THE IMPACT OF THE NEW MEDIA ON TRADEMARK/SERVICE MARK PROTECTION1

I.

The Age of the Internet

a. Consumers and the Internet The Internet is a system of interconnected computer networks that daily connects billions of users worldwide.2 Truly redefining accessibility, users can quickly retrieve information from almost anywhere via mobile phones, wireless networks and datacards, thus creating a new form of human behavior.3 No longer do most consumers purchase only a newspaper, newsletter, catalog or magazine to gather information.

Instead,

consumers are now more likely to go to their computer and run a simply search where they are instantly provided with hundreds or thousands of web sites and pages to visit. The Internet is indeed the fastest, and possibly cheapest, way to spread information to the largest audience imaginable.

II.

The Impact of the Internet on Trademark Registrations

a.

What is a Trademark or Service Mark

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols and/or designs, that identifies and distinguishes the source of the goods of one party from the competitive goods of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" usually refer to both trademarks and service marks. A common law trademark is a mark that a business has used to identify the source of its goods and services. A registered trademark is one that has been registered with the United States Patent and Trademark Office.

1

Joseph W. Berenato, III and Patricia M. Rehfield See http://en.wikipedia.org/wiki/Internet 3 See http://en.wikipedia.org/wiki/Internet 2

b. Why Register a Mark? You can establish rights in a mark based on legitimate use of the mark as a service mark or trademark; i.e., common law rights. However, owning a federal registration provides several important advantages, e.g., the ability to bring an action concerning the mark in federal court; a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration; constructive notice to the public of the registrant’s claim of ownership of the mark; the use of the U.S registration as a basis to obtain registration in foreign countries; and the ability to use the U.S. Customs Service to prevent importation of infringing foreign goods. Ownership of a registered trademark allows use of the statutory notice ®.

c. Redefining Trademark Goods and Services Commonly referred to as the information superhighway, the Internet has brought about a wide array of communication avenues.

Today, most news and information

distribution organizations are no longer only providing printed materials. Some are even only online. Indeed, a quick search on the Internet reveals that most, if not all, print magazines, newsletters, catalogs and newspapers now publish web pages, blogs and web feeds.4 Many offer electronic newsletters and webcasts or other electronic distribution mechanisms. Gone are the days of the simple Class 016 trademark registration for print newspapers, newsletters, catalogs and magazines. Now owners must consider not only whether their information is or will be distributed through electronic means, but also how it will be electronically distributed and what controls they wish to place over that distribution. Even more, if a mark will be used in connection with electronic media, how will it be used? Registrations for electronic news and information may fall into multiple classes under the international classification system which is utilized by the United States Patent and Trademark Office, including Class 041 for on-line non-downloadable magazines, Class 035 for electronic catalogs, Class 009 for downloadable electronic newsletters and Class 042 for creating and maintaining a blog and providing web feeds.

4

See http://en.wikipedia.org/wiki/Internet

d. Prior Registrations This change in how trademarks/service marks are used is impacting not only how we file new applications, but also the renewal process. Now is the time for a trademark owner to consider auditing its current registrations to see if there is a need to file additional applications to cover new media and distributions systems. For instance, a magazine released five years ago and registered in Class 016 is likely now published on the Internet, and the current registration may not cover that distribution mechanism. An owner needs to consider the value of the mark and if the cost of filing an additional application, possibly with multiple classes, fits into its long term business goals. It also needs to consider if it will even be maintaining a print platform. If not, the owner would not be able to renew the mark as the goods it once covered are no longer produced. By the same token, unless it files to protect its electronically distributed product, it may have no registered trademark to use against others potentially damaging its brand. Although it may have common law rights, those can be cumbersome to enforce. Further, some countries do not recognize common law rights.

