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 Chilling Effects Clearinghouse > Documenting Your Domain Defense > Notices > Infringement of trademark and defamation of Piedmont Hawthorne Aviation (NoticeID 588, http://chillingeffects.org/N/588) Printer-friendly version

February 03, 2003

 

Sender Information:
[Private]
Sent by: [Private]
[Private]
[Private]
Knoxville, TN, 37902

Recipient Information:
[Private]
[Private]
Friendsville, TN, 37737, USA


Sent via: post
Re: Infringement of trademark and defamation of Piedmont Hawthorne Aviation

Dear [Private]:
This firm represents [Private]; the owner of trademark and service mark rights for the term [Private]. Our client has recently advised us that you are operating a website under the domain name www.[Private].com. Please note, and as you are likely aware, [Private]is a leading provider for aviation supplies and services. [Private] has been using the trademark and service mark at issue extenstively in commerce for a number of years. Your use of this domain name constitues an infringment upon our client's trademark and service mark rights. This infringment is likely to cause consumer confusion and the loss and dilution of good will established by our client under this trademark and service mark.

[Private] has utilized extensive resources in obtaining, promoting, and using this trademark and service mark and considers these trademark and service mark rights to constitute extremely valuable assets for the company. Because of your infringement, [Private] strongly believes that the general consuming public is now likely to believe that there is an affiliation or association between [Private], and the good will and recognition attached to its trademark and service mark rights, and yourself and your website. This infringment constitutes unfair competition and has resulted in the false designation of origin regarding these trademark and service mark rights in violation of well-established trademark and unfair competition laws.

In addition, a review of your website reveals that you have posted numerous defamatory comments regarding [Private], its officers and employees, its alleged conduct related to your aviation accident, and its alleged conduct regarding completely unrelated aviation incidents. This defamatory content has placed [Private] in a false light and has injured, and continues to injure, its good will and standing with the general public.

This letter is a formal demand that you immediately cease and desist from the use of the trademark and service mark [Private], and any related trademarks or service marks, including the use of the domain name www.[Private].com. Furthermore, we hereby demand that you cancel the domain name www.[Private].com, as well as any other domain names which include this trademark and/or service mark, as it creates consumer confusion with [Private] and its goods and services, and provide written confirmation of cancellation. Finally, [Private] hereby demands that you remove any and all defamatory content from any and all websites which you have registered or other publicaitons which you have presented to the general public and to immediatly cease and desist making defamatory statements about it.

Upon your agreement to remove all such defamatory content, [Private] will submit a list of all such items to your attention. Please note that [Private] considers all references to any aviation accidents not involving you and any allegations by you involving [Private] involvement in any such accidents to be defamatory and damaging.

Please confirm to me in writing within seven (7) days from the date of this letter that you will comply with the aforementioned demand to immediately cease and desist all of this conduct. Please note that [Private] reserves its right to take all necessary steps to protect its proprietary rights should you not fully comply with the aforementioned demand.

Should you have any additional questions regarding this matter, please do not hesitate to contact me. Otherwise, I look foward to your compliance with this cease and desist demand and your confirmation in writing of the same within seven (7) days.

 
FAQ: Questions and Answers

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Question: What is a trademark and why does it get special protection?

Answer: 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.

Consumers reap the benefit when trademarks are protected. By preventing anyone but the actual mark owner from labeling goods with the mark, it helps prevent consumers getting cheated by shoddy knock-off imitators. It encourages mark owners to maintain quality goods so that customers will reward them by looking for their label as an indication of excellence. Consumers as well as mark owners benefit from trademark laws.

Trademark owners spend a lot of time, money, and effort to protect the distinctiveness of their trademark. Once trademarks have become diluted to the point where the general public no longer recognizes them as distinctly applying to a particular manufacturer, they lose their value to the trademark owner because they no longer attract customers to his particular goods. For example, ?aspirin? used to be the trademark of one particular manufacturer of synthesized acetylsalicylic acid, but is now used to generically describe that product regardless of who produces it. Trademarks owners must be vigilant to make sure that their trademarks rights are not being infringed and that their trademarks are not becoming diluted or generic.

The birth of the Internet and the use of character strings (domain names) to represent Internet addresses has presented trademark owners with a whole new set of problems. It is often too expensive to register every variation of a trademark in every top level domain. Therefore, trademark owners must make sure that the people who register domain names that are either the same as or confusingly similar to a trademark are not using the domain name in a way that infringes on the trademark. One way to ensure that the trademark owner will not lose its rights in the mark is to file a UDRP complaint so that the Panel can decide whether the domain was registered in order to take unfair advantage of the mark owner. The Panel may decide that the trademark owner was wrong and had nothing to worry about, but unless the trademark owner is vigilant and files the complaint, it may never know for sure whether its rights were being abused.


