Trademarks, Cybersquatters and Domain Names
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Trademarks, Metatags, and Initial Interest Confusion: a Look to the Past to Re- Conceptualize the Future
173 TRADEMARKS, METATAGS, AND INITIAL INTEREST CONFUSION: A LOOK TO THE PAST TO RE- CONCEPTUALIZE THE FUTURE CHAD J. DOELLINGER* INTRODUCTION Web sites, through domain names and metatags, have created a new set of problems for trademark owners. A prominent problem is the use of one’s trademarks in the metatags of a competitor’s web site. The initial interest confusion doctrine has been used to combat this problem.1 Initial interest confusion involves infringement based on confusion that creates initial customer interest, even though no transaction takes place.2 Several important questions have currently received little atten- tion: How should initial interest confusion be defined? How should initial interest confusion be conceptualized? How much confusion is enough to justify a remedy? Who needs to be confused, when, and for how long? How should courts determine when initial interest confusion is sufficient to support a finding of trademark infringement? These issues have been glossed over in the current debate by both courts and scholars alike. While the two seminal opinions involving the initial interest confusion doctrine, Brookfield Commun., Inc. v. West Coast Ent. Corp.3 and * B.A., B.S., University of Iowa (1998); J.D., Yale Law School (2001). Mr. Doellinger is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, 311 S. Wacker Drive, Chicago, Illinois 60606. The author would like to thank Uli Widmaier for his assistance and insights. The views and opinions in this article are solely those of the author and do not necessarily reflect those of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson. 1 See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, vol. -
Patent and Trademark Cases Stephen Mcjohn
Northwestern Journal of Technology and Intellectual Property Volume 9 Article 1 Issue 4 January Spring 2011 Top Tens in 2010: Patent and Trademark Cases Stephen McJohn Recommended Citation Stephen McJohn, Top Tens in 2010: Patent and Trademark Cases, 9 Nw. J. Tech. & Intell. Prop. 1 (2011). https://scholarlycommons.law.northwestern.edu/njtip/vol9/iss4/1 This Perspective is brought to you for free and open access by Northwestern Pritzker School of Law Scholarly Commons. It has been accepted for inclusion in Northwestern Journal of Technology and Intellectual Property by an authorized editor of Northwestern Pritzker School of Law Scholarly Commons. NORTHWESTERN JOURNAL OF TECHNOLOGY AND INTELLECTUAL PROPERTY Top Tens in 2010: Patent and Trademark Cases Stephen McJohn January 2011 VOL. 9, NO. 4 © 2011 by Northwestern University School of Law Northwestern Journal of Technology and Intellectual Property Copyright 2011 by Northwestern University School of Law Volume 9, Number 4 (January 2011) Northwestern Journal of Technology and Intellectual Property Top Tens in 2010: Patent and Trademark Cases By Stephen McJohn* ¶1 The following are notable intellectual property decisions for patent and trademark in 2010 in the United States. Notable copyright and trade secret cases will be examined in a subsequent article. Viewed across doctrinal lines, some interesting threads emerge involving the scope of protection, the amount of secondary liability, and ownership of the intellectual property rights. ¶2 The scope of protection was at issue in both areas. Bilski v. Kappos marked a shift from using technical tests for patent subject matter to relying on the basic exclusions against patents on laws of nature, physical phenomena, or abstract ideas.1 Ass’n for Molecular Pathology v. -
Protecting Your Idea This Guide Is Designed to Help Small Business Owners Make Informed Decisions Regarding Their Trademarks, Service Marks, Copy Right & Patents
Protecting Your Idea This guide is designed to help small business owners make informed decisions regarding their trademarks, service marks, copy right & patents. Trademark & Service Mark A trademark (also known as a brand name) is used to distinguish physical products while a service mark identifies a service such as a financial service, advertising, etc. Trademark or service mark rights can be established by: • Simply starting to use the mark, but the rights are limited to that state; • Applying for a federal registration for use nationwide. The designation "TM" for trademark and "SM" for service mark is used with the name when the mark is not federally registered. ® or "Reg. U.S. Pat. & Tm.Off." means the mark is federally registered. Where a mark is not likely to be used in interstate or foreign commerce, one should consider a state registered mark, it is quick and inexpensive to register. Federal registration provides nationwide priority rights and offers federal court protection against infringement. In international trade, the mark must be registered on a country by country basis. To register a trademark or service mark in New York State, contact: NY State Dept. of State-Division of Corporation and State Records, Albany (518) 474-4770. To register a mark federally, Please contact: U.S. Patent & Trademark Office/U.S. Department of Commerce Washington, D. C. 20231 (800) 786-9199 Website: http://www.uspto.gov/ Copyright A copyright, designated by a ©, protects literary, artistic, and musical works including sculptures, movies, computer programs, etc:" Registration is granted by the federal government and is inexpensive. Although it is not necessary to register to use the symbol, registration is needed to bring suit for copyright infringement. -