e. Foreign Registrations Beyond the impact on U.S. registrations, a trademark owner should consider its international audience. The Internet is undeniably global, reaching approximately 1.67 billion people worldwide.5 This widespread usage and accessibility in turn means that information can now be viewed in markets that trademark owners traditionally may not have considered important. For instance, whereas in the past a printed publication may only have been available locally, today an individual in, for example, Iceland can easily access that same publication.

f. Costs What does all this mean? Trademark owners now have to consider how to allocate costs in protecting their brands. Indeed, more classes of goods and additional foreign applications equate to a higher overall cost for trademarks. The question is, does the publication warrant these increased costs? Before embarking on this path, a business 5

See http://en.wikipedia.org/wiki/Global_Internet_usage

owner should consider what platforms it intends to use to disseminate its information, along with its intended target audience. Will that audience be local or global?

In

addition, what is the perceived value of the mark? Is the brand worth the potential thousands of dollars to obtain protection under multiple classes and abroad?

Is the

owner prepared to be locked-out of a geographically remote market in the future should its audience expand? A U.S. trademark provides protection only in the United States, and many foreign countries do not recognize common law trademarks. Not only must immediate costs be considered, but trademarks need to be renewed periodically. A U.S. trademark has an initial term of five years before use evidence needs to be filed, and most foreign trademarks require a filing ten or fifteen years after registration. Some countries, like the U.S. require use or proof of use to keep the registration in force. Others deem it subject to revocation if use ceases.

III.

Web Pages: What are Domain Names, Meta Tags and Keywords

a. Domain Names A domain name is used in an Internet URL (uniform resource locator) address to identify a particular web page.6

For instance, people.com indicates the various IP

addresses utilized by People® magazine.7 A domain name is then categorized by its suffix, which specifies the top level domain, or TLD, it belongs in, with the .com referring to commercial businesses.8

b. Meta Tags and Keywords Meta tags are used to provide data about a given web page.9 They assist search engines in categorizing information, which in turn directs consumer traffic to specific websites. Keywords, on the other hand, are specific terms a webpage owner deems important to improve search ranking.10 In the fall of 2009, however, the search engine

6

See http://www.webopedia.com/TERM/D/domain_name.html See http://www.webopedia.com/TERM/D/domain_name.html 8 See http://www.webopedia.com/TERM/D/domain_name.html 9 See http://en.wikipedia.org/wiki/Meta_element 10 See http://en.wikipedia.org/wiki/Meta_element 7

Google® announced that it would no longer utilize keywords in its search ranking as these words have been found to have little if no impact on the rankings.11

IV.

Trademarks, Domain Names and Infringement Considerations

a. Overview Trademarks are undeniably a valuable means by which to associate a business with its goods and services. A trademark is a repository of the goodwill that has been established through use of the mark on or in association with the goods and/or services. In the age of e-commerce, trademarks can be considered even more essential than they were in the past. To be sure, the Internet allows business owners to reach a broader audience, an audience that might not have traditionally been available.

This availability of

information can make a trademark even more important in building consumer recognition and goodwill.

In the electronic world, a trademark can easily be transformed into a domain name. Indeed, a domain name, much like a traditional trademark, can become a business identifier. There is, however a problem. Anyone can obtain a domain name. Unlike trademarks, no evidence is required that you are using a domain name in a particular way. There is no examination conducted to determine whether confusing similarity could exist with a previously registered domain name or trademark.

One digital brand name

management service has estimated that 70% of domain names that are associated with well-known brands are not currently registered by the actual brand owner.12

b. Defensive Purchasing and the Release of New Generic Top Level Domain Names While most trademark owners register a domain name they intend to use, some are purchasing names simply to prevent others from obtaining them.13 The widespread abuse of domain name purchasing has led many business organizations to partake in what has been coined defensive domain name purchasing. This tactic is done to prevent potential 11

