Tim
~~~
Marie A. D'Amico Word Count: 643
657 Knoll Drive
San Carlos, CA 94070-2944
Vox: (415) 592-5127
Fax: (415) 592-5196
Email: mad@madcapps.com
Trademarks in Cyberspace
Trademarks and service marks are words, phrases, pictures, symbols, or
shapes which designate and distinguish your products or services from
others in the marketplace. These marks are big business. Professor Paul
Goldstein of Stanford Law School says trademarks constituted 95% of the $25
billion Kohlberg Kravis Roberts paid for RJR Nabisco in 1989. The $64K
question now is: [1]Can you protect your trademarks in cyberspace?
On a first come, first served basis, [2]InterNIC registers domain names
which aren't identical to preexisting names. On November 23, 1995,
InterNIC's registrar, Network Solutions, Inc. (NSI) [3]issued a domain
dispute policy statement. NSI now can withdraw your domain name, or place
it on an unusable hold status, if presented with an identical, federal mark
registration (state registrations are insufficient) owned by another and
predating your cyberuse. To contest NSI's conduct, you must either own a
federal mark registration on your domain name, and post a bond to indemnify
NSI for potential damages, or settle your squabble in federal court or
arbitration. [4]Roadrunner Computer Systems, an Internet Service Provider,
has challenged NSI's new policy in federal court as a breach of contract
and intentional interference with Roadrunner's contractual client
relations. NSI's statement also has deluged the Patent and Trademark Office
(PTO) with applications for these new cybermarks.
While the [5]PTO recently said registration of cybermarks was chock-full
of unanswered questions, they did give some guidance. To maintain your real
world marks in cyberspace, register them as domain names with InterNIC
(cost: $100 per name). To defend your domain names, file mark applications
with the PTO (cost: $245 per class). You can save PTO filing fees and
lengthy litigation by having a [6]search firm
(http://www.thomson-thomson.com for best of breed) investigate whether
others use substantially similar federal, state, or cybermarks (cost: $340
per mark). In the real world, multiple marks can coexist if they cover
classes of diverse goods or services. CFM is a mark for classes in forest
management and an acronym mark for Continental Fan Manufacturing. In
cyberspace, however, only one CFM.com can exist. If others use similar
marks, choose a new name.
You should select a domain name which is [7]arbitrary, fanciful, or
suggestive. Arbitrary marks are well-known words applied to unrelated
material (Apple for computers, Dutch Boy for paint). Fanciful marks are
invented words (Exxon, Kodak). Suggestive marks are words requiring
imagination to determine the referenced staples or services (Cosmania for
cosmetics, HealthNet for health services). The PTO will not grant mark
protection for descriptive or generic marks. Descriptive marks are words
describing a function or feature of the materials (Breadspred for jam,
Scholastic for test scoring). Generic marks are words defining the class of
goods or services (Analog Devices, Bundt). Think Greek gods, flora and
fauna, zoological species, anything but overused words like digital,
media, or net.
The PTO grants mark applications in [8]34 categories of goods and [9]8
classes of services. Many marks for electronic content fall into Class 42
(miscellaneous services). After you select your cybermark and class, you
must submit evidence showing your mark isn't contact information, but
identifies your service. Business cards and stationery won't suffice. Your
cybermark should appear on advertising, brochures, and other work product
distinctly describing what you provide, not where you're located. If you
haven't used your domain name yet, or don't have the proof printed, you can
file an intent-to-use mark application, and not need submit specimens for
about two years.
Can you file mark forms without counsel? Yes. The PTO has
fill-in-the-blank forms, and explanatory brochures and manuals
(http://www.uspto.gov). Some study can save you hundreds of dollars. You
also can consult with a trademark attorney for between $300 - $1000 per
filing. File soon or you'll find someone else has registered your marks or
desired domain names and it'll cost you to get them back.
[1]You can find a thorough discussion of domain names and trademarks at
http://www.ll.georgetown.edu/lc/internic/domain1.html.
You can find a scholarly discussion of the emerging law of cybermarks, with
an in-depth discussion of trademark law in an understandable format, at
http://www.urich.edu.80/~jolt/v1i1/burk.html.