Basic Facts About Trademarks United States Patent and Trademark O Ce
Protecting Your Trademark ENHANCING YOUR RIGHTS THROUGH FEDERAL REGISTRATION Basic Facts About Trademarks United States Patent and Trademark O ce Published on February 2020 Our website resources For general information and links to Frequently trademark Asked Questions, processing timelines, the Trademark NEW [2] basics Manual of Examining Procedure (TMEP) , and FILERS the Acceptable Identification of Goods and Services Manual (ID Manual)[3]. Protecting Your Trademark Trademark Information Network (TMIN) Videos[4] Enhancing Your Rights Through Federal Registration Tools TESS Search pending and registered marks using the Trademark Electronic Search System (TESS)[5]. File applications and other documents online using the TEAS Trademark Electronic Application System (TEAS)[6]. Check the status of an application and view and TSDR download application and registration records using Trademark Status and Document Retrieval (TSDR)[7]. Transfer (assign) ownership of a mark to another ASSIGNMENTS entity or change the owner name and search the Assignments database[8]. Visit the Trademark Trial and Appeal Board (TTAB)[9] TTAB online. United States Patent and Trademark Office An Agency of the United States Department of Commerce UNITED STATES PATENT AND TRADEMARK OFFICE BASIC FACTS ABOUT TRADEMARKS CONTENTS MEET THE USPTO ������������������������������������������������������������������������������������������������������������������������������������������������������������������ 1 TRADEMARK, COPYRIGHT, OR PATENT �������������������������������������������������������������������������������������������������������������������������� -
Trademark, Patent and Copyright Information
Trademark, Patent and Copyright Information What is a trademark? 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. What is a service mark? A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. What is a certification mark? A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization. What is a collective mark? A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization. Basic Questions Do I have to register my trademark? No, but federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. -
Introduction to Trademark Law and Practice
WORLD INTELLECTUAL PROPERTY ORGANIZATION INTRODUCTION TO TRADEMARK LAW & PRACTICE THE BASIC CONCEPTS A WIPO TRAINING MANUAL GENEVA 1993 (Second Edition) ( ( WIPO PUBLICATION No 653 (El ISBN 92-805-0167-4 WIPO 1993 PREFACE The present publication is the second edition of a volume of the same title that was published by the World Intellectual Property Organization (WIPO) in 1987 and reprinted in 1990. The first edition was written by Mr. Douglas Myall, former Assistant Registrar of Trade Marks, United Kingdom. The present revised edition of the publication has been prepared by Mr. Gerd Kunze, Vevey, Switzerland, and reflects his extensive expertise and experience in the administration of the trademark operations of a large international corporation, Nestle S. A., as well as his intensive involvement, as a leading representative of several international non-governmental organizations, in international meetings convened by WIPO. This publication is intended to provide a practical introduction to trademark administration for those with little or no experience of the subject but who may have to deal with it in an official or business capacity. Throughout the text, the reader is invited to answer questions relating to the text. Those questions are numbered to correspond to the answers that are given, with a short commentary, in Appendix I. Arpad Bogsch Director General World Intellectual Property Organization February 1993 ( ( LIST OF CONTENTS CHAPTER 1. TRADEMARKS AND OTHER SIGNS: A GENERAL SURVEY 7 1.1 Use of trademarks in commerce . 9 1.2 What is a trademark?. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 9 1.3 Need for legal protection .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 10 1.4 How can a trademark be protected? . -
Intellectual Property Law in Cyberspace