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Question: What is the difference between a trademark and a service mark?

Answer: Trademarks refer to goods and products, that is, physical commodities which may be natural or manufactured or produced, and which are sold or otherwise transported or distributed.

Service marks refer to intangible activities which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.

Because the legal rights are essentially the same, the term "trademark" is frequently used to refer to both types of marks.

To learn about other types of marks, see Chapter 100 of the USPTO's Trademark Manual of Examining Procedure.

To tell whether something is a good or a service, see 37 C.F.R. ?6.1.


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Question: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?

Answer: The ACPA [codified as 15 USC 1125(d)] is aimed at people who register a domain name with the intention of taking financial advantage of another's trademark. For instance, if BURGER KING did not have a web site, and you registered www.BURGERKING.com with the intent of selling the site to BURGER KING for a royal ransom, you could be liable under ACPA.

ACPA applies to people who:
(1) have a bad faith intent to profit from a domain name; and
(2) register, use or traffic in a domain name;
(3) that is identical, confusingly similar, or dilutive of certain trademarks. The trademark does not have to be registered.

ACPA provides that cyberpirates can be fined between $1,000 and $100,000 per domain name for which they are found liable, as well as being forced to transfer the domain name.

Somewhat more broadly, the Act is meant to reduce consumers' confusion about the source and sponsorship of Internet web pages. The idea is to provide customers with a measure of reliability, so that when they visit www.burgerking.com, they will be able to find actual Burger King products, not something entirely different. It also protects mark owners from loss of customer goodwill that might occur if others used the trademark to market disreputable goods or services.

See the module on ACPA to find out more about bad faith and legitimate defenses.


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Question: Who can use the ACPA?

Answer: The owner of any trademark protected under US federal law, whether registered or not, so long as the mark

  1. is distinctive at the time of registration of the domain name, or
  2. is a famous mark at the time of registration, or
  3. is a "mark, word or name" that is protected because it is reserved for use by the Red Cross or the U.S. Olympic Committee.


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Question: How does the ACPA apply to domain names?

Answer: It makes it illegal to register, "traffic in" or use a domain name is identical or confusingly similar to a distinctive or famous mark (or which dilutes a famous mark).


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Question: What constitutes "bad faith" use of a domain name?

Answer: The ACPA instructs the courts to consider a number of factors to determine the presence of bad faith. These are enumerated in the paragraphs below, but many involve new concepts that are rather vaguely defined. It may take some time before courts decide exactly how these new terms should be interpreted.


  1. A court is likely to decide that a domain name registrant acquired or used the name in bad faith if s/he sought to divert customers from a trademark owner's website to another that, either for purposes of commercial gain or to tarnish the mark, could harm the goodwill represented by the mark. "Goodwill" is a legal term indicating the valuable relationship or familiarity that exists between businesses and their customers and is often embodied in their trademark symbols. It can be harmed if the domain name is likely to cause confusion about what organization created or sponsored a website. Bad faith from attempted commercial gain can arise if a domain name holder steals customers because the name is so similar to a trademark. For example, a shoe retailer might hold www.reabok.com, hoping to steal shoe buyers from customers looking for Reebok shoes. Bad faith from tarnishing can arise if a domain name similar to a trademark leads web surfers to a site, such as a pornographic website, that tends to harm the "good name" of the trademark owner. Or a pornographic website at www.reabok.com could create an unwholesome association that Reebok would like to avoid. (Although, Reebok may be considered a famous mark


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    Question: Is it possible to hold a domain name in good faith even if it is identical or confusingly similar to another's trademark?

    Answer: The ACPA is forgiving of legitimate uses of domain names. There is less likely to be a violation of the Act if the domain name holder actually has some intellectual property rights in the name, or if the person has previously used the domain name in connection with bona fide offering of goods or services. Operating a domain name to which you have fairly entrenched trademark rights, or having operated a sales website under the domain name for a long time, is somewhat safer.

    Take note, however, that this safety is illusory if your domain name resembles (or is) a famous mark. Thus an Internet service provider, Virtual Works, lost a case to Volkswagen, over its domain name www.vw.net, because the "VW" mark is famous, even though VW is the abbreviation of Virtual Works, and even though they had operated the site for several years.

    If your domain name is your own name, or a name by which you are often referred, this is more likely to be deemed a good faith use. Edwin Von Aschenbach will probably be safe in registering www.vonaschenbach.com, even if Von Aschenbach, Co., manufactures high quality desks and "Von Aschenbach" is a trademark in the sale of desks. Edwin Pepsy should be more careful.