[2]InterNIC is a cooperative activity between the National Science
Foundation, Network Solutions, Inc. (InterNIC's registrar), and AT&T. You
can find InterNIC, and its policies and procedures, at
http://rs.internic.net. All applications for domain names must be sent to
InterNIC electronically at hostmaster@internic.net. All payment for domain
names must be sent to:
InterNIC Registration Services
PO Box 1656, Herndon, VA 22070 USA, Phone: (703) 742-4777,
Fax: (703) 742-4811.
Registration fee is $100; a new domain name is valid for two years from
registration. Maintenance fee is $50 per year. Payment must be in U.S.
currency via a check or money order payable to InterNIC Registration
Services. You can pay by credit card (the form is available at
ftp://rs.internic.net/templates/pmt-template.txt) but payment will not be
accepted electronically.
[3]You can find InterNIC's policy statement at
ftp://rs.internic.net/policy/internic/internic-domain-r.txt.
[4]Roadrunner Computer Systems, Inc. (RCS), an Internet Service Provider
(ISP), has used the domain name "roadrunner.com" since May 1994. NSI
informed RCS, in December 1995, that a third party (Challenger) had
registered a complaint to NSI that Challenger owned the registered
trademark "ROADRUNNER" for toys, plush dolls, and Halloween costumes and
masks. NSI gave RCS the options of providing proof of ownership of a
trademark registration identical to roadrunner.com and posting a bond to
protect NSI from suit by Challenger, giving up the domain name, or having
the domain named placed "on hold" to be used by no one until the dispute
was resolved by agreement, arbitration, or court order.
RCS applied for and was granted a trademark registration for roadrunner.com
in the country of Tunisia but NSI rejected this trademark registration
because it was supplied to NSI outside of the time frame in NSI's new
policy (30 days from receipt of notice from NSI that a complaint had been
lodged).
RCS continues to use the domain name based solely upon a mutual agreement
between RCS and Challenger. The Court set a scheduling order on May 1,
1996 ruling that a pretrial conference will be held on September 19th.
You can read about this dispute at http://www.patents.com/nscipt.sht.
[5]You can find the PTO's statement regarding registration of domain names
at http://www.uspto.gov/web/uspto/info/domain.html.
[6]Thomson & Thomson is the best trademark search firm I have used. You can
find them at:
Thomson & Thomson
500 Victory Road
North Quincy, MA 02171-3145
Phone: (800) 692-8833, (617) 479-1600
1750 K Street NW, Suite 200
Washington, D.C. 20006-2305
Phone: (800) 356-8630, (202) 835-0240
or
651 West, Notre-Dame, Suite 400
Montreal, Quebec H3C 1J1
Phone: (800) 561-6240, (514) 393-9911
A full search with normal turnaround time, about five business days,
currently costs $340.00. Thomson & Thomson often updates their search
coverage and prices so call ahead of time. Their full search report
includes a search of federal, state, and common law trademarks and/or
service marks, business names found in various sources such as the Yellow
Pages, Dun & Bradstreet reports, and periodicals from Nexis, and now domain
names.
You can obtain turnaround times of two days ($465) or same day ($650) and
less than comprehensive searches (just federal and state marks for $255 (or
$350 for two days or $490 for same day)).
You can find Thomson & Thomson at http://www.thomson-thomson.com.
[7]You can find a description of the different types of trademarks, and
their strengths, in the Trademark Manual of Examining Procedure.
To order, write to
Trademark Manual of Examining Procedure
Superintendent of Documents
U.S. Government Printing Office
PO Box 371954
Pittsburgh, PA 15250-7954
Telephone: (202) 512-1800
If you order by mail, enclose a check for $19.00 payable to the
Superintendent of Documents and expect a two week wait for the material.
