Chapter 3:

Trademarks in E-Commerce 12
Cyberlaw: The Law of the Internet and Information
Technology
1st Edition
Brian Craig

Cyberlaw
Michael J. Dunty
[I]f someone is operating a web site under another
brand owner’s trademark, such as a site called
“cocacola.com” or “levis.com,” consumers bear a
significant risk of being deceived and defrauded, or
at a minimum, confused. The costs associated with
these risks are increasingly burdensome as more
people begin selling pharmaceuticals, financial
services, and even groceries over the Internet.

-- Senate Report 106-40

106th Congress (1999)
Intellectual Property (IP)

• Intellectual Property is a term referring to a number of distinct types of 
creations of the mind for which a set of exclusive rights are recognized—
and the corresponding fields of law

• Owners are granted certain exclusive rights to a variety of intangible 
assets, such as musical, literary, and artistic works; discoveries and 
inventions; and words, phrases, symbols, and designs. 

• Common types of intellectual property rights include copyrights, 
trademarks, patents, trade secrets, and trade dress.

• Some critics of intellectual property rights point at intellectual 
monopolies as harming health, preventing progress, and benefiting 
concentrated interests to the detriment of the masses, and argue that the 
public interest is harmed by ever expansive monopolies in the form of 
copyright extensions, software patents and business method patents.
 Lanham Act

• Lanham Act: Federal statute found in Title 15

United States Code, that governs trademarks

• Trademark: any word, name, symbol, or

device, or any combination thereof used to
identify and distinguish one’s goods from those
manufactured or sold by others to indicate the
source of the goods
 Types of Marks

• Trademarks – used to distinguish goods

• Service marks – used to distinguish services

• Nonprofit marks – non profits that sell neither products or goods can still
trademark their names.

• Collective marks – granted for use by members of an association or

organization

• Certification marks – can be granted where the mark owner intends to

permit third parties to use its mark in connection with quality certification
of that third party’s product or service.

• TM and SM are symbols that are used while a trademark application is

pending. Once the mark is registered with the USPTO, the mark holder
may use the symbol ®
 The Distinctiveness Continuum

• Lanham Act allows protection in many types of

distinctive marks.

• Marks are grouped into four categories based on

eligibility for trademark protection.
1. Generic
2. Descriptive
3. Suggestive
4. Arbitrary or fanciful
The Distinctiveness Continuum

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 Generic Mark

• Describes the general category to which the underlying 
product belongs:  computer, apple, bread, e‐ticket

• Describes generic phrases like “you have mail”

• Can never be registered as a trademark because they do not 
distinguish a business’s mark from other products or services.

• A trademark can become generic
 Coke, Kleenex, Xerox, etc.
 Aspirin, Thermos, Dry Ice.
 Non-Generic Trade Names

• A generic term cannot be registered as a

trademark

• In re Hotels.com: “HOTELS.COM” was to generic

to receive trademark protection
 Descriptive Mark

• Directly describes, rather than suggests, a characteristic

or quality of the underlying product but is not a generic
term
 Examples include Holiday Inn, All Bran, Vision Center,
Craigslist

• Can not be registered unless the applicant can prove

the mark has acquired a secondary meaning.
 In 2006 “Instant messenger” acquired secondary
meaning which allowed AOL to trademark the
communication service.

• Secondary meaning – customers have come to

recognize the mark as denoting a particular company
rather than being merely descriptive.
 Suggestive Mark

• Evokes or suggests a characteristic / quality of the

underlying good but does not describe it directly
 Examples include Facebook, Microsoft, Paypal

• Considered inherently distinctive and can be

registered without secondary meaning
 Arbitrary or Fanciful Mark

• No inherent relationship to the product or service

 Examples include Exxon, Kodak, Amazon,
Banana Republic, Yahoo!, Blackberry, Apple
(computers)

• Considered inherently distinctive and can be

registered without secondary meaning
 Can you register Apple?

• Generic – Apple Produce Mart can not

register apple because it is too generic

• Descriptive: Apple can register apple

because it is inherently distinctive for a
computer company

• Suggestive – Apple can register the

image of an apple with bite out of it
because it is suggestive of Apple
Computers

• Arbitrary / Fanciful – “apple” has no

relationship to the product and is
therefore inherently distinctive.
Learning Objective
After this lecture, you should be able to:

Explain the scope of trademark

protection for Internet content,
software and other technology-
related products and services.
 Trademark Duration

•Each registration remains in

force for 10 years
- Must file declaration of use
between 5th and 6th year
- May be renewed for
another 10 years

•Provided the trademark

continues to be used in
commerce, trademark
protection may last
indefinitely
 How to get a Trademark

• Same word can be used as a trademark for

different classes of products. For example,
Delta Airlines and Delta Dental can both
receive trademarks for the word “Delta”

• Only one company can register a particular

domain name such as Delta.com.