Intellectual Property Law in Cyberspace Second Edition CHAPTER 7 UNIQUE ONLINE TRADEMARK ISSUES Howard S. Hogan Stephen W. Feingold Gibson, Dunn & Crutcher Kilpatrick, Townsend & Stockton Washington, D.C. New York, NY CHAPTER 8 DOMAIN NAME REGISTRATION, MAINTENANCE AND PROTECTION Howard S. Hogan Stephen W. Feingold Gibson, Dunn & Crutcher Kilpatrick, Townsend & Stockton Washington, D.C. New York, NY Intellectual Property Law in Cyberspace Second Edition G. Peter Albert, Jr. and American Intellectual Property Law Association CHAPTER 7 UNIQUE ONLINE TRADEMARK ISSUES CHAPTER 8 DOMAIN NAME REGISTRATION, MAINTENANCE AND PROTECTION American Intellectual Property Law Association A Arlington, VA Reprinted with permission For more information contact: bna.com/bnabooks or call 1-800-960-1220 Copyright © 2011 The Bureau of National Affairs, Inc. Library of Congress Cataloging-in-Publication Data Albert, G. Peter, 1964– Intellectual property law in cyberspace / G. Peter Albert, Jr. -- 2nd ed. p. cm. Includes bibliographical references and index. ISBN 978-1-57018-753-7 (alk. paper) 1. Industrial property--United States. 2. Computer networks--Law and legislation--United States. 3. Internet 4. Copyright and electronic data processing--United States. I. Title. KF3095.A77 2011 346.7304’8--dc23 2011040494 All rights reserved. Photocopying any portion of this publication is strictly prohibited unless express written authorization is first obtained from BNA Books, 1231 25th St., NW, Washington, DC 20037, bna.com/bnabooks. Authorization to photocopy items for internal or personal use, or the internal or personal use of specific clients, is granted by BNA Books for libraries and other users registered with the Copyright Clearance Center (CCC) Transactional Reporting Service, provided that $1.00 per page is paid directly to CCC, 222 Rosewood Dr., Danvers, MA 01923, copyright.com, Telephone: 978-750-8400, Fax: 978-646-8600. -
Trademark Infringement, Trademark Dilution, and the Decline in Sharing of Famous Brand Names: an Introduction and Empirical Study
GW Law Faculty Publications & Other Works Faculty Scholarship 2011 Trademark Infringement, Trademark Dilution, and the Decline in Sharing of Famous Brand Names: An Introduction and Empirical Study Robert Brauneis The George Washington University Law School, [email protected] Paul J. Heald Follow this and additional works at: https://scholarship.law.gwu.edu/faculty_publications Part of the Law Commons Recommended Citation Robert Brauneis & Paul J. Heald, Trademark Infringement, Trademark Dilution, and the Decline in Sharing of Famous Brand Names: An Introduction and Empirical Study, 59 Buff. J. Int'l L. 141 (2011). This Article is brought to you for free and open access by the Faculty Scholarship at Scholarly Commons. It has been accepted for inclusion in GW Law Faculty Publications & Other Works by an authorized administrator of Scholarly Commons. For more information, please contact [email protected]. TRADEMARK INFRINGEMENT, TRADEMARK DILUTION, AND THE DECLINE IN SHARING OF FAMOUS BRAND NAMES: AN INTRODUCTION AND EMPIRICAL STUDY ROBERT BRAUNEIS* PAUL HEALD** Many famous brand names have historically been shared among dozens or even hundreds of different companies.1 Courts and commentators often cite well-known examples of sharing like Delta Airlines and Delta Faucets,2 or United Airlines and United Van Lines,3 but the list of companies sharing these brand names and many others is much, much longer. Trademark infringement law has traditionally accommodated brand-name sharing through doctrines that limit protection to closely related goods and to actual trading areas.4 Modern developments in infringement law, however, have challenged those doctrines,5 and trademark dilution legislation is arguably based on the theory that some brand names are harmed by, and should be protected against, any sharing at * Professor of Law, The George Washington University Law School. -
Vol. 93 TMR 1035
Vol. 93 TMR 1035 RECONSIDERING INITIAL INTEREST CONFUSION ON THE INTERNET By David M. Klein and Daniel C. Glazer∗ I. INTRODUCTION Courts developed the theory of initial interest confusion (or “pre-sale confusion”) to address the unauthorized use of a trademark in a manner that captures consumer attention, even though no sale is ultimately completed as a result of any initial confusion. During the last few years, the initial interest confusion doctrine has become a tool frequently used to resolve Internet- related disputes.1 Indeed, some courts have characterized initial interest confusion on the Internet as a “distinct harm, separately actionable under the Lanham Act.”2 This article considers whether the initial interest confusion doctrine is necessary in the context of the Internet. Courts typically have found actionable initial interest confusion when Internet users, seeking a trademark owner’s website, are diverted by identical or confusingly similar domain names to websites in competition with, or critical of, the trademark owner. A careful analysis of these decisions, however, leads to the conclusion that a distinct initial interest confusion theory may be unnecessary to resolve cases involving the unauthorized use of a trademark as a domain name. In fact, traditional notions of trademark infringement law and multi-factor likelihood of confusion tests may adequately address the balancing of interests required in cases where courts must define the boundaries of trademark owners’ protection against the use of their marks in the domain names of competing websites. The Federal Trademark Dilution Act (FTDA)3 and the Anticybersquatting Consumer Protection Act (ACPA)4 provide additional protection against the unauthorized use of domain names that dilute famous marks or evidence a bad ∗ Mr. -
State of Rhode Island Trademark/Service Mark Guide