[8]The International Classifications for Trademarks are as follows:
GOODS
Class 1 Chemicals
Class 2 Paints
Class 3 Cosmetics and Cleaning Preparations
Class 4 Lubricants and Fuels
Class 5 Pharmaceuticals
Class 6 Metal Goods
Class 7 Machinery
Class 8 Hand Tools
Class 9 Electrical and Scientific Apparatus
Class 10 Medical Apparatus
Class 11 Environmental Control Apparatus
Class 12 Vehicles
Class 13 Firearms
Class 14 Jewelry
Class 15 Musical Instruments
Class 16 Paper Goods and Printed Matter
Class 17 Rubber Goods
Class 18 Leather Goods
Class 19 Non-Metallic Building Materials
Class 20 Furniture and Articles Not Otherwise Classified
Class 21 Housewares and Glass
Class 22 Cordage and Fibers
Class 23 Yarns and Threads
Class 24 Fabrics
Class 25 Clothing
Class 26 Fancy Goods
Class 27 Floor Coverings
Class 28 Toys and Sporting Goods
Class 29 Meats and Processed Foods
Class 30 Staple Foods
Class 31 Natural Agricultural Products
Class 32 Light Beverages
Class 33 Wines and Spirits
Class 34 Smoker's Articles
You can purchase the Trademark Manual of Examining Procedure, the handbook
for trademark examiners in the U.S. Patent and Trademark Office. It's a
large, two inch document which contains everything you likely want or need
to know about trademarks and service marks. In addition, trademark
examiners sometimes cite sections of this manual when responding to your
application, so it's more than a helpful guide to have around. You can
purchase it from:
Trademark Manual of Examining Procedure
Superintendent of Documents
U.S. Government Printing Office
PO Box 371954
Pittsburgh, PA 15250-7954
Telephone: (202) 512-1800
If you order by mail, enclose a check for $19.00 payable to the
Superintendent of Documents and expect a two week wait for the material.
Chapter 1400 of the TMEP, "Classification and Search," also gives further
elaboration on these categories and gives examples of specific goods and
services which are included in each category, and perhaps more important,
specific examples of goods and services which are not included in each
category. For example, it defines Class 38, Telecommunications as "This
class includes mainly services allowing at least one person to communicate
with another by a sensory means. Such services include those which:
(1) allow a person to talk to another,
(2) transmit messages from one person to another, and
(3) place a person in oral or visual communication with another (radio and
television).
Includes, in particular:
- services which consist essentially of the diffusion or radio or
television programmes.
Does not include, in particular:
- radio advertising services (Class 35)."
[9]The International Classifications for Service Marks are as follows:
SERVICES
Class 35 Advertising and Business
Class 36 Insurance and Financial
Class 37 Construction and Repair
Class 38 Communication
Class 39 Transportation and Storage
Class 40 Material Treatment
Class 41 Education and Entertainment
Class 42 Miscellaneous
You can purchase the Trademark Manual of Examining Procedure, the handbook
for trademark examiners in the U.S. Patent and Trademark Office. It's a
large, two inch document which contains everything you likely want or need
to know about trademarks and service marks. In addition, trademark
examiners sometimes cite sections of this manual when responding to your
application, so it's more than a helpful guide to have around. You can
purchase it from:
Trademark Manual of Examining Procedure
Superintendent of Documents
U.S. Government Printing Office
PO Box 371954
Pittsburgh, PA 15250-7954
Telephone: (202) 512-1800
If you order by mail, enclose a check for $19.00 payable to the
Superintendent of Documents and expect a two week wait for the material.
Chapter 1400 of the TMEP, "Classification and Search," also gives further
elaboration on these categories and gives examples of specific goods and
services which are included in each category, and perhaps more important,
specific examples of goods and services which are not included in each
category. For example, it defines Class 38, Telecommunications as "This
class includes mainly services allowing at least one person to communicate
with another by a sensory means. Such services include those which:
(1) allow a person to talk to another,
(2) transmit messages from one person to another, and
(3) place a person in oral or visual communication with another (radio and
television).
Includes, in particular:
- services which consist essentially of the diffusion or radio or
television programmes.
Does not include, in particular:
- radio advertising services (Class 35)."
Part 2
Marie A. D'Amico Word Count: 611
657 Knoll Drive
San Carlos, CA 94070-2944
Vox: (415) 592-5127
Fax: (415) 592-5196
Email: mad@madcapps.com
Deciding Domain Name Disputes
Network Solutions, Inc. (NSI) processes more than 600 applications daily
for domain names. With this request explosion, Internet users, innocently
or intentionally, sometimes select domain names identical or substantially
similar to trademarks or service marks of other organizations. [1]NSI has
neither the authority or adeptness to adjudicate domain disputes. What's a
mark owner to do?
