MPAA-Rated for Infringement

Sender Information:
MPAA
Sent by: (Private)
[Private]
15503 Ventura Bou
Encino, CA, 91436, USA

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Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.

There are two trademark rights: the right to use (or authorize use) and the right to register.

The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.

The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).

Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.

Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product.

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Answer: The United States Patent & Trademark Office (USPTO) keeps the US federal registry of trademarks. It has an online search capability, TESS, which contains more than 3 million pending, registered and dead federal trademarks. This database may not be complete. One should check the News page to see how current the information actually is.

Be aware: not all trademarks are contained in the US federal register. There are state trademarks, unregistered (common law marks) and foreign marks as well. A mark does not have to be registered to be valid.

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Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the mark in commerce, not from registering. However, both state and federal law can provide relief from trademark infringement.

If your opponent has registered its mark on the Patent & Trademark Office?s register, then you know that litigation about the mark could occur in federal court. If your opponent has not included any registration numbers, you still could be sued in federal court, but your opponent might simply be relying on state law (or just trying to scare you). If the C&D does not reveal any registration numbers, you should ask if the marks are registered.

If the opponent has included registration numbers, look them up on the Patent & Trademark Office's Trademark Electronic Search System (TESS). You can check the status of a trademark by entering the registration number into TESS's search engine. If your opponent's trademark is labeled "LIVE," then it is likely to be protected by federal law; if TESS labels the mark "ABANDONED," then you have reason to believe that federal law will not protect it (although even abandoned marks can garner protection in some instances). Pending trademark applications are also marked "LIVE", but they do not get a "Reg. Number" unless/until the registration issues.

A Community Trade Mark (CTM) offers regional trademark protection throughout the European Union. The CTM database of registered marks is OAMI-Online.

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Answer: There are many limits, including:

• Fair Use
  There are two situations where the doctrine of fair use prevents infringement:
  1. The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
  2. Nominative fair use
     This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant?s product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
     • his/her product or service cannot be readily identified without pointing to the registrant?s mark
     • he/she only uses as much of the mark as is necessary to identify the goods or services
     • he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant
• Parody Use
  Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
• Non-commercial Use
  If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.
• Product Comparison and News Reporting
  Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt.
• Geographic Limitations
  A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy?s Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy?s Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused.
• Non-competing or Non-confusing Use
  Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark.

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Answer: It is the domain name registrant?s responsibility to make sure that the domain does not infringe or violate someone else?s rights. According to the Policy, by applying to register or renew a domain name, you are saying that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations.

Of course, you aren?t expected to look up trademark registrations around the world or research legal issues like common law trademark rights. That?s why the Policy requires the trademark owner (the complainant) to prove bad faith and why the Policy offers domain name holders the opportunity to demonstrate that they have rights or legitimate interests in the domain name. As mentioned above, the Policy was primarily intended to deter abusive domain name registration practices, not punish ordinary domain name holders who register a family name for the purpose of putting family news and pictures online or to prevent people with a legitimate business from registering a name they are commonly known by and then offering bona fide goods and services online.

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Answer: Facts that are considered as evidence of bad faith are described in the UDRP Policy. They include acquiring the domain name primarily for the purpose of selling or renting it to the mark owner (or the mark owner?s competitor) for money or other value that greatly exceeds the costs of the domain name. This is the typical situation that the courts have called "cybersquatting."

Another circumstance that will be considered evidence of bad faith is a pattern of registering domain names in order to prevent the mark owners from using their marks as domain names; also, if you register the domain name primarily to disrupt a competitor?s business. If you intentionally use the name in a manner that confuses or misleads users into believing that your site is affiliated with or endorsed by the mark owner, and you are getting commercial value from that confusion, you will also be considered as acting in bad faith.

Panelists are also allowed to determine whether other acts, not specified in the Policy, may also amount to bad faith. For example, false or inaccurate contact information on the registration is frequently considered evidence of bad faith.

