TRADEMARKS AND THE INTERNET
I. BACKGROUND INFORMATION ABOUT TRADEMARKS
Visit Oppedahl & Olson's "General Information About Trademarks." Browse through the questions and answers. Feel free to skip any links that deal with filing requirements.
http://www.patents.com/trademar.htm
Read through:
II. INTERNET TRADEMARK PROTECTION
Before proceeding with the assignment, it might be helpful to take a look at this brief summary of Trademark infringement issues on the net.
http://chillingeffects.org/trademark/
As outlined below, trademark owners are armed with the following causes of action to protect themselves from online trademark infringers:
A. Trademark Infringement
B. Dilution
C. Cybersquatting
A. Trademark Infringement
"A traditional claim of trademark infringement under the Lanham Act requires the claimant to establish that it is the rightful owner of a valid mark; that its use of the mark is senior to that of the defendant; and that the defendant's use is likely to cause confusion among purchasers."
LIKELIHOOD OF CONFUSION
Although the list is not exhaustive, courts use the following eight factors to determine whether or not confusion is likely between non-identical goods or services :
1. The strength of plaintiff’s mark;
2. the degree of similarity between plaintiff’s and defendant’s marks;
3. the proximity of the products or services;
4. the likelihood that plaintiff will bridge the gap
5. evidence of actual confusion
6. defendant’s good faith in adopting the mark;
7. the quality of defendant’s product or service;
8. the sophistication of the buyers
INITIAL INTEREST CONFUSION DOCTRINE
"The IIC doctrine permits a finding of infringement in a case involving confusion that is only temporary, that is, where any confusion is dispelled before a purchase is made."
Read Jason C. Kravitz's Initial Interest Confusion: Dispelling Some of the Confusion here: http://www.nixonpeabody.com/publications_detail3.asp?Type=P&PAID=&ID=729
EXAMPLES:
Read Playboy v. Welles, F.3d 796 (9th Cir. 2002), http://caselaw.lp.findlaw.com/data2/circs/9th/0055009p.pdf
WHAT DO YOU THINK?
B. Dilution
Federal Trademark Dilution discussed here (make sure to read through the sections Summary & Guidelines and Definition of Dilution).
http://www.ladas.com/BULLETINS/1996/FederalDilution.html
EXAMPLE:
Read People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) http://laws.lp.findlaw.com/getcase/4th/case/001918Pv4&exact=1
WHAT DO YOU THINK?
HOW ABOUT THIS ONE...
DID YOU CHANGE YOUR MIND AT ALL AFTER VISITING THE ALLEGEDLY INFRINGING SITES?
C. Cybersquatting
"Cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers the domain to the person or company who owns a trademark contained within the name at an inflated price, an act which some deem to be extortion."
EXAMPLE:
III. THIS JUST IN!
Read Rescuecom v. Google, No. 5:04-CV-1055 (N.D.N.Y. Sept. 28, 2006).
http://claranet.scu.edu/tempfiles/tmp28538/rescuecomgoogle.pdf
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