If you discover a domain name identical or similar, either textually or
phonetically, to your real-world mark, you can [2]contest this use in
federal court as a mark infringement. [3]Courts generally evaluate eight
factors to determine infringement. [4]Courts examine the strength of the
infringed mark, the similarity of the names and the goods, the current
marketing channels, the likelihood of market expansion outside current
channels, the purchasers' sophistication, evidence of consumer confusion,
and the parties' intent. Balancing these elements, courts conclude whether
the domain name will confuse consumers as to the sponsorship of the site.
Using consumer confusion as your mantra, you can easily resolve the
much-touted domain disputes. [5]MTV Networks (MTV) claimed ex-VJ [6]Adam
Curry's personal use of "mtv.com" violated their MTV mark. While this case
also entailed unexplored [7]employment issues, anyone who's alive would
confuse "mtv.com" with MTVN. The parties settled and MTVN owns mtv.com.
Zero Micro Software registered the domain "micros0ft.com." As the official
operating system of China, about 850 million consumers would confuse this
domain with the Redmond hegemony. Case closed. A communications company
registered dianetics.com. If the Church of Scientology isn't confused with
dianetics, who is? The Church won. A Colorado-based corporation registered
clue.com. Any board game player would affiliate this site with Ms.
Scarlett. Clue's owner, Hasbro, should win.
[8]Princeton Review registered the domain name kaplan.com to "mock and
annoy" their chief rival, [9]Kaplan Education Centers. Princeton then
offered to relinquish all rights for some beer. Besides causing consumer
confusion, Princeton scores low on the intent factor. An arbitration panel
transferred the site to Kaplan. [10]A Newsweek reporter registered
mcdonalds.com. Billions served would be confused. McDonald's has the site.
Owners of "famous" marks also can fight in federal court against domain
names under the [11]newly-enacted [12]Federal Trademark Dilution Act.
[13]Senator Patrick Leahy (D-Vt) said the statute should "help stem the use
of deceptive Internet addresses taken by those who are choosing marks that
are associated with the products and reputations of others."
Unlike mark infringement, [14]famous mark owners [15]can enjoin domains
irrespective of consumer confusion. Courts can disallow domains which
dilute the distinctiveness of renowned marks by affiliating them with
unrelated goods (DuPont shoes, Buick aspirin) or unsavory goods (adult
Internet sites). [16]The Dilution Act lists 10 factors courts can consider
to conclude whether a mark is "famous."
[17]Toymaker Hasbro, Inc. [18]sued Internet Entertainment Group, Ltd.
(IEG) on January 25th, 1996 under this new Dilution Act. On February 9th,
the judge enjoined IEG from employing candyland.com for sexually-explicit
materials.
Hasbro demonstrated CandyLand's distinctiveness by proving 94% of mothers
are aware of CandyLand, Disney featured it in Toy Story, and Hasbro sold 23
million copies of it worldwide in the past 20 years. The judge [19]ordered
IEG to remove immediately all candyland.com content. And, while he granted
IEG 90 days to supply a referral to their new site, he forbade any
hyperlink reference to it. IEG expended (and forfeited) an estimated
$170,000 in purchasing and advertising its domain.
Unless you like frittering time for forfeitable domains or in federal
court, don't register domains resembling real-word marks. And, if you use
marks critical to your company, register them as domains before someone
with a bad attitude files first.
[1]You can find InterNIC's policy statement at
ftp://rs.internic.net/policy/internic/internic-domain-r.txt. While NSI's
policy was issued on November 13, 1995, in some instances, the NSI appears
to be treating it retroactively. NSI has notified some domain name owners,
who obtained and used their names prior to November 13th, that their names
may be withdrawn or placed in an unusable "hold" status because they are
identical to real world trademarks. You can find a description of such a
dispute at http://www.patents.com/nscipt.sht.
You can find a statement about trademarks in the online world by the
Working Group on Intellectual Property Rights at
http://www.lectlaw.com/files/inp12. This site contains an excerpt from
"Intellectual Property and the National Information Infrastructure: The
Report of the Working Group on Intellectual Property Rights."
