Chilling Effects Clearinghouse > Copyright > Notices > Scientology claims copyright and trademark infringement (NoticeID 544, http://chillingeffects.org/N/544)

Location: https://www.chillingeffects.org/copyright/notice.cgi?NoticeID=544

Scientology claims copyright and trademark infringement

January 31, 2003

Sender Information:
Church of Scientology, Religious Technology Center
Sent by: [Private]
Moxon & Kobrin
Los Angeles, CA, 90010, US

Recipient Information:
[Private]
[Private]
Zurich, 8050, Switzerla

Sent via: email
Re: Notice of Copyright and Trademark Infringement

Our office represents Church of Scientology International ("CSI") and Religious
Technology Center ("RTC"), non-profit religious corporations located in Los Angeles,
California, with respect to intellectual property matters. Our office also represents the L. Ron Hubbard Library, the owner of the copyrights to certain photographs and works of Mr. L. Ron Hubbard, the founder of the Scientology religion, and we represent New Era Publications, Inc. ("NEPI"), exclusive licensee of the copyrights to the published works of the Scientology religion, which includes numerous books and tapes and tape transcripts. In addition, we represent Church of Scientology Flag Service Organization ("FSO"), which owns the rights in various magazines and photographs.

We have been informed that you have placed numerous pages of copyrighted
works and trademarks that belong to our clients on your web page without our clients'
authorization. Thus, your actions in this regard violates Swiss copyright law.
Accordingly, we request that these infringements be removed immediately.

Because of the sheer volume of the infringements that are on your web page, we
have broken them down into categories and numbered them as follows:

Chart: Terror.Snm-Hgkz.ch Infringements

I. Identification And Location of Infringing Works (Photographs)
Nos. 1 6

Description URL

1. Photograph of a group of
uniformed people with three
females in the front row
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/photoalbum/b2.jpg

2. Small photograph of a group of
uniformed people
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/events/lisa_mcpherson/clan1.jpg

3. Photograph of a group of
uniformed people
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/photoalbum/b1.jpg

4. Photograph of a person at a
podium under a seal
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/photoalbum/propaganda/6.jpg

5. Photograph of a person in
uniform
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/photoalbum/propaganda/8.jpg

6. Photograph of a man in white
with dark glasses, displaying
"Hubbard & Clearwater - the
early years"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/h_c.gif

II. Identification of Copyrights of The Photographs In
1 - 6 Above

The infringements set forth in Nos. 1 through 6 above are taken from various
publications, the copyrights of which belong to our clients. Below is a detailed
description of the publication in which each of the photographs is contained in the same
order as listed above.

Description
Issue
Publication
Date
Page

1. Source: Magazine of the Flag Land Base
95
1995
2

2. Source: Magazine of the Flag Land Base
100
1996
41

3. Source: Magazine of the Flag Land Base
100
1996
41

4. Impact: Magazine of the International
Association of Scientologists
50
1993
33

5. KSW News
48
1996
2

6. L. Ron Hubbard - A Profile
--
1995
116

III. Identification of Infringing Works (Documents)
Nos. 7 - 21

Description
URL

7. "Non-SO Members in SO Orgs"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/greece/seaorg3.gif

8. "Commodore's Messengers"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/greece/cmo.gif

9. "The Sea Organization"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/greece/seaorg1.gif &
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/greece/seaorg2.gif

10. "Routine 3 Heaven"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/HCOB/FU-HCOB-630511.html

11. "Security Check Children"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/HCOB/FU-HCOB-610921.html

12. "HCO WW Security Forms"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/HCOB/FU-HCOB-610928.html

13. "Dead Agenting"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/enemy_names/
dead_agenting.html

14. "Targets, Defense"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/enemy_names/targets.html

15. "Sec Check Whole Track"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/HCOB/FU-HCOB-610619.html

16. "The Scientology Emotional Tone
Scale"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/tonelevel.html

17. "Routine 3N - Line Plots"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/HCOB/FU-HCOB-630714.html

18. "Computer Series 6 INCOMM"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/greece/incomm1.gif
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/greece/incomm2.gif
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/greece/incomm3.gif

19. Materials Grade Chart
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/grade_chart.html

20. Materials Grade Chart
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/grd_chrt.htm

21. "Enemy Names"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/disk/enemy/index.htm

