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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: 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.
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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.
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Question: I registered the domain first. Why can't I keep it?
Answer: Maybe you can. The ACPA only protects trademark owners against cybersquatters. If your registration or use doesn't violate the Act, you should be able to keep the domain. However, being the first to register a name doesn't give you special rights or protections if you violate the law. Just as in physical space, you cannot use another's trademark to your own commercial advantage if the result is to "steal" the value of the trademark's goodwill and turn it to your own advantage. Read the remaining FAQs that explain what the ACPA actually forbids.
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Question: What constitutes a violation of the Act?
Answer: In addition to having a domain name that steps on the toes of an existing trademark as mentioned above, a person will be held liable only if he or she has a "bad faith intent to profit from the mark, including a personal name which is protected as a mark." An example of a personal name that is protected as a mark would be the name of a Hollywood celebrity whose name is used as a trademark to identify his or her performance services.
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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 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).
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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 are the possible penalties for violating the ACPA?
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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Question: What if I don't live in the US? Can I still lose my domain name under the ACPA?
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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FAQ: Questions