[2]You can find the entire Trademark Act online at
http://www.law.cornell.edu/usc/15/22/overview.html.
You can find an introduction to trademarks at
http://www.law.cornell.edu/usc/15/22/overview.html.
You can find the answers to a dozen frequently asked questions about U.S.
Trademark Law at http://www.law.cornell.edu/usc/15/22/overview.html.
[3]You can find an introduction to trademarks at
http://www.law.cornell.edu/usc/15/22/overview.html.
You can find the answers to a dozen frequently asked questions about U.S.
Trademark Law at http://www.law.cornell.edu/usc/15/22/overview.html.
[4]You can find an introduction to trademarks at
http://www.law.cornell.edu/usc/15/22/overview.html.
You can find the answers to a dozen frequently asked questions about U.S.
Trademark Law at http://www.law.cornell.edu/usc/15/22/overview.html.
[5]If you review the MTV Networks (MTVN), a division of Viacom
International, Inc. v. Curry case in terms of trademark infringement, the
resolution is simple. MTVN owns the trademark on the call letters MTV and
any use of mtv.com would cause consumer confusion.
A careful reading of the case and its pleadings, however, reveals there may
have been issues which were never resolved which might have altered the
outcome.
Adam Curry was a video disc jockey (VJ) for MTVN under a written contract
until May 1, 1992. He continued as an MTV VJ under oral, informal terms
until April 1994. Curry applied to InterNIC and started using mtv.com in
the spring of 1993.
Curry alleges he apprised an MTVN Vice-President, Matthew Farber, of his
Internet activities and Curry's use of the Internet site address mtv.com.
Curry alleges Farber disclaimed any interest in mtv.com. In August 1993,
Curry announced mtv.com on MTVN broadcasts. Curry claims MTVN programmers
placed the letters "mtv.com" on the television screen for viewers during
MTVN "Top Twenty Countdowns." Curry also alleges he had numerous
discussions with MTVN personnel during the time period August 1993 until
April 1994 during which MTV ensured Curry they had no objection to Curry's
use and development of the mtv.com site. Curry alleges MTVN requested Curry
include certain MTVN materials at his mtv.com site.
On January 19th, 1994, MTV requested, in writing, Curry cease and desist
using mtv.com. Curry did not. MTVN sued Curry in U.S. District Court in
the Southern District. On one preliminary motion on October 28th, 1994, the
judge ruled "Development of the record to a fuller degree than what is
presented on the present motion is warranted. In June or August 1993, MTVN
may simply have failed to appreciate the commercial potential of an
Internet music site, and improvidently (in retrospect), granted Curry all
of the rights he has alleged."
You can find this opinion in print at 867 F. Supp. 202 (S.D.N.Y. 1994) or
on the Internet at http://www.jmls.edu/cyber/cases/mtv.txt.
The parties settled the matter. MTVN owns mtv.com and Curry owns
metaverse.com.
[6]You can find Adam Curry at http://www.metaverse.com.
[7]If you review the MTV Networks (MTVN), a division of Viacom
International, Inc. v. Curry case in terms of trademark infringement, the
resolution is simple. MTV N owns the trademark on the call letters MTV and
any use of mtv.com would cause consumer confusion.
A careful reading of the case and its pleadings, however, reveals there may
have been issues which were never resolved which might have altered the
outcome.
Adam Curry was a video disc jockey (VJ) for MTVN under a written contract
until May 1, 1992. He continued as an MTV VJ under oral, informal terms
until April 1994. Curry applied to InterNIC and started using mtv.com in
the spring of 1993.
Curry alleges he apprised an MTVN Vice-President, Matthew Farber, of his
Internet activities and Curry's use of the Internet site address mtv.com.
Curry alleges Farber disclaimed any interest in mtv.com. In August 1993,
Curry announced mtv.com on MTVN broadcasts. Curry claims MTVN programmers
placed the letters "mtv.com" on the television screen for viewers during
MTVN "Top Twenty Countdowns." Curry also alleges he had numerous
discussions with MTVN personnel during the time period August 1993 until
April 1994 during which MTV ensured Curry they had no objection to Curry's
use and development of the mtv.com site. Curry alleges MTVN requested Curry
include certain MTVN materials at his mtv.com site.