IV. Identification of Copyrights of The Text Documents
Nos. 7 - 21

Description
Registration Nbr

7. Flag Order 2772 "Non-SO
Members in SO Orgs"
TXu 374-312

8. Flag Order 3729 "Commodore's
Messengers"
TXu 374-312

9. Flag Order 137 "The Sea
Organization"
TXu 840-811

10. HCO Bulletin of May 11, 1963
"Routine 3 - Heaven"
A 640105
RE 561-335

11. HCO Bulletin of 21 September
1961 "Security Check Children"
TX 1-143-720
RE 438-055

12. HCO Bulletin of 28 September
1961 "HCO WW Security Forms"
A 785007
TX 2-478-862

13. HCO Policy Letter of 28 October
1968 "Press Releases"
HCO Policy Letter of 21 Nov.
1972 "How to Handle Black
Propaganda"
HCO Policy Letter of 25 February
1966 "Attacks on Scientology"
TX 2-251-232;
TX 2-478-866;
A 592-037;
TX 2-646-306

14. HCO Policy Letter of 16 February
1969 "Targets, Defense"
TXu 598-760

15. HCO Bulletin of 19 June 1961
"Sec Check Whole Track"
TX 1-159-379

16. HCO Bulletin of 25 September
1971RB "Tone Scale in Full"
TX 2-617-669

17. HCO Bulletin of 14 July 1963
"Routine 3N - Line Plots"
TX 1-276-429
RE 561-211

18. HCO Policy Letter of 23
November 1985 "INCOMM"
TX 2-325-017

19 & 20. CSI is the owner of the copyrights to the publication: "The Bridge of
Knowledge," published in 1993, which contained "The Dianetics and
Scientology Materials Grade Chart."

21. BPI is the owner of the copyrights to the work HCO Policy Letter of 16
February 1969 "Enemy Names."

V. Identification of Infringing Works (Documents)
Nos. 22 - 39

Description
URL

22. "21 May 78 Telex to CO FSO"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/11.gif

23. "9 September 76"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/6b.gif

24. "29 September 78 Telex to CO
FSO"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/11b.gif

25. "CO CMO, INFO, Confidential"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/12.gif

26. "R Advices for Division 2"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/2.gif

27. "1 January 76"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/3.gif

28. "3 January 76"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/3b.gif

29. "10 January 76"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/4.gif

30. "30 January 76"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/5.gif

31. "6 September 76"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/a
rchive/hubbandcw/6.gif

32. "5 January 77 Despatch to Treas
Sec"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/7.gif

33. "14 March 77 Telex to A/CO FSO"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/7b.gif

34. "15 March 77 Telex to FCCI PO"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/8.gif

35. "16 March 77 Telex to ASRs and
Letter Reges"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/8a.gif

36. "21 March 77 Telex to ASRs and
Letter Reges"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/8b.gif

37. "23 May 77 Telex to CO FSO"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/8c.gif

38. "26 February 78 Telex to CO FSO"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/10.gif

39. "17 March 78 Telex to CO FSO"
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/hubbandcw/10b.gif

VI. Identification of Copyrights of The Text Documents
Nos. 22 - 39

Nos. 22 through 39 are unpublished copyrighted works telexes that were sent by
L. Ron Hubbard from 1976 through 1979 the copyrights of which belong to the L. Ron
Hubbard Library.

VII. Identification of Unpublished Confidential Works

RTC is also the owner of the confidential Advanced Technology of the
Scientology religion and the holder of exclusive rights under the copyrights applicable to the Advanced Technology materials. The Advanced Technology materials are
confidential, unpublished, copyrighted works. RTC's works include, among others, the individual works comprising a level known as "OT III" and another such level known as "NOTs". These works are registered with the United States Copyright Office under registration numbers: TXu 290-496 and TXu 257-326.

