The Internet Law Page: Trademarks and Internet Domain Names

A "trademark" is a name or design used by a business to identify their product. A "service mark" does the same thing for a service. They are protected by state and federal laws. The basic rule of these laws is first in time, first in right - but there are many exceptions and limitations to this rule. The idea behind the law is to protect the first user of a name of a product or service from latecomers who try to use the same name to identify their products or services. If the use of a same or similar mark is likely to cause confusion to the consumers, then the law generally prohibits the use of the mark by the latecomer. Trademarks can be registered in the Patent and Trademark Office in Washington. This allows people to determine whether a name is available for use or not. For more information on trademark laws see:

http://www.law.cornell.edu/topics/trademark.html

Internet domain names can be a form of servicemark depending on how they are used. They frequently also identify a commercial service or product. If you have a domain name that is important to you, then you'd better try and protect that name from use outside of the Net by a trademark registration. To better understand the technicalities of domain name servicemark and trademark registration see:

http://www.uspto.gov/web/offices/tac/domain/tmdomain.htm

This is the official U.S. Patent and Trademark Policy Statement on the Registration of Domain Names as trademarks. They are now receiving a flood of domain name applications and have adopted this new policy to cover it. This statment goes into many of the technical details of registration and discusses some of the inherent problems and difficulties with domain name registration. This is good reading on the subject for any lawyer with some experience in this area of the law. For more basic and general information on the overall trademark and service registration process and the government forms that are used, see:

http://www.naming.com/trademark2.html

Hopefully you won't be unpleasantly surprised to find that someone else already has the rights to your name in a similar product or service. If they do, you could be infringing their trademark and they could sue you and force you to stop using their name.

There are several lawsuits now underway concerning trademark infringements on the Internet or against computer companies. In one recent case (link to case) Playboy sued a BBS in Jacksonville for both copyright infringement and for violation of their trademarked bunny ears.

It resulted in a huge judgment against the defendant for illegal use of the Playboy bunny logo. In another case, singer Bob Dylan has purportedly sued Apple Computer for naming a computer language "Dylan." It was supposedly an abbreviation for "Dynamic Language." Astronomer Carl Sagan also complained to Apple when they starting using "Sagan" as the internal code name of a computer that became the Macintosh 7100. Apple stopped using his name, but instead started calling it the "BHA." Sagan supposedly sued Apple anyway for trademark infringement, defamation and invasion of privacy, claiming that it was well known that Apple used "BHA" as an acronym for "butt-head astronomer." The Judge reportedly threw out Sagan's case.

Network Solutions, Inc. http://www.internic.net/, http://rs.internic.net/rs-internic.html,  is the company which is now responsible for the assignment of domain names on the Internet. It has been caught up in disputes between holders of domain names on the Internet and holders of pre-existing trademarks of the same name. For instance an ex-video jockey Adam Curry used the domain name of "MTV" and his former employers didn't like it. They sued him for trademark infringement. Curry claimed they gave him permission to do so, that they said they were not interested in the Internet.

Assuming MTV did give him permission, it was obviously before they understood the Internet and the potential value and importance of a domain name. Adam Curry's MTV web is now visited by an average of 35,000 people a day.

There are other cases where a competitor has deliberately reserved the use of their competitor's name as a domain name to try and lock them out. (It didn't work!) Someone has even taken on MicroSoft and was using a very similar, confusingly similiar, variation of their name (micr0soft). They had a funny home page about it with extensive and severe Bill Gates satire. The last time I looked, however, this page had suddenly disappered. Hmmm....

Network Solutions now recognizes the problem of trademark rights and domain names. For that reason in May 1995 it instituted a policy wherein it will suspend the use of a domain name if the person using the name does not voluntarily relinquish it after demand from a company that owns a federal trademark to the name. Later in August 1995 Network Solutions announced a new policy where any company that registers a domain name is required to indemnify it for any expenses it may incur from a lawsuit by someone claiming federal trademark rights in the same name. The next month Network Solutions announced that it was going to start charging users a fee of $50.00 per year to maintain their domain names. This outraged many small, long time domain users who were used to a free ride. But in view of all the disputes in this area, it's easy to see how the revenue is needed by the company stuck in the middle of many of these suits.

Before you get an Internet domain name, or before you begin to use any new name to identify your company's product or service, check to see if the name is available. At the present time the Trademark Office registrations are not computerized and you have to pay a service in Washington to do a manual search for you. It costs $150.00 or more depending on the scope of the search you order. The search report shows that the name you wanted is already taken, then you may be disappointed, but you've saved yourself from a big mess later. You should go back to the drawing boards to come up with a new name. Once you find a name that is clear, go ahead and register that name in Washington so that someone else won't use it. State registrations are probably useless for any Net related business because they only apply for protection in that state. Also, don't assume that you have the right to use your own name or company name to identify your product. You don't if the name is already a registered mark. Even Senator Exxon (Mr. Decency himself) couldn't open up a gas station with his own name on it.

Final suggestion: never use a product or service name until you check to see if the name is already registered.

This area of the Law can get quite tricky. Although the forms appear simple, there is more to it than meets the eye. We strongly suggest you consult with an attorney to protect what might be your most valuable asset - your name.
 

Here is the Network Solutions' Domain Name Dispute Policy (Rev 02), effective September 9, 1996. This policy may change again soon, so be sure to check whether this policy is still in effect.
 

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© 1996 - Ralph C. Losey, Attorney at Law

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