On January 19th, 1994, MTV requested, in writing, Curry cease and desist
using mtv.com. Curry did not. MTVN sued Curry in U.S. District Court in
the Southern District. On one preliminary motion on October 28th, 1994, the
judge ruled "Development of the record to a fuller degree than what is
presented on the present motion is warranted. In June or August 1993, MTVN
may simply have failed to appreciate the commercial potential of an
Internet music site, and improvidently (in retrospect), granted Curry all
of the rights he has alleged."
You can find this opinion in print at 867 F. Supp. 202 (S.D.N.Y. 1994) or
on the Internet at http://www.jmls.edu/cyber/cases/mtv.txt.
[8]You can find Princeton Review at http://www.review.com.
If you signed onto the kaplan.com address while Princeton Review owned it,
you were allegedly offered electronic materials disparaging the quality of
Kaplan's services.
[9]You can find Kaplan Education Centers at http//www.kaplan.com.
[10]Joshua Quittner, a writer for Newsweek and Wired, and author of various
fiction and nonfiction books, registered the domain name mcdonalds.com to
demonstrate the problems with NSI's domain name registration system.
You can find Quittner at
http://www.hotwired.com/People/Bios/Quittner.j/index.html. He is no longer
reachable at ronald@mcdonalds.com.
You can find various features about this dispute at
http://www.smartdocs.com/~migre.v/wired.com/1-22.html,
http://www.smartdocs.com/~migre.v/wired.com/1-23.html, and
http://www.hotwired.com/wired/2.10/departments/electrosphere/mcdonalds.html.
[11]Clinton signed the Federal Trademark Dilution Act into law on January
16th, 1996. The Federal Dilution of a Famous Mark was a subsection added to
the current Trademark Act of 1946. You can find the text of the relevant
statute online at
http://www.ll.georgetown.edu/lc/internic/trademarks/1125(c).html.
[12]The Federal Trademark Dilution Act, in essence, provides:
(c) Remedies for dilution of famous marks
(1) The owner of a famous mark shall be entitled, subject to the
principles of equity and upon such terms as the court deems reasonable, to
an injunction against another person's commercial use in commerce of a mark
or trade name, if such use begins after the mark has become famous and
causes dilution of the distinctive quality of the mark, and to obtain such
other relief as is provided in this subsection. In determining whether a
mark is distinctive and famous, a court may consider factors such as, but
not limited to--
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with
the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is
used;
(E) the channels of trade for the goods or services with which the
mark is used;
(F) the degree of recognition of the mark in the trading areas and
channels of trade used by the marks' owner and the person against whom the
injunction is sought;
(G) the nature and extent of use of the same or similar marks by
third parties; and
(H) whether the mark was registered under the Act of March 3, 1881,
or the Act of February 20, 1905, or on the principal register.
(2) In an action brought under this subsection, the owner of the famous
mark shall be entitled only to injunctive relief unless the person against
whom the injunction is sought willfully intended to trade on the owner's
reputation or to cause dilution of the famous mark. If such willful intent
is proven, the owner of the famous mark shall also be entitled to the
remedies set forth in sections 1117(a) and 1118 of this title, subject to
the discretion of the court and the principles of equity.
(3) The ownership by a person of a valid registration under the Act
of March 3, 1881, or the Act of February 20, 1905, or on the principal
register shall be a complete bar to an action against that person, with
respect to that mark, that is brought by another person under the common
law or a statute of a State and that seeks to prevent dilution of the
distinctiveness of a mark, label, or form of advertisement.
(4) The following shall not be actionable under this section:
(A) Fair use of a famous mark by another person in comparative
commercial advertising or promotion to identify the competing goods or
services of the owner of the famous mark.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary.
The Federal Dilution of a Famous Mark was a subsection added to the current
Trademark Act of 1946. You can find the text of the relevant statute online
at http://www.ll.georgetown.edu/lc/internic/trademarks/1125(c).html.