One of the OT III works has been placed on the web site "terror.snm-
hgkz.ch/scientology_mirrors/www.clambake.org/" in different formats and languages on many separate locations, along with a substantial portion of one of the NOTs works. You have placed these on your web page without the authorization of our client under the following URLs:

http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/OTIII-scholar/
ot3-data-1.gif
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/bork.html
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuleaf.zip
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuleaf.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/
xenu-Letter.pdf
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenu-A4.pdf
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenusw.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenusw.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenunl.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenunl.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenufr.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenufr.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenufi.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenufi.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuno.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuno.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenusp.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenusp.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuit.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuit.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuge.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuge.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuaf.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuaf.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenupo.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuru-w.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuru-k.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuheb.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuheb.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuesp.htm
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenugr.doc
http://terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org/archive/leaflet/xenuro.htm

Your actions in this regard violate Swiss and United States copyright law.
Copyright subsists in Switzerland in our clients' materials by virtue of the Berne
Convention.

For your information, a Swedish court enjoined a defendant who engaged in the
same and similar infringements, in addition to finding that his actions in placing our
client's copyrighted works on the Internet violated the owner's rights under Swedish
copyright law. This defendant was also fined for his illegal actions and ordered to pay
$161,000 in litigation costs. This judgment was appealed and subsequently affirmed on March 9, 2001. This same infringer was separately found guilty of criminal violations of the copyright act with respect to RTC's materials.

RTC has obtained numerous permanent injunctions concerning Internet
infringements of the same and other copyrighted works. For instance, in Religious
Technology Center v. Henson, CV 96-20271 RMW, a jury in the United States District Court in San Jose, California assessed damages in the amount of $75,000 against a Mr. Henson for copyright infringement on the Internet. Mr. Henson was also permanently enjoined by the court against further infringements. A United States District Court in the state of Virginia granted judgment for damages, costs, and a permanent injunction related to similar copyright infringement. Permanent injunctions have also been entered in three additional U.S. cases.

VIII. Unauthorized Use Of Federally Registered Trademarks

RTC is also the owner of the trademarks and service marks of the Scientology
religion. RTC's federally registered trademarks have also been placed on the
"terror.snm-hgkz.ch/scientology_mirrors/www.clambake.org" web site without RTC's
authorization as follows:

1. L. Ron Hubbard Signature which is
registered with the United States
Patent and Trademark Office under
registration number 1,821,751.

The L. Ron Hubbard Signature is
registered in Switzerland under
registration numbers 410,213;
326,617.

http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/ot/ot.gif

2. Scientology Cross which is
registered with the United States
Patent and Trademark Office
under registration numbers
1,012,452; 1,302,525 and
1,325,117.

The Scientology Cross is registered
in Switzerland under registration
numbers 409,656; 321,834.
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/techniques/cross.jpg

3. Sea Org symbol which is registered
with the United States Patent and
Trademark Office under
registration numbers 1,334,758;
1,326,867; 0,877,948; 1,317,343;
as well as the Sea Horse symbol
which is a trademark owned by
RTC.

The Sea Org symbol is registered
in Switzerland under registration
Numbers 409,659; 321,833.
http://terror.snm-hgkz.ch/
scientology_mirrors/www.clambake.org/
archive/greece/Contract.gif

All of the trademarks being hosted by you on your web page are registered in
Switzerland and have been published in the commercial registration newspaper. Your use of these trade and service marks is being done without the trademark owner's permission and without license. Additionally, trademark rights subsist in Switzerland in RTC's trademarks by virtue of the Paris Convention (to which Switzerland and the United States are signatories) which provides that United States citizens shall be given the same treatment in Switzerland with regard to trademark protection as that available to Switzerland citizens. Your violations of clear law in this regard can be prosecuted under penal law in Switzerland.

IX. Conclusion

Based upon the foregoing we request that these infringements be removed
immediately.

We appreciate your prompt attention to this matter.

Sincerely,
[private]
Moxon & Kobrin
[private]
[private]
Los Angeles, California 90010
Tel: [private]
Fax: [private]

FAQ: Questions and Answers

[back to notice text]

Question: What do these registration numbers mean? or Why don

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

[back to notice text]

Question: What is a famous mark?

Answer: A famous mark is a mark that has become so well known, that it has become almost universally recognized. An example of such a mark would be "McDonald's" or "Coca-Cola." Famous marks become important where an owner of a trademark is claiming trademark dilution against a defendant. The Federal Anti-Dilution Act of 1996 provides that an owner of a famous mark is entitled to an injunction where a defendant's use of the mark causes dilution of the distinctive quality of the owner's famous mark. In determining whether a mark is famous, a court will consider a list of eight factors, found in the 1996 Federal Anti-Dilution Act.

