TRADEMARKS™

DEFINITION OF
TRADEMARK
 A trademark is defined under the
Lanham Act 1976 as a “word, name,
symbol, device or other designation, or a
combination of such designations, that is
distinctive of a person’s goods or
services and that is used in a manner
that identifies and distinguishes them
from the goods or services of others.”

 Trademarks in general are
used to distinguished a
company’s goods or services
from others.

5 Classifications of
Trademarks:
1. Generic marks:
 do not receive protection because
they do not distinguish a business’s
mark from other products or
services.
 E.g., “Instant Message” and “You
Have Mail”.

2. Descriptive marks:
 do not receive protection unless the applicant
can prove the marks is either inherently
distinctive or has acquired a secondary meaning
in the marketplace.
 A domain name, e.g., www.ford.com is merely a
business address on the Internet, and without
use in commerce to identify the service or
product sold is not a trademark.
 A secondary meaning does not require that the
trademark be inherently distinctive, as long as
there is a change in the public perspective about
the meaning of the trademark. (e.g., Kentucky
Fried Chicken)

3.g. Suggestive marks: –Suggest some quality of the product or service. –E.. “Coopertone” .

They are words used in an unusual way to help the public remember the trademark owner.4. Arbitrary marks:  Without any inherent relationship to the product.  E.g. Amazon and Banana Republic ..

.g. Fanciful marks:  Also have no inherent relationship to the product.  E.5. . the board game’s trademark Candyland and Kodak.

. The last three categories. arbitrary and fanciful. suggestive. generally trademark protection because they are automatically inherently distinctive.

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trademark name or other type of name. brand name.WHAT IS A DOMAIN NAME?  A domain name is simply a textual address by which anyone can find your host machine on the Internet. .  It can contain your company name.

The third item which locates one website is a second-level domain name.  The first item (www) is the hostname.companyname.my. The top level domain name which describes the purpose of the entity who owns the third-level name and also representing the nations. The next item (companyname) is the third-level domain name. and is registered with MYNIC Registration services. . It contains a few component separated by a period (dot) such as www.com.

unlike a postal address which changes when one moves to another town. The domain name address. may be utilized anywhere in the world. a domain name may remain the same whenever one moves. So. Domain names are truly international. . It can be reached from anywhere in the world. THE ADVANTAGES OF HAVING DOMAIN NAME 1. 2. once obtained.

 Although domain names were originally intended to perform only the function of facilitating connectivity between computers through the Internet. they have developed into business identifiers because they are easy to remember and use. They are now also used in advertising to indicate the presence of business on the Internet. .

. Lack of connection between the system for registering trademarks on the other hand. and the system for registering domain names on the other hand.CLASHES BETWEEN DOMAIN NAME AND TRADEMARK  1. -The trademark registration is administered by a public (governmental) authority on a territorial basis.

-The domain name registration system is administered by a non- governmental organization. Domain names are registered on a first-come. first-served basis. .

. .The potential for conflicts inherent in two different systems of registration has been exploited by persons who have made it a practice to register as domain names for themselves. This act is called cybersquating. the trademarks of another persons.

s mark or name of company for the purpose of relinquishing the right to that domain name back to the legitimate owner for a price. . . Cybersquating – also known as cyberpiracy.refers to deliberate act of reserving a domain name consisting of other person.

 Cyberwarehousing . .refers to the practice of registering a collection of domain names corresponding to trademarks with the intention of selling the registrations to the owner of the trademarks.

Both of these companies must compete to get the domain name because the registry is able only to provide only one user with a particular domain name. Under trademark law. . it allows two companies to own the same trademark but in respect of different products or service offering. 2.

Trademarks are protected only within a defined territory. Two individuals in different countries may therefore own the same mark. . 3. There is no one system which provides worldwide rights. This creates situation where two users of a trademark in the same class but in different countries may be fighting over the same domain name.

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.TRADEMARK INFRINGEMENT A trademark infringement occurs when a party uses a trademark that causes a “likelihood of confusion” between goods or the relationship between the parties that make the goods.

