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 persons 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
companys goods or services
from others.
5 Classifications of
Trademarks:
1. Generic marks:
do not receive protection because
they do not distinguish a businesss
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. Suggestive marks:
Suggest some quality of the
product or service.
E.g., Coopertone
4. Arbitrary marks:
Without any inherent relationship
to the product. They are words
used in an unusual way to help the
public remember the trademark
owner.
E.g., Amazon and Banana Republic
5. Fanciful marks:
Also have no inherent relationship
to the product.
E.g., the board games trademark
Candyland and Kodak.
 The last three categories;
suggestive, arbitrary and
fanciful, generally trademark
protection because they are
automatically inherently
distinctive.
TAKE FIVE
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,

brand name, trademark name or
other type of name.
 It contains a few component separated by a
period (dot) such as
www.companyname.com.my.

The first item (www) is the hostname. The next

item (companyname) is the third-level domain
name, and is registered with MYNIC Registration
services. The third item which locates one
website is a second-level domain name. The top
level domain name which describes the purpose
of the entity who owns the third-level name and
also representing the nations.
 THE ADVANTAGES OF HAVING
DOMAIN NAME
1. The domain name address, once obtained,
may be utilized anywhere in the world. So,
unlike a postal address which changes
when one moves to another town, a
domain name may remain the same
whenever one moves.

2. Domain names are truly international. It

can be reached from anywhere in the
world.
 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.
CLASHES BETWEEN DOMAIN
NAME AND TRADEMARK
1. Lack of connection between the system
for registering trademarks on the other
hand, and the system for registering
domain names on the other hand.

-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, the trademarks of
another persons. This act is called
cybersquating.
 Cybersquating
also known as cyberpiracy.
- refers to deliberate act of reserving
a domain name consisting of other
person,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.
 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.
 2. Under trademark law, it allows two
companies to own the same
trademark but in respect of
different products or service
offering. 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.
 3. Trademarks are protected only
within a defined territory. There is no
one system which provides
worldwide rights. Two individuals in
different countries may therefore
own the same mark. 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.
TAKE FIVE
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.
 For example, if Dunkin Donuts were
to use Starbuckss registered
trademark and also use its own
trademark (i.e. Dunkin Donuts), it
would give the confusing impression
that Dunkin Donuts has an affiliation
with Starbucks. Thus, Starbucks
would be entitled to sue Dunkin
Donuts for trademark infringement.
10 Factors Used to
Determine a Likelihood of
Confusions:
1. Strength of the mark : Generic marks
are not given protection.

2. Kind of mark : Descriptive marks are

given less protection.

3. Similarity of the goods: Goods should be

related.
4. Channel of trade : concurrent markets
in cyberspace may be evidence of a
likelihood of confusion.

5. Consumer sophistication : Internet

consumers are more sophisticated
than offline users and should be able
to distinguish competitors.
6. Wrongful intent : not necessary to
prove confusion, but if found it is strong
evidence of confusion.

7. Actual confusion : would a reasonable

prudent consumer be confused?

8. Zone of natural expansion : plaintiff

must provide proof of expanding in the
marketplace of the defendant.
9. Length of time the defendant used the
mark : the longer it was used without
actual confusion the weaker the
plaintiffs case.

10. Same sale efforts : the extent to

which the parties have the same sales
efforts is evidence of confusion.
Some cases regarding the
trademark infringement:

Interpace Corp. v. Lapp, Inc. 721 F.2d

460 (3d Cir. 1983)

Checkpoint Systems, Inc. v. Check

Point Software Technologies, Inc. 269
F.3d 270 (3rd Cir. 2001)
Internet Technology and
Trademark Infringement
Internet technology, the code
used in software, provides three
areas of concern with respect to
trademark infringement:
1. Deep Linking
2. Metatags
3. Framing
1. Deep Linking
A deeplink goes beyond the home page
to other pages within the Web site.

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.
2. Metatags
A metatag is an invisible code imbedded
in the hypertext markup language
(HTML) used to create Web sites.

An unethical Web site owner can easily

use a competitors trade name with a
similar product or service by placing the
competitors name on its metatag.
 It is also known as invisible trademark
infringement.

Few cases for metatags are:

1. Brookfield Communications, Inc. v. West
Coast Entertainment Corporation.
2. Stokely-Van Camp Inc. v. Coca-Cola Co.,
2 U.S.P.Q 2d 1225,1227 (N.D, Ill.1987)
3. 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.

If the framing sites domain name remains

displayed at the top of the Web site, this
could lead to consumer to believe there is
an affiliation with the framed Web site.
TAKE FIVE
TRADEMARK LAW IN
MALAYSIA

The registration of a trademark

is not compulsory. However,
registration gives the registered
proprietor statutory monopoly in
the use of the registered mark.
 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.
 Two questions on the issue
of trademark in Malaysia:
1. Who has the greater right to reserve
the trademark as domain name?