[back to notice text]

Question: What does "distinctive" mean?

Answer: "Distinctive" is a term of art in trademark law and is determined by analyzing several factors. Essentially, a mark is distinctive when the consumers have come to recognize it as the source or origin of certain goods or services. Take the word "bronco": consumers recognize it as a brand of automobile; therefore it is distinctive as to automobiles. But it is not distinctive as to horses, where it would be generic, nor as to baby diapers since there is no one offering such goods under that label. Some words can never become distinctive as marks if they generically describe the very good or service for which they are used (i.e., one cannot trademark the word "basketball" to describe a brand of basketballs.) In general, if a word has been in substantially exclusive and continuous use as a mark in commerce for five years, it will be deemed distinctive as to those goods/services 15 USC 1052(f).

[back to notice text]

Question: Does the product or service on which I am using the mark matter? Do dates matter?

Answer: It matters if the mark is not famous. The C&D should disclose your opponent?s products and/or services and the date on which it commenced use of the allegedly infringed mark. This will help you guesstimate whether a likelihood of confusion between the marks exists. For instance, if your opponent uses ?opera? on truffles and you use "opera" on silk gloves, consumers are not likely to confuse the products. If the mark is determined by a court to be famous, however, confusion is irrelevant and [non-fair] use on any type of goods may be an infringement.

The date on which your opponent began using the mark is significant because a junior (later) user cannot displace a senior (first) user in the senior user?s geographic region. In other words, if you have owned a chain of donut shops called "Lucky Donuts," with locations in New Jersey, New York, and Connecticut since 1943, a national chain called "Lucky Donuts" founded in 1979 has no trademark infringement claim against you in the NJ-NY-CT tri-state area. If your opponent has begun using its allegedly infringed mark after your use, you have another reason to question the merit of the C&D.

[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: 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 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.

[back to notice text]

Question: I do not know what these cases or statutes cited in the C&D mean.

Answer: If your opponent has cited cases and statutes in the C&D, do not freak out. The fact that your opponent can include some legal authority in the C&D does not mean that the law is on its side. If you can, go look up the cases and statutes to see what they say. You can go to the nearest law school's law library for help, or you can try a free legal resource web site like Findlaw. Many of them are accessible on the Internet by keyword search using the full case name or it's citation (the numbers and abbreviations that follow the names of the parties).

If your opponent is relying on federal law, it will probably cite one or more of the following sections of the Lanham Act:
(1) section 32 (also known as section 1114);
(2) section 43(a) [a/k/a section 1125(a)]; or
(3) section 43(c) [a/k/a section 1125(c)]. (The smaller numbers indicate how the statutory sections were numbered when the law was a bill in Congress; the larger numbers indicate how the statutory sections were re-numbered when the law was codified in the U.S. Code. Under either numbering system, the laws say the same thing). An additional statute, the Anti-cybersquatting Consumer Protection Act (ACPA) [a/k/a section 1125(d) relates specifically to domain names.

Section 32 (codified as 15 U.S.C. 1114) is the basic statute governing trademark infringement of registered marks. If you use a mark in commerce that is confusingly similar to a registered trademark, you may be civilly liable under section 32. This section describes how to determine infringement, what the remedies are, and what defenses are available.

Section 43(a) [codified as 15 U.S.C. 1125(a)] is the "false designation of origin" statute. If you use a mark in commerce that is likely to cause confusion or deception as to affiliation, association, origin, or sponsorship with another trademark, you may be civilly liable under section 43(a). Section 43(a) does not require that any of the marks be registered.

Section 43(c)[codified as 15 U.S.C. 1125(c)] is the "anti-dilution" provision. This section allows the owner of a famous trademark to prevent use of the mark by junior users whose use

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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.

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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: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this dispute?

Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: it?s nasty. The first thing to do is take a deep breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writer?s perception that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl, you?re never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994).

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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: Where can I find state trademark law?

Answer: Each state has its own laws governing use of trademarks within its borders. To locate the trademark laws of the 50 states, use the Legal Information Institute links. Both legislation and court opinions create trademark rights and remedies.

If marks are used in interstate commerce, then federal law will also apply.

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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.

Topic maintained by USF Law School - IIP Justice Project

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