• Must be capable of distinguishing the

applicant’s goods and/or services from
those of others.

• Must be using or have a good faith intent to

use the mark.

• Useful in building a website for a start up e-

business.
 Registration

• USPTO: www.uspto.gov

• Registration with U.S. Patent & Trademark Office (USPTO) gives the
trademark owner the right to sue for infringement and dilution.

• USTPO will search to determine if another party is using the

trademark in the same or similar business. If not, a distinctive
trademark will generally be registered.

• Once registered there is nationwide constructive notice to all

businesses that a particular company now owns the mark.

• Should display ® and/or SM on its website home page to give

actual notice of federal registration and its claim of ownership.

• In infringement lawsuit Plaintiff must first prove ownership of the

trademark. Federal registration is prima facie evidence of
ownership
 Prima facie – plain or clear, self-evident; obvious.
 Registration

• Gives the party the right to use the mark

nationwide, even if actual sales are limited to only
a limited area
 Can not, even with registration, make someone
who was already using it in a given geographic
area without registration stop using it in that
area.

• Party can bring an infringement suit in federal

court
 Trademark Registration

Summary

Registration with the U.S. Patent and Trademark

Office (USPTO)

Application with Trademark Electronic Application

System (TEAS)

Official Gazette and Principe Register

 Domain Names as Trademarks

• Domain name – a label that identifies an area on

the Internet.

• May be registered as trademarks.

• Determination that a word or phrase cannot be a

trademark does not preclude its use in a domain
name

• Process of obtaining a domain name is a distinct /

separate process from registration of trademarks.
 Unregistered Trademarks

• May be governed by local, state, or foreign laws

• Unregistered marks: “TM”
• Trademark
• Unregistered marks: “SM”
• Service mark

• Benefits of registration include:

 Establishes a clear date of trademark ownership
 Makes it easier to file suit in federal court
 May allow business to collect more money in court
from a suit
 Treble damages – three times the actual
damage
 Attorney fees
 Keeping a Trademark

• Initial trademark registration lasts for 10 years

• Can be renewed for an unlimited number of 10‐year period

• Mark can be lost through non‐renewal, abandonment or genericide.

• Abandonment
 A mark owner stops using the mark and does not intend to resume using it
 Presumed to be abandoned when the mark owner has failed to use mark for 3 yrs

• Non‐renewal
 A mark owner fails to renew the mark through the USPTO
 Must file an affidavit with continued use in interstate commerce

• Genericide
 Occurs when a mark becomes commonly used to denote a product or service rather 
than a particular manufacturer or provider of that product or service
 Owner is so successful in making the mark well‐known that it loses protection in the 
mark
 Protecting a Trademark

• Under Lanham Act, a trademark violation occurs when a

party other than the owner uses a similar or identical mark
that is likely to cause consumer confusion as to the origin,
sponsorship, or approval of the defendant's product or
services (likelihood of confusion)

• Factors to determine confusion include:

 Similar or identical to one another
 Products / services in the same market
 Evidence that consumers have in fact been confused
 Mark is at the more distinctive end of the continuum
 Intention of Defendant to divert sales
 Sophistication of the consumer of the product
 Length of time defendant used the mark
 Same sales efforts
 Likelihood of Confusion Test

•Plaintiff bears burden of proving by a

preponderance of the evidence that likelihood of
confusion exists
•Surveys of customers often used to show
consumer confusion
Learning Objective
After this lecture, you should be able to:

Explain the purpose of the

Anticybersquatting Consumer
Protection Act of 1999 (ACPA)
and the Trademark Dilution
Revision Act of 2006 (TDRA)

25
 Domain Names

• Domain names and trademarks are

governed by different rules that are
administered by different organizations.

• Domain names were originally created to

serve a useful mnemonic means of locating
specific computers on the internet.

• Domain names can only link to one site,

while trademarks can be used by two non-
competing products like Delta Dental and
Delta Airlines.
 Domain Names

• Until 1998 domain name system was

administered by the U.S. government
(ICC) via contracts with the Internet
Assigned Names and Numbers (IANA)
and Network Solution, Inc (NSI)

• IANA – administered the Internet

address system through Jon Postel, who
had volunteered to keep a master list
of machine numbers and their
correlating mnemonic names over 30
years ago.

Jon Postel
• NSI – registered domain names for the
top level domains of .com, .org, .net,
.biz, .info, .museum, .areo, .coop,
.name, .pro
 Domain Names

• 1999 – US government turned system

over to Internet Corporation for
Assigned Names and Numbers
(ICANN)

• Supposed to open up domain-name

registration to competition.

