FAQ: Questions and Answers

[back to notice text] Question: Can a mailing list archive really be held liable for allowing a spammer to post? Answer: Unlikely. A mailing list archive, like other online service providers hosting user-supplied content, is protected from non-intellectual property claims by CDA 230 (see Can an ISP or the host of the message board or cha...?). For intellectual property claims, the facts are unlikely to make you liable for a spammer's conduct. [back to notice text] Question: What can be protected as a trademark? Answer: You can protect names (such as company names, product names) domain names if they label a product or service images symbols logos slogans or phrases colors product design product packaging (known as trade dress) [back to notice text] Question: What exactly are the rights a trademark owner has? 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. [back to notice text] Question: What are the limits of trademark rights? Answer: There are many limits, including: Fair Use There are two situations where the doctrine of fair use prevents infringement: 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. 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. [back to notice text] Question: Where can I find federal trademark law? Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United States Patent & Trademark Office as well as those that are in use but never registered. Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and remedies. See the links to court sites provided by the Legal Information Insitute. [back to notice text] Question: Where can I find federal trademark registrations? 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. [back to notice text] Question: What facts should a C&D include? Answer: Recitation of Facts. Read this section of the letter carefully. It should contain some or all of the following information: (1) the trademark that is allegedly being infringed; (2) the trademark, domain name or other use that is allegedly doing the infringing; (3) the products and services on which your opponent uses the allegedly infringed mark; (4) the date your opponent commenced such use; and (5) the registration numbers, if the trademarks are registered with the Patent & Trademark Office. [back to notice text] Question: What is contributory trademark infringement? Answer: Even if you are not using someone?s mark directly in a product or service you sell, your opponent may say you have liability under the theory of ?contributory trademark infringement.? This liability may exist if you knowingly allow someone else to violate another party?s trademark rights and personally gain from such violation. It may also exist if you intentionally encourage another person to violate a trademark. For example, in one case a court found that the operator of a California swap meet was liable for contributory trademark infringement because it was aware that vendors at its swap meet were selling counterfeit recordings that violated the trademark of the company that owned the rights to the recordings. While the swap meet operator did not sell the counterfeit items itself, it profited on the sale of the items by selling booth space to the vendors and collecting an entrance fee from the customers buying the infringing products. In another case the manufacturer of a generic drug was found liable for contributory trademark infringement because it continued to supply the drug to pharmacists it knew were mislabeling the drug with the name of the trademarked medication. However in another case a court felt that a company providing domain name registration, had less control over the use of its service and was not liable for contributory trademark infringement when someone registered a domain name that infringed a trademark. The important issues in determining liability for contributory trademark infringement are if you are aware of the infringement, if you have the ability to monitor and control the use of your product or service, and you are in a position to receive some benefit from the violation. [back to notice text] Question: Can an online service provider (OSP) be held contributorily liable for acts of trademark infringement by one of its users? Answer: Under section 512(c) of the DMCA an OSP will not be held liable for instances of copyright infringement so long as the OSP satisfies certain statutory requirements. (See What are the DMCA Safe Harbor Provisions?.) However, there is no equivalent legislation pertaining to trademark infringement, and given the paucity of caselaw concerning liability of OSPs in such instances, it remains an open question as to whether or not an OSP could, or should, be held liable for acts of trademark infringement by its users. In trademark law contributory liability exists when a manufacturer or distributor intentionally induces another party to infringe a valid trademark, or when it continues to supply products to a party that it knows, or has reason to know, is using the products to engage in trademark infringement. Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982). (See What is contributory trademark infringement?.) Lower courts have since disagreed somewhat over what exactly satisfies the ?know, or has reason to know? standard. In one case, Fonovisa v. Cherry Auction, 76 F.3d 259 (9th Cir. 1996), the Ninth Circuit Court of Appeals held that a flea market operator could not ignore, ?with impunity,? the actions of its vendors who were ?blatantly? engaging in trademark infringement. In another case, Gucci America, Inc. v. Hall & Associates, 135 F. Supp. 2d 409 (S.D.N.Y. 2001), the District Court for the Southern District of New York refused to grant an ISP?s motion to dismiss in a case involving instances of trademark infringement occurring on a subscriber?s website hosted by the ISP. There the plaintiff allegedly had sent two e-mails to the ISP regarding the alleged infringement, but the ISP failed to take any action. Collectively, these few cases suggest that an OSP could be found contributorily liable for acts of trademark infringement. In any such suit, one of the main issues would be to what extent the OSP knew, or should have known, of the infringing acts? That is to say, what did the OSP do to police its service, or what should it have done? And more specifically, if the plaintiff attempted to notify the OSP of the infringing acts, what kind of notice would suffice? Under section 512 of the DMCA, the notice requirements are made quite clear. As the law stands now, however, that issue remains far less clear in the area of trademark infringement. See also Do the safe harbor provisions of section 512(c) ap...?. [back to notice text] Question: What is a "counterfeit" mark? Answer: The Lanham Act defines a counterfeit mark as a false mark which is identical to or substantially indistinguishable from a registered mark. [back to notice text] 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 [back to notice text] Question: What are the limits on dilution? Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark. A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name "candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board games. Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services. The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even though it may not cause confusion to the consumer. The following uses of a famous mark are specifically permitted under the Act: 1) Fair use in comparative advertising to identify the goods or services of the owner of the mark. 2) Noncommercial uses of a mark. 3) All forms of news reporting and news commentary. In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet others have said that merely being famous in one's product line is sufficient. Many states also have antidilution laws protecting mark owners. [back to notice text] Question: What is this laundry list of things the C&D says will happen if I don't obey? 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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