About half of all states now have dilution statutes. Many trademark
practitioners felt a federal dilution statute was necessary because (1) not
all states have dilution statues, (2) no uniform definition of dilution
existed, and (3) state courts don't often issue injunctions outside of
their geographical locations. Many feel the Federal Trademark Dilution Act
will supply both nationwide and uniform dilution protection for famous marks.
[13]You can find Senator Patrick Leahy (D-Vt) online at
http://www.otn.com/iics/la/politics/leahy.htm. Senator Leahy was one of
five Senators who voted against the recent Telecommunications Reform Act.
He has darkened his Web page in protest against the online censorship
provisions of this new law.
[14]On February 2nd, 1996, Avon sued, then later settled, with a competitor
who claimed avon.com. Avon alleged the antagonist registered the domain
solely to extort funds from Avon.
You can find Avon at http://www.avon.com.
[15]Unlike mark infringement actions, dilution doesn't focus upon consumer
confusion. Rather, dilution focuses upon blurring or tarnishment which
weakens the distinctiveness or goodwill associated with a mark.
Blurring occurs when a mark is used without permission on unrelated
products or services. Blurring can cause the mark to cease functioning as a
distinctive identifier of the mark owner's products or services.
Tarnishment occurs when a mark becomes linked with poor quality or unsavory
goods or services.
[16]The Act provides the following nonexhaustive list to aid courts in
determining whether a mark is famous:
In determining whether a mark is distinctive and famous, a court may
consider factors such as, but not limited to--
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with
the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is
used;
(E) the channels of trade for the goods or services with which the
mark is used;
(F) the degree of recognition of the mark in the trading areas and
channels of trade used by the marks' owner and the person against whom the
injunction is sought;
(G) the nature and extent of use of the same or similar marks by
third parties; and
(H) whether the mark was registered under the Act of March 3, 1881,
or the Act of February 20, 1905, or on the principal register.
You can find the text of the relevant statute online at
http://www.ll.georgetown.edu/lc/internic/trademarks/1125(c).html.
[17]You can find an online discussion of Hasbro, Inc. v. Internet
Entertainment Group, Ltd. at http://www.cyberlaw.com/cylw0296.html.
You can find a one-paragraph description of this case and a copy of the
February 5th, 1996 preliminary injunction issued by the judge at
http://www.eden.com/~case/candy2.html.
[18]Hasbro, Inc. v. Internet Entertainment Group Ltd., et al., Case
C96-130WD (January 25, 1996) in the United States District Court in the
Western District of Washington at Seattle.
Hasbro Counsel: Jill Bowman of the law firm Stoel Rives, One Union Square,
600 University Street, Suite 3600, Seattle, Washington 98101, (206)
624-0900. Additional Hasbro counsel: Ken Wilson of the law firm of Wilson,
Sonsini, Goodrich & Rosati located at 650 Page Mill Road, Palo Alto,
California 94304 at (415) 493-9300.
Either may be able to assist you in obtaining a copy of the complaint, a
transcript of the judge's hearing in which he determined the resolution,
and a copy of the judge's preliminary injunction.
[19]The Judge had a hearing on February 5th, 1996 and the official court
reporter, Sue Palmerton at (206) 553-1899, may be able to assist you in
obtaining a copy of the order.
The case is Hasbro, Inc. v. Internet Entertainment Group Ltd., et al., Case
C96-130WD (February 5th, 1996). The document is entitled "Ruling on Motion
for Temporary Restraining Order" by the Honorable William L. Dwyer, U.S.
District Judge, at the United States Courthouse, Seattle, Washington. You
will likely be charged a fee to obtain a copy.
The official report of the preliminary injunction in the case was filed on
February 9th, 1996. You can likely obtain a copy from the U.S. District
Court, Western District of Washington at Seattle.
You can also find a copy of the final, February 9th ruling online at
http://www.eden.com/~case/candy1.html.
This site is blacked out and the ruling is almost impossible to read unless
you print it.
--** History 101** Hiroshima 45 - Chernobyl 86 - Windows 95 ============================================= "The only problem with Microsoft is they just have no taste, they have absolutely no taste, and what that means is, I don't mean that in a small way I mean that in a big way. I have a problem with the fact that they just make really third rate products."
Steve Jobs, Triumph of the Nerds, PBS Documentary
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