Trademarks on the Internet

The rapid growth in worldwide Internet usage has resulted in a virtual explosion of internet trademark infringement allegations and lawsuits involving the use of trademarks, service marks and domain names.

Trademark law governs the use of trademarks and service marks. A trademark is a word, phrase, symbol, design or combination of these that is used by the manufacturer or merchant of a good to distinguish it from those sold by others. A service mark is the same as a trademark according to internet trademark law, only it is used to identify and distinguish the provider of a service instead of a good. In the case of goods, the trademark must be affixed to the goods, to their packaging or to sales displays. In the case of services, the service mark is used to identify the source of the services, usually in advertising. Although U.S. common law grants certain rights to the creators of trademarks and service marks, registering them with the U.S. Patent Office provides several advantages by establishing

• constructive notice to the public of the registrant's claim of ownership of the mark;
• a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• the ability to bring an action concerning the mark in federal court;
• the use of the U.S. registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Once there is a register trademark online or service mark has been registered with the U.S. government, it should be marked with an � symbol. Trademarks that have not been registered should be marked with a �, while unregistered service marks should be labeled with an ^SM mark.

Trademark Infringement

Trademark infringement occurs when the use of a trademark or service mark by a person other than the original creator results in confusion about the source of the good or service concerned. Multiple parties can use the same or similar marks only when the goods or services they provide are sufficiently different to avoid confusion among consumers. When a mark is protected only by common technology laws, the same or a similar mark can be used by other providers who serve geographic areas not covered by the mark's original creator.

One of the reasons for the sharp increase in claims concerning trademark violations is the ease of monitoring activity on the Web. In the past, owners of trademarks usually were not aware whether others were using their marks. However, it is now easy to conduct a complete Internet search for uses of trademarks and service marks. Therefore, owners are discovering more instances involving infringement. Also, because web trademark owners are responsible for policing the use of their marks under U.S. law, the ease of conducting Internet searches has placed an additional burden on them. If an infringer is known, or should be known through due diligence, and is allowed to go unchallenged, the original owner can lose his or her trademark rights.

Owning Domain Names

As part of the gold rush toward the increased use of Internet marketing, many individuals and companies have rushed to stake their claims to domain names. A domain name is part of the uniform resource locator (URL), or the address of an Internet site. A domain name usually is comprised of a second-level domain, a "dot," and a top-level domain TLD. The wording to the left of the "dot" is the second-level domain, and the wording to the right of the "dot" is the TLD.

Because the Internet is universal, companies that had shared similar names but worked in different fields in the past have suddenly had to compete for exclusive rights to particular domain names on the Web. In addition, individuals and companies launching Web sites for the first time have insisted that they have a right to register domain names containing generic or descriptive terms, even if another company has already developed brand recognition using those terms in different industries.

Because domain names do not give any direct indication of the products or services offered on a Website, it has been difficult to apply traditional trademark law in domain name disputes. Trademarks are usually evaluated in the context of the goods or services to which they apply, and rulings are based on the extent to which use of the marks could result in confusion. If the goods or services are distinguishable (e.g., one company uses a trademark on televisions, while another uses it on apparel), identical trademarks generally are permitted. Since their use is not likely to result in confusion, sharing is generally deemed to be fair for both consumers and trademark owners.

Trademarks in Domain Names

However, on the Internet consumers cannot see what goods or services are being offered until they view the Webpage associated with a domain name. To address this new reality, some courts have relied upon a concept called "initial interest confusion." This concept recognizes that consumers frequently rely on trademarks to find Websites. For example, consumers often type trademarks into Internet search engines or use trademarks to guess the Website address of a particular company. Therefore, an opportunistic company can attract consumers to its site simply by using a well-known trademark in its domain name. In this way, the company benefits from consumers' "initial interest" in locating the trademark owner's Website. Taking advantage of another's trademark in this way has been deemed to be a trademark infringement even in cases where consumers, upon reaching the infringer's Website, can immediately see that it does not pertains to the goods or services offered by the original trademark owner.

To establish rights to a domain name, individuals and companies must register the name with the InterNIC.

If you are having issues with technology laws, or tradmarks online, consult with a technology lawyer near you to discuss your case.