademarks and its Relation to the Internet
One issue involving trademarks and its relation to the Internet is the ownership of domain names. A domain name is the base of an email address. "sandycompany.com" is the domain name in the email address of sandyrunning@sandycompany.com. Domain names are used to find both people and companies on the web. The five major domain name categories are .com for commercial entities, .gov for government sites, .edu for educational institutions, .org for organizations, and .net for networks. With the increase in e-commerce, the .com addresses have grown at a phenomenal rate.

It is common practice for companies to register for a domain name that resembles the company's name. If consumers are familiar with the company name and the domain resembles the company, consumers know they will find the information they need. Having a domain name that resembles the company's name makes it easy for consumers to find and remember the web site.

Problems began to arise when competitors and individuals, looking to make a quick profit, began registering for domain names that are identical or similar to another company and then selling back the domain name to the company. There are two issues here: making a profit and causing confusion to the consumer. You are infringing on a person's or company's trademark when you imply or cause confusion to the consumer. Consumers become confused when a competitor or individual registers a domain name that is similar to an established company's trademark. Prior to 1999, there was no law to protect trademark owners and domain name registration. Note: this would be an interesting topic for a paper.

Cybersquatting Law
On November 29, 1999, President Clinton signed into law the Anticybersquatting Consumer Protection Act, Title III of S. 1948 (106th Congress, 1st Session, 1999) making cybersquatting illegal. Cybersquatting is registering a domain name that a famous company will want to use and then selling that name back to the company for a profit. With the growth of e-commerce, cybersquatting has been gaining a lot of attention during the past five years. This law provides some new protection to trademark owners and individuals. The Anticybersquatting Consumer Protection Act states that a "person shall be liable in a civil action by the owner of the mark, including a personal name which is protected as a mark under this section, if, without regard to the goods and services of the parties, that person has a bad faith intent to profit from that mark, including a personal name," (6) and registers, sells, or uses a domain name that is protected by trademark laws.

The law further describes how the courts will "determine whether a person has a bad faith intent" as described below (7):

• the trademark rights of the person in the domain name;
• extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
• the person's prior use;
• the person's bona fide noncommercial or fair use of the mark;
• the person's intent to divert consumers of the mark owner's online site;
• the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or anyone else for a profit;
• the person's provision of material and misleading false contact information when registering or after the registration process;
• the person's registration or acquisition of multiple domain names which are identical or confusingly similar to the registered mark; and
• including a mark in the person's domain name registration.

Ford motor company has also filled suit against an individual auctioning domain names on eBay.com that are similar to Ford's products. Ford has won a temporary restraining. (9)

Registering a Domain Name
You can register for a domain name through the Network Solutions, Inc. (NSI), a telecommunications network integration company. Prior to NSI, it was the U.S. Government's National Science Foundation that was responsible for assigning all Internet domain names. Due to all the problems associate with trademarks and domain name assignments, Network Solution's has established a domain name dispute policy. The policy can be found at http://www.networksolutions.com/help/legal.html In the news, Network Solutions, Inc. was sued for not screening new domain name registrants for possible trademark infringement. For more information, read the article at web site: http://www.netsol.com/news/1999/pr_19990430.html

World Intellectual Property Organization's Internet Domain Name Process http://ecommerce.wipo.int/domians/process/eng/processhome.html

Findlaw http://www.findlaw.com (click on the link Intellectual Property, then click on Trademark)

Fenwick and West http://www.fenwick.com

Prencipe, Loretta W. "Trademarks and metatags don't mix." InfoWorld, April 23, 2001 v23 i17 p83