INSIGHTS LEGAL AFFAIRS Strengthening your brand When URLs and trademarks collide, and when it pays to seek damages INTERVIEWED BY ADAM BURROUGHS n infringement on your trademark by another entity and its domain name MARK J. MASTERSON Associate can affect the strength of your brand. A Fay Sharpe LLP In some cases, a company may benefit from stopping an infringer and seeking damages. (216) 363-9000 “Ultimately, it all comes down to dollars [email protected] and cents, and whether a business wants to truly invest and strengthen its brand Insights Legal Affairs is brought to you by Fay Sharpe LLP to prevent others from capitalizing on its goodwill,” says Mark J. Masterson, an associate at Fay Sharpe LLP. Protection Act provides a private right broad protections to a common law Smart Business spoke with Masterson about of action for trademark owners to bring trademark, the courts have raised questions the intersection of trademarks and URLs, suit in federal court against the holder and developed fact-based tests that can and what protections are available to help of a confusingly similar domain name. be expensive to prove and tend to favor prevent costly trademark infringements. Trademark owners also may initiate a registered trademark holder. It is in the arbitration procedures under the authority common law trademark user’s best interest How might a domain name or URL infringe of the Internet Corporation of Assigned to register his or her trademark with the on a trademark? Names and Numbers (ICANN) to transfer USPTO to take advantage of the strongest A trademark owner can enforce trademark control of a confusingly similar domain commercial protection afforded by law. rights against a domain name that is likely to name without going to court. create source confusion with the trademark If a trademark owner files a grievance How can companies ensure their marks are owner’s brand or if a domain name dilutes through ICANN, the arbitration process protected in the market and online? that trademark. However, a domain name can take as little as three months and may Companies should select a name or logo for registrant would not be prevented from be less costly. However, filing suit in federal their products and services by keeping such exercising First Amendment rights by court is usually recommended when market variables as domain name and trademark registering a domain name similar to the share is affected by the infringing use. registration in mind. The key is selecting a trademark. So, third parties have a right of mark that can become federally registered fair use as well as the right to parody and How has Internet commerce affected and is marketable. Trademark prosecution satirize others’ trademarks. Regardless, this common-law trademark rights? can take a year or more, but it is the best does not provide a right to violate trademark A URL or domain name registration does way to ensure that trademark rights are law or to engage in cybersquatting. not in itself constitute ‘use’ for purposes of protected, online or otherwise. The U.S. Patent and Trademark office acquiring trademark priority. Common law When selecting a mark, conduct an (USPTO) and domain registrars operate trademark rights are geographic in nature informal trademark search online or hire a separately. Generally, a domain name is and have caused judicial confusion with the trademark attorney to conduct an in-depth registered on a first-come, first-served broad geographic reach of the Internet. trademark search, which usually covers basis, with the idea that the registrant has a Although some common law trademark USPTO files, state trademark listings, good faith and a legitimate interest to use. rights may exist due to the creation of domain name registries, and online and With trademarks, the USPTO ensures an a website, the strength of these rights is other common law uses. Selecting a domain application conforms to federal law and generally depends upon market penetration, name should become a priority only after trademark rules prior to registration. the nature of the business, and the actual selecting a trademark. Once granted, it is the geographic reach of the business’s products owners’ responsibility to actively police the What’s the recourse against cybersquatters? and services. However, even when there mark in commerce to prevent unauthorized The Anti-cybersquatting Consumer appears to be a strong case for granting uses that reduce its strength and value. © October 2013 Smart Business Network Inc. .