• Can now register through a variety of

registrars:
• Registrars located in many
countries
• ICANN maintains authority over
them
• Created Uniform Domain Name
Dispute Resolution Policy (UDRP)
 Cybersquatting

• Cybersquatting – registering key

domain names before others
appreciate their value, which
can later be sold for profit.

• Typosquatting – registering a
domain name that
incorporates an intentional
typo of a trademark.
 Anticybersquatting Consumer
Protection Act of 1999 (ACPA)

• Federal law authorizing a trademark owner to obtain a

federal-court order transferring ownership of a domain
name from a cybersquatter to the trademark owner

• Purpose of the ACPA: prevent cybersquatting

• “A person shall be liable in a civil action by the owner of

a mark, including a personal name which is protected as
a mark …. If that person had a bad faith intent to profit
from the mark.”

• Registering a domain name with the intent to sell it to the

trademark owner is presumptively an act of bad faith
Indications of Bad Faith Under the ACPA

• A federal registered trademark will be

diminished

• Domain-name owners intend to cause

diversion of consumers, dilution of the
trademark or tarnish the trademark

• Domain-name owners offer to sell the domain

name to the trademark owners.
Indications of Bad Faith Under the ACPA

• Domain-name owners applied for it by

providing false information.

• Domain-name owners applied for multiple

domain name registrations that are similar.

• No legitimate reason for registering the

domain name
Julia Fiona Roberts v. Russell Boyd
(2000)
 Julia Fiona Roberts v. Russell Boyd
(2000)

• Juliaroberts.com was registered by Russell

Boyd in 1998. In 2000 Mr. Boyd put the
domain name on eBay for $2,550.00

• Boyd also has over 50 other domain names,

including names of other movie stars

• World Intellectual Property Organization

(WIPO) received complaint in March 2000
 Julia Fiona Roberts v. Russell Boyd
(2000)

• Roberts alleged the DN is identical to and

confusingly similar with her name, that Boyd
does not have a legitimate right or interest to
the DN and the DN is being used in bad faith.

• Boyd alleges that Roberts does not have

trademark rights to her name.
 Julia Fiona Roberts v. Russell Boyd
(2000)

• Court holds the following:

 Roberts had common law trademark rights in her unregistered
name because she has a sufficient secondary association with
the registered name.
 Bad faith was based upon Boyd placing the famous Julia
Roberts domain name up for auction on eBay’s Web site, and
he registered other domain names including famous movie
and sports stars that constituted a pattern of bad faith.
 Boyd had no legitimate interest in the domain name because
he failed to show use of the domain name in connection with
the offering of any goods or services, there was no common
knowledge that he was known by the domain name, and
there was no legitimate noncommercial or fair use of the
domain name.
 Juliaroberts.com was transferred to Julia Roberts
If you are going to register a domain
name don’t make the mistakes the
Dallas Cowboys made
 Dallas Cowboys

• The Dallas Cowboys own the domain name Dallascowboys.com

• In 2007 the domain name Cowboys.com went up for sale as an

auction

• A phone bidder, claiming affliction with the Dallas Cowboys, won

with a bid of $275,000

• The deal began to fall apart over a misunderstanding with the

bidder on what the bid of “275″ actually meant. It appears the
bidder thought they were buying the domain for $275.00 rather
than $275,000.

• After its sale (not to the Dallas Cowboys) the domain name
remained unused for five years until September 2012 … as a ….
Dallas Cowboys Mistake #2

• Were able to renew the domain

name in time.

• Likely they would have gotten

the rights back from an
opportunist if he or she tried to
sell the site for big bucks.

• The team has previously

worked with the World
Intellectual Property
Organization to get domain
names that use the Cowboys
name under its control.

• Site is now on auto renewal.

 Trademark Dilution Revision Act
(TDRA)

• Law passed by Congress in 2006 to overturn

holding of U.S. Supreme Court in Mosley v. V
Secret Catalogue, Inc. which required plaintiffs
to establish proof of “actual dilution”

• Now under TDRA: plaintiff needs to only

establish a “likelihood of dilution” and not
“actual dilution”
 Trademark Dilution Revision Act
(TDRA)

• Law passed by Congress in 2006 to overturn

holding of U.S. Supreme Court in Mosley v. V
Secret Catalogue, Inc. which required plaintiffs
to establish proof of “actual dilution”

• Now under TDRA: plaintiff needs to only

establish a “likelihood of dilution” and not
“actual dilution”
 Chapter 3:
Trademarks in E-Commerce 12
Cyberlaw: The Law of the Internet and Information
Technology
1st Edition
Brian Craig

Cyberlaw
Michael J. Dunty