See http://en.wikipedia.org/wiki/Meta_element See http://www.wipo.int/copyright/en/ecommerce/ip_survey/chap3.html 13 PLI (2009) Protection of Trademarks in a Web 2.0 World 12

infringers from not only profiting from a businesses’ hard earned reputation, but also from eroding customer loyalty. Defensive purchasing can become even more important when new generic top level domain (TLD) names are released. In the years 2000 and 2004, new TLDs were created to ensure competition and consumer interests in the Internet world.14 Plans are currently underway to do this again.15 A trademark and domain owner, therefore, would be best served to monitor the progress of the release in order to purchase and protect any domain names that are considered valuable to its business.

c. Renewals As with defensive purchasing, a domain name owner should always timely renew its domain registrations, even if it no longer intends to utilize the domain name. The overall goal is to prevent potential infringers from purchasing the domain name in order to profit from the established goodwill of a particular business identifier.

d. Scam Notices One caveat is international domain names.

Have you ever received an email

indicating that someone was looking to register your domain name in another country? The email typically asks you to pay that company to acquire the name on your behalf so that you can block the supposed infringer. These emails are typically a scam. The question you should ask is if you have a legitimate economic interest in the particular country. If the answer is yes, acquiring a country based domain name may be of value. Similar notices, usually looking very official, are frequently received for trademarks, and suggest a need to pay a substantial fee for a trademark publication.

V.

Options to Fight Infringers

ICANN, or the Internet Corporation for Assigned Names and Numbers, was created in 1998 to oversee a number of Internet-related tasks, including managing the assignment

14 15

See http://icann.org/en/topics/new-gtlds/program-en.html See http://icann.org/en/topics/new-gtlds/program-en.html

of domain names and IP address.16

ICANN’s Uniform Domain Name Dispute

Resolution (UDRP) was established to provide an inexpensive administrative means for trademark owners to resolve domain disputes without having to resort to costly litigation. 17

Through the UDRP, a trademark owner can have its complaint heard by either a one-

member or three-member panel. In order to prevail, the trademark owner must prove three things: 

the domain name is identical or confusing similar to a trademark or service mark in which the complainant has rights;



the domain name holder has no rights or legitimate interest in respect of the domain name; and



the domain name has been registered and is being used in bad faith.18

While inexpensive and quick, the UDRP has no appeal process and is not binding on courts.19 Thus, some trademark owners are turning to the courts to resolve their disputes. While courts have traditionally considered up to thirteen (13) factors to determine a likelihood of confusion as between two trademarks, in the arena of domain names, the courts are frequently focusing on three (3) factors they deem most important: 

similarity of the marks;



relatedness of the goods or services; and



simultaneous use of the Internet as a marketing channel.20

Because meta tags and keywords are not visible to the consuming public, the issue of infringement in that arena is not as straight forward. Indeed, it is currently unsettled if the use of a registered trademark as a meta tag or keyword by someone other than the owner constitutes infringement.21

Some courts have found no infringement if the

unauthorized use of the trademark is not misleading, unfair or deceptive.22

16

See http://en.wikipedia.org/wiki/Icann th Siegrun D. Kane, Kane on Trademark Law, 5 ed., (New York City: PLI 2007) 11-7. 18 th Siegrun D. Kane, Kane on Trademark Law, 5 ed., (New York City: PLI 2007) 11-7. 19 th Siegrun D. Kane, Kane on Trademark Law, 5 ed., (New York City: PLI 2007) 11-9. 20 th Siegrun D. Kane, Kane on Trademark Law, 5 ed., (New York City: PLI 2007) 11-10. 21 See http://www.wipo.int/copyright/en/ecommerce/ip_survey/chap3.html 22 See http://www.wipo.int/copyright/en/ecommerce/ip_survey/chap3.html 17

VI.

Conclusion As with anything, we must take the good with the bad. While the Internet increases visibility to a whole new world of consumers, it also brings about increased business related costs. From multi-class and international trademark registrations to preventing and fighting domain name abuse, business owners are now faced with a plethora of new issues that directly impact brand name and brand recognition. Thus, going forward, a business owner would be well advised to consider the impact that the Internet has on its business and plan accordingly.