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Answer: Indeed, you can. If the mark owner is protected by US law (uses the mark in the US) then that mark owner can bring an ACPA action in a US court regardless of the domain holder's location. If the domain holder fails to show up in court, s/he may lose by default, in which case the US court will issue an order to the domain registrar or registry to cancel or transfer the domain registration to the mark owner. If the domain holder cannot be identified or located, the mark owner can bring an in rem action to obtain the domain name (see "What if the mark owner can't find the domain name holder?"). But the court must have authority over the registry or registrar holding the domain registration. All .com, .org and .net domain names are subject to the ACPA because the registry, Network Solutions, is located in the US. If the court does not have jurisdiction over the domain name registrar or registry, however, it will be difficult for the court to enforce its order outside the US. If neither the domain holder nor the mark owner has any contact in the US, then it isn't likely either can seek protection under US domestic laws, however, this is a question decided under treaties that govern international protection of trademarks. In such cases, the UDRP may be a more useful forum for the trademark owner to use.

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Answer: Normally, the domain name holder will not evaporate, and can be sued directly. In such a case, the court can order the cancellation or transfer of the domain registration, as well as require the payment of money damages to the plaintiff trademark owner.

The trademark owner can recover (1) the domain holder's profits from use of the mark, (2) the trademark owner's damages resulting from harm to the value of mark, and (3) court costs as "actual damages." In determining the award to be paid, the court can choose to award up to three times the amount of actual damages. Attorney fees may be awarded in exceptional circumstances, such as when there was a willful and malicious violation.

Instead of having to prove the amount of "actual" damages suffered as above, the mark owner can instead request payment of "statutory damages" from $1000 and $100,000 per domain name.

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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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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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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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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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Answer: 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. ICANN requires the domain registrars in .biz, .com, .info, .org, and .net to abide by the results of UDRP proceedings. They must cancel or transfer a domain registration as a UDRP Panel directs. Domain holders agree to this procedure in their domain registration contracts.

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.

The UDRP Rules outline the actual process for filing a complaint (if you are a trademark owner) and for responding to a complaint (if you are the domain name holder). The Policy and the Rules also explain some of the basics of the proceedings, such as how to chose a Provider, how Panels make their decisions, how the parties are notified of the outcome, what language will be used in the proceeding, the availability and effect of court proceedings, and the types of remedies available.

Each of the Providers also has its own Supplemental Rules to cover all the bases. The UDRP currently applies to .com, .org, .net, and a few country code top level domains (ccTLDs) including .ac, .mx, and .tv. It will soon apply to the new generic top level domains (gTLDs) .info and .biz.

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Answer: Your opponent may describe a parade of horribles to demonstrate with exquisite detail what it will do to you unless you capitulate. This list generally includes, but is not limited to:
(1) ceasing use of the allegedly infringing mark or surrendering the domain name;
(2) rendering an accounting;
(3) posting corrective advertising;
(4) obtaining an injunction;
(5) recovering costs and fees.

Though these things sound awful, they are not medieval tortures (although that may be a function of the fact that Torquemada never thought of them).

Ceasing use of the mark is self-explanatory: your opponent wants you to stop using the mark. Your opponent might also ask you to surrender your domain name if they believe the domain name causes (or is likely to cause) confusion with their trademark. For example, under ICANN rules (the UDRP), you may have to surrender your domain name if the following three conditions are satisfied:
(1) your domain name is identical or confusingly similar to your opponent?s;
(2) you have no legitimate right or interest in the name (in other words, you are not using the name to conduct a bona fide business or for non-commercial fair use purposes); and
(3) your name is registered and used in bad faith.

An accounting basically means that you disclose the following information to your opponent:
(1) the date you began using the allegedly infringing mark;
(2) the names of individuals who knew of the use when it began;
(3) the amount of traffic at your web site or business at your store; and
(4) your profits and revenues during the time you used the allegedly infringing mark.

Corrective advertising means you give notice to the public that you were using a mark confusingly similar to your opponent?s, and that you are not affiliated with your opponent.

An injunction is a judicial order to do something. An injunction can prevent you from using the allegedly infringing trademark.

Some provisions of the Lanham Act permit a trademark holder to recover attorney?s fees and court costs from an infringer.

That your opponent has listed these various remedies does not mean that it is entitled to them; do not confuse the smorgasbord of legal options with your opponent?s right to inflict any of them on you.

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Answer: This website is meant as an aid to help you decipher Cease and Desist notices so you can make informed decisions about your course of action. If, after reading this, you think the C&D you received might have some merit, or you think you might engage your opponent in battle even if the C&D is, in your opinion, baseless, consultation with an intellectual property attorney is always a good idea. You can find an intellectual property attorney at www.martindale.com or by calling your state or local Bar Association and asking for a referral.

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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.