2. Does it amount to infringement of

the trademarks owner exclusive
right over his mark?
 1. 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; trademark law does
not support such a monopoly.
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, that user should be able
to use the domain name.
2. Does it amount to infringement
of the trademarks 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.
INTERNATIONAL
APPROACHES
1. 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.
Among the things that be recommended
are to have dispute resolution and
dispute prevention.
2. Internet Corporation for Assigned
Names and Numbers (ICANN)
evolved a policy known as the
Uniform Domain Name Dispute
Resolution Policy (UDRP) in 1999.
Under this policy a legitimate
trademark owner can get a cyber
squatter evicted by proving the
following:
(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; and

(c) that the registrant has no rights or

legitimate interests in the said domain
name.
 This dispute resolution is not restricted to
any particular national jurisdiction but is
international. Instead of going to court
they use arbitration to solve the problem.
The effect is faster rather than going to
court and is a good alternative for
trademark owners. The final decision is
implemented within 10 days the judgment
something the courts could not guarantee.
3. The International Ad-Hoc Committee
(IAHC)- A committee of internet experts

Made proposal to create for further

generic top-level domains to be
administered by a wider number of
registrars, partly in an attempt to avoid
trademark conflicts.
Has established 7 new category and in
the future many more. i.e., firm, store,
web, arts, rec, info, and nom.
LAW CASES FOR
TRADEMARK
Case 1
Miller Brewing Co. vs. Miller family
Its the beer company vs. the Miller family in
fight over Millertime.com domain.
Millertime.com is the family website. Miller
Time is a registered trademark owned by
the Miller Brewing Co.
Miller Brewing discovered that the family
once tried to sell the domain name
millertime.com on an internet auction site.
 Case 2
Zippo Manufacturing Co. vs. Zippo Dot
Com, Inc.
Plaintiff sued the defendant in Pennsylvania
for trademark dilution, infringement, and false
designation.
In Zippo, the plaintiff was well known forb its
lighter and held a trademark on the name
Zippo. While the defendant, operated an
interactive Internet news service had
registered zippo among various Internet
domain names.
Case 3
Etoys vs. Etoy.com
A particularly interesting and well publicized
court case is Etoys vs. Etoy.com, where the
copmpany Etoys was tryinh to prevent a group
of artists, while Etoy was was owning the
domain Etoy.com. Complications arose,
however, since Etoy owned the Etot.com
domain name 2 years before the lawsuit. It
turned out that Etoys backed down and
allowed the use of Etoy.com on Etoys terms.
Case 4
People of Ethical Treatment of Animals
(PETA) vs. Doughney
PETA sued Doughtney in 1999, asserting
claims for service mark infringement, unfair
competition, dilution and cybersquatting.
PETA did not seek damages, but sought
only to enjoin Doughneys use of the PETA
mark and an order requiring Doughney to
transfer the peta.org domain name to PETA.
 Case 5
Checkpoint Systems, Inc v. Check Point Software
Technologies, Inc 269 F.3d 270 (2001)
Checkpoint Systems, Inc has been manufacturing and
distributing commercial electronics security control
systems since 1967. While, Check Point Software
Tech, write computer programs that protect and
manage access to information was founded in 1993.
In early 1996, Checkpoint Systems attempted to
register the internet domain name
www.checkpoint.com , but discovered it was
registered by Check Point Software.
 Case 6
CCBN.Com, Inc v. C-Call.Com, Inc.
Plaintiff and defendant are direct competitors
who offer to investment professionals
information about public companies provided
by the investor relations departments of those
concerns.
Plaintiff, CCBN offers these service for free at
streetevents.com for which name has
appliedf for federal trademark protection.
Defendant also offers its information at
streetfusion.com for which mark it too has
sought federal trademenk registration.
 Case 7
Mattel, Inc. v. JCom, Inc. and Brand
McBride, 97 Civ 7191 (NY 1998)
Defendant used the phrase Barbies
Playhouse on its web in a font and colors
virtually identical to those used by plaintiff to
market its products. . It used plaintiffs federal
registered trademark Barbie to advertise the
sale of adult entertainment services.
Plaintiff sued defendant under the Federal
Trademark Dilution Act
Case 8

Avery Dennison Corp. v. Sumpton And

Poplawski, 999 F.Supp 1337 (Cal
1998)
Avery Dennison Corp. is an office supply
company with the registered trademark
Avery. Sumpton and Poplawski
registered the domain name avery.com .
Case 9
America Online, Inc (AOL)v. AT&T Corp
Plaintiff, AOL uses the phrase You Have
Mail to notify its subscribers of their receipt
of e-mail. AOL has a pending application for
the trademark for such phrase.
Defendant, AT&T, operates a competing
service offering a feature that it describes as
You Have Mail too.
AOL sued AT&T for trademark infringement
and dilution.
THATS ALL FOR
TODAY..