Dunkin’ Donuts). Thus. if Dunkin’ Donuts were to use Starbucks’s registered trademark and also use its own trademark (i. Starbucks would be entitled to sue Dunkin’ Donuts for trademark infringement. it would give the confusing impression that Dunkin’ Donuts has an affiliation with Starbucks. . For example.e.

2.10 Factors Used to Determine a Likelihood of Confusions: 1. Kind of mark : Descriptive marks are given less protection. . Strength of the mark : Generic marks are not given protection. Similarity of the goods: Goods should be related. 3.

Consumer sophistication : Internet consumers are more sophisticated than offline users and should be able to distinguish competitors.4. 5. Channel of trade : concurrent markets in cyberspace may be evidence of a likelihood of confusion. .

6. Wrongful intent : not necessary to prove confusion. but if found it is strong evidence of confusion. 7. Zone of natural expansion : plaintiff must provide proof of expanding in the marketplace of the defendant. . Actual confusion : would a reasonable prudent consumer be confused? 8.

. Same sale efforts : the extent to which the parties have the same sales efforts is evidence of confusion.9. Length of time the defendant used the mark : the longer it was used without actual confusion the weaker the plaintiff’s case. 10.

Inc.Some cases regarding the trademark infringement:  Interpace Corp. 1983)  Checkpoint Systems. Inc. Check Point Software Technologies. Inc. 721 F. 269 F.3d 270 (3rd Cir. Lapp. v. v. 2001) .2d 460 (3d Cir.

Framing . the code used in software. Deep Linking 2.Internet Technology and Trademark Infringement  Internet technology. Metatags 3. provides three areas of concern with respect to trademark infringement: 1.

 Deeplinking that bypasses the home page may give the end user the false impression that the product or service described or shown belongs to the wrong company. . Deep Linking  A deeplink goes beyond the home page to other pages within the Web site.1.

2. .  An unethical Web site owner can easily use a competitor’s trade name with a similar product or service by placing the competitor’s name on its metatag. Metatags  A metatag is an invisible code imbedded in the hypertext markup language (HTML) used to create Web sites.

Coca-Cola Co. 2.D.Q 2d 1225.P.1227 (N. West Coast Entertainment Corporation. v.1987) . 2 U. It is also known as invisible trademark infringement.S. Stokely-Van Camp Inc. Ill. v. Inc..  Few cases for metatags are: 1. Brookfield Communications.

this could lead to consumer to believe there is an affiliation with the framed Web site. .3.  If the framing site’s domain name remains displayed at the top of the Web site. Framing  Framing is an Internet technology that allows a Web site user to view content from another Web site while still viewing the home page of the original site.

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registration gives the registered proprietor statutory monopoly in the use of the registered mark. However.TRADEMARK LAW IN MALAYSIA  The registration of a trademark is not compulsory. .

. The owner of the trademark could bring an action for the infringement of his registered mark if other people uses a mark which is identical to or nearly resembling it as is likely to deceive or cause confusion in the course of trade.

Does it amount to infringement of the trademark’s owner exclusive right over his mark? . Who has the greater right to reserve the trademark as domain name? 2. Two questions on the issue of trademark in Malaysia: 1.

trademark law does not support such a monopoly. 1.  If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it. Who has the greater right to reserve the trademark as domain name?  Holders of the famous mark are not automatically entitled to use that mark as their domain name. . that user should be able to use the domain name.

2. . Does it amount to infringement of the trademark’s owner exclusive right over his mark?  Very difficult to answer this question because the provisions are not clearly provides the solution.  There are various international approaches to resolve the problem.

Among the things that be recommended are to have dispute resolution and dispute prevention. . The WIPO ( World Intellectual Property Organization) has taken an international process to develop recommendations concerning the intellectual property issues associated with Internet domain names including domain name resolution.INTERNATIONAL APPROACHES 1.

2. Under this policy a legitimate trademark owner can get a cyber squatter evicted by proving the following: . Internet Corporation for Assigned Names and Numbers (ICANN) evolved a policy known as the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999.

. and (c) that the registrant has no rights or legitimate interests in the said domain name.(a) that he has a valid trademark rights in the said domain name. (b) that the domain name has been registered and is being used by the registrant in bad faith.