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    Question: What about noncommercial uses?

    Answer: According to the Fourth Circuit Court of Appeals, "the Federal Trademark Dilution Act of 1995 ("FTDA") and the Anticybersquatting Consumer Protection Act of 1999 ("ACPA"), Congress left little doubt that it did not intend for trademark laws to impinge the First Amendment rights of critics and commentators. The dilution statute applies to only a 'commercial use in commerce of a mark,' 15 U.S.C.


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    Question: What is trademark infringement?

    Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.


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    Question: What implication does alleged confusion have on claims of trademark infringement?

    Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include:

    • proof of actual confusion
    • strength of the established mark
    • proximity of the goods in the marketplace
    • similarity of the marks? sound
    • appearance and meaning
    • how the goods are marketed
    • type of product and how discerning the customer is
    • intent behind selecting the mark
    • likelihood of expansion in the market of the goods


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    Question: What is trademark dilution?

    Answer: A type of infringement of a famous trademark in which the defendant's use, while not causing a likelihood of confusion, tarnishes the image or blurs the distintiveness of the plaintiff's mark. For example, if someone tries to sell "KODAK" pianos, KODAK could stop the person--even if consumers were not confused--because "KODAK" is a famous mark, and its use on products other than film and film-printing accessories (or other products on which Eastman Kodak places the mark) dilutes its uniqueness.

    Many states have anti-dilution laws. The federal government only recently enacted anti-dilution legislation; see the Federal Trademark Dilution Act at 15 USC 1125(c).


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    Question: What is "goodwill"?

    Answer: Goodwill is a business or trademark owner's image, relationship with customers and suppliers, good reputation, and expectation of repeat patronage. It is the value a trademark owner builds in a brand.


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    Question: What is false designation of origin?

    Answer: It covers similar ground to trademark infringement, but is more specific to misrepresentation of source, and applies even when there is no trademark at issue. If your website makes it appear that you sell products made by Company X, but in fact you make these products in your garage, Company X might accuse you of falsely designating the origin of (or "passing off") your items.


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    Question: What is unfair competition?

    Answer: "Unfair competition" covers a wide range of kinds of unjust business behavior---so many kinds, in fact, that it is impossible to give one simple general definition. In essence, unfair competition means trademark infringement or false advertising to confuse the public. In most states, only commercial competitors can be engaged in "unfair competition."


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    Question: What is false designation of origin?

    Answer: It covers similar ground to trademark infringement, but is more specific to misrepresentation of source, and applies even when there is no trademark at issue. If your website makes it appear that you sell products made by Company X, but in fact you make these products in your garage, Company X might accuse you of falsely designating the origin of (or "passing off") your items.


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    Question: What is defamation?

    Answer: An attack by speech on the good reputation of a person or business entity. Speech that involves a public figure--such as a corporation--is only defamatory if it is false and said with actual malice. It also must be factual rather than an expression of an opinion. In the United States, because of our strong free speech protections, it is almost impossible to prove defamation of a public figure.


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    Question: What is the legal definition of defamation?

    Answer: The elements that must be proved to establish defamation are: (1) A publication to one other than the person defamed; (2) of a false statement of fact; (3) which is understood as being of and concerning the plaintiff; and (4) which is understood in such a way as to tend to harm the reputation of plaintiff.


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    Question: Does it make any difference if I am commenting on a product or company rather than a person?

    Answer: Product disparagement law prohibits certain false claims about another's goods or services. While a defamatory statement harms the reputation and character of a person or corporation, a product disparaging statement harms the marketability of the goods being disparaged. Product disparagement is typically harder to prove.


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    Question: What is the "publication" of a defamatory statement?

    Answer: Publication is the dissemination of the defamatory statement to any person other than the person about whom the statement is written or spoken.


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    Question: What is disparagement?

    Answer: As defined in Black's Law Dictionary (7th ed. 1999), disparagement is "A false and injurious statement that discredits or detracts from the reputation of another's property, product, or business. To recover in tort for disparagement, the plaintiff must prove that the statement caused a third party to take some action resulting in specific pecuniary loss to the plaintiff."


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    Question: How do lawyers "buy time" when a cease and desist letter is received by a client?

    Answer: What a lawyer will often do to maintain the status quo is to send a response to the demand letter, within the stated time, saying something like this: We are in receipt of your letter of (date) "Please be advised that we are investigating the matter and will be in contact with you shortly." This letter ordinarily gives additional time to research the allegations, and should give you some additional time to contact a lawyer if you need to.


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    Question: What does the "reservation of rights" language mean? What are they "waiving" at me?

    Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.


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