UDPATED 06/2019 Rhode Island Trademark/Service Mark Guide RHODE ISLAND DEPARTMENT OF STATE Trademark/Service Mark Guide The RI Department of State records the registration of state-level trademarks and service marks. Before you apply to register your mark with our office, be sure you can answer “yes” to the following questions: ¨ Have you completed a thorough search (including of the USPTO and other states’ trademark/service mark databases) to determine if your mark or a similar mark is already in use in Rhode Island or elsewhere? ¨ Is your mark currently being used in commerce in the State of Rhode Island? Have you sold or distributed goods or services where your mark is clearly distinguishable in connection with those goods or services? ¨ Have you ensured your mark is not: • Immoral, deceptive, or scandalous? • Disparaging or misrepresentative of a person (living or dead), institution, belief, or national symbol? • Inclusive of a flag or coat of arms of the United States of America, any state or municipality, or any foreign nation? • The name, signature, or image of any living person (unless you have written consent from that person)? • Merely descriptive of the goods or services? (e.g., “Frozen” for ice cream) • Merely geographically descriptive of the goods or services? (e.g., “Providence Club”) • A surname? Registration of a trademark or service mark does not prevent another person from registering the name as a d/b/a (doing business as) in the city or town where their business is located, nor does it prevent another person from incorporating under the same name. -
Criminal Trademark Enforcement and the Problem of Inevitable Creep
Criminal Trademark Enforcement and the Problem of Inevitable Creep Mark P. McKenna* Trademark owners have long been able to enforce their rights through a federal cause of action against unauthorized uses of their marks.1 Private enforcement, however, is now only part of the story. The federal government also acts on behalf of mark owners, both seizing infringing and counterfeit goods at the border and prosecuting counterfeiters under federal criminal law.2 The idea of criminal penalties for certain trademark violations is not new – indeed, Congress enacted criminal penalties as early as 1876, just a few years after it passed the very first federal trademark statute.3 But mark owners had to be content with civil remedies for most of the history of American trademark law – Congress would not again enact criminal trademark penalties for more than 100 years after the Supreme Court struck down the 1876 Act in the Trademark Cases.4 Thus, for all practical purposes, criminal enforcement is a modern development, and one that has received little scholarly attention. This essay focuses initially on the federal Trademark Counterfeiting Act (TCA). That statute was intended to increase the penalties associated with the most egregious instances of trademark infringement – those involving the use of an identical mark for the * Professor of Law and Notre Dame Presidential Fellow, Notre Dame Law School. Thanks to Jeanne Fromer, Irina Manta, and Chris Sprigman for helpful discussions of the ideas in this paper. 1 The first federal trademark statute was passed in 1870. Act of July 8, 1870, ch. 230, 16 Stat. 198. -
Biodiversity Conservation: How Can the Regulation of Bioprospecting
N°06/13 JUNE 2013 | BIODIVERSITY Biodiversity conservation: How can the regulation of bioprospecting under the Nagoya Protocol make a difference? Claudio Chiarolla, Renaud Lapeyre, Romain Pirard (IDDRI) THE REGULATION OF BIOPROSPECTING: WHAT IS IT? AND WHY IS IT IMPORTANT? The need to protect biodiversity and to promote fairness in the use of genetic resources and associated traditional knowledge has engendered one of the most contentious debates of the 21st century between devel- oped and developing countries. This debate has fundamental implications for the way in which basic and applied research on genetic resources and biodiversity is conducted and its results are made available between and within peoples and societies. Therefore, the regulation of bioprospecting –i.e. “the search for plant and animal species from which medicinal drugs and other commercially valuable compounds can be obtained”– not only tells stories about biodiversity conservation, but also about food security, global health, intellectual property, indigenous peoples, equity, justice and human rights. NEW PERSPECTIVES: BIOPROSPECTING CONTRACTS AS MARKET- BASED INSTRUMENTS In a context of financial constraint, MBIs are seen as a potential tool to help foster biodiversity conservation. As private contracts between two (or more) parties (theoretically Coasean agreements), bioprospecting contracts could be more efficient than command-and-control regulations aimed at biodiversity conservation. Aiming to regulate bioprospecting, the Nagoya Protocol on Access to Genetic Resources and Benefit Shar- ing (ABS), adopted in 2010, should help to stop the misappropriation This article is based on research that has of genetic resources and associated traditional knowledge (known as received a financial support from the French ‘biopiracy’), while providing legal certainty for public and private users government in the framework of the programme of such resources.