. The final decision is implemented within 10 days the judgment something the courts could not guarantee. Instead of going to court they use arbitration to solve the problem. This dispute resolution is not restricted to any particular national jurisdiction but is international. The effect is faster rather than going to court and is a good alternative for trademark owners.

The International Ad-Hoc Committee (IAHC).  Has established 7 new category and in the future many more. and ‘nom’.3. i. . ‘store’. ‘info’.e.. partly in an attempt to avoid trademark conflicts. ‘rec’. ‘firm’. ‘web’. ‘arts’.A committee of internet experts  Made proposal to create for further generic top-level domains to be administered by a wider number of registrars.

LAW CASES FOR TRADEMARK .

Case 1  Miller Brewing Co. the Miller family in fight over Millertime. vs. Miller family – It’s the beer company vs. – Miller Brewing discovered that the family once tried to sell the domain name “millertime. .com” on an internet auction site.com is the family website. – Millertime. “Miller Time” is a registered trademark owned by the Miller Brewing Co.com domain.

operated an interactive Internet news service had registered “zippo” among various Internet domain names. and false designation. Inc. While the defendant. vs. infringement. Zippo Dot Com. Case 2  Zippo Manufacturing Co. the plaintiff was well known forb its lighter and held a trademark on the name “Zippo”. . – Plaintiff sued the defendant in Pennsylvania for trademark dilution. – In Zippo.

com domain name 2 years before the lawsuit. however.com. Etoy. Etoy. It turned out that Etoys backed down and allowed the use of Etoy. since Etoy owned the Etot. where the copmpany Etoys was tryinh to prevent a group of artists.com – A particularly interesting and well publicized court case is Etoys vs.com. . while Etoy was was owning the domain Etoy. Complications arose.com on Etoy’s terms.Case 3  Etoys vs.

unfair competition.org domain name to PETA.Case 4  People of Ethical Treatment of Animals (PETA) vs. PETA did not seek damages. Doughney – PETA sued Doughtney in 1999. . but sought only to enjoin Doughney’s use of the “PETA” mark and an order requiring Doughney to transfer the peta. asserting claims for service mark infringement. dilution and cybersquatting.

– In early 1996. but discovered it was registered by Check Point Software. . Check Point Software Technologies. Inc v.checkpoint. Check Point Software Tech. Checkpoint Systems attempted to register the internet domain name www. Inc has been manufacturing and distributing commercial electronics security control systems since 1967.3d 270 (2001) – Checkpoint Systems. Inc 269 F.com . While. Case 5  Checkpoint Systems. write computer programs that protect and manage access to information was founded in 1993.

com” for which name has appliedf for federal trademark protection. CCBN offers these service for free at “streetevents. Inc v. . – Plaintiff and defendant are direct competitors who offer to investment professionals information about public companies provided by the investor relations departments of those concerns.Com.Com. Inc. Case 6  CCBN. Defendant also offers its information at “streetfusion. C-Call.com” for which mark it too has sought federal trademenk registration. – Plaintiff.

Inc. and Brand McBride. It used plaintiff’s federal registered trademark “Barbie” to advertise the sale of adult entertainment services. 97 Civ 7191 (NY 1998) – Defendant used the phrase “Barbie’s Playhouse” on its web in a font and colors virtually identical to those used by plaintiff to market its products. JCom. Inc. . v. – Plaintiff sued defendant under the Federal Trademark Dilution Act . Case 7  Mattel.

Case 8  Avery Dennison Corp. Sumpton and Poplawski registered the domain name avery.Supp 1337 (Cal 1998) – Avery Dennison Corp. v.com . is an office supply company with the registered trademark “Avery”. Sumpton And Poplawski. 999 F. .

– Defendant. Inc (AOL)v. AOL has a pending application for the trademark for such phrase. – AOL sued AT&T for trademark infringement and dilution. AOL uses the phrase “You Have Mail” to notify its subscribers of their receipt of e-mail.Case 9  America Online. . operates a competing service offering a feature that it describes as “You Have Mail” too. AT&T. AT&T Corp – Plaintiff.

THAT’S ALL FOR TODAY. ..

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