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Trademarks in cyberspace
Copyright Notice: Certain portions of this article contains information
obtained from materials available on the United
States Patent and Trademark Office web site.
What are trademarks and service marks?
A trademark includes any word, name, symbol,
or device, or any combination, used, or intended to be used, in
commerce to identify and distinguish the goods of one manufacturer
or seller from goods manufactured or sold by others, and to indicate
the source of the goods. In short, a trademark is a brand name.
A service mark is any word, name, symbol, device,
or any combination, used, or intended to be used, in commerce,
to identify and distinguish the services of one provider from
services provided by others, and to indicate the source of the
Why are trademarks and service marks important?
Federal registration is not required to establish rights in a
mark (see below), nor is it required to begin use of a mark. However,
federal registration can secure benefits beyond the rights acquired
by merely using a mark. For example, the owner of a federal registration
is presumed to be the owner of the mark for the goods and services
specified in the registration, and to be entitled to use the mark
Since the PTO's authority is limited to determining the right
to register, only a court may render a decision about the right
to use, such as issuing an injunction or awarding damages for
infringement. It should be noted that a federal registration can
provide significant advantages to a party involved in a court
How are trademark rights obtained?
Trademark rights arise from either actual use of the mark, or
the filing of a proper application to register a mark in the Patent
and Trademark Office (PTO) stating that the applicant has a bona
fide intention to use the mark in commerce regulated by the U.S.
There are two related but distinct types of rights in a mark:
the right to register and the right to use. Generally, the first
party who either uses a mark in commerce or files an application
in the PTO has the ultimate right to register that mark. The PTO
cannot provide advice concerning rights in a mark. Only a private
attorney can provide such advice.
How does one secure and protect a trademark?
Anyone who claims rights in a mark may use the TM (trademark)
or SM (service mark) designation with the mark to alert the public
to the claim. It is not necessary to have a registration, or even
a pending application, to use these designations. The claim may
or may not be valid. The registration symbol, (r), may only be
used when the mark is registered in the PTO. It is improper to
use this symbol at any point before the registration issues
What is the relationship between domain
names and trademarks?
The Internet has rapidly moved from a loosely organized decentralized
public network for research, educational and governmental collaboration
to a globally networked economy for the efficient exchange of
communications and currency. This global free enterprise system
functions in a very tangible way, though it occupies the digital
The Internet allows users to access millions of web sites and
web pages. Web pages are computer files that can consist of words,
pictures, sounds and links. Id. Every web page has its own web
site that is similar to a street address or telephone number in
that it is the address for that web page on the Internet. This
Internet address is commonly referred to as the "domain name."
Domain names are the familiar and easy-to-remember
names that end in "dot com" or "dot net" (e.g.,
"www.yourbusinessname.com"). They correspond to unique
Internet Protocol (IP) numbers (e.g., 243.11.241.78) that serve
as addresses on the Internet and allow computers to find one another.
The Domain Name System (DNS) translates Internet names into the
IP numbers needed for transmission of information across the network.
Domain names always consist of a second level domain (a term or
series of terms, e.g. "ecommerceattorney") followed
by a top level domain ("TLD"), such as ".net"
for networks, ".org" for not-for-profit groups and ".com"
for commercial entities. The TLD ".com" also functions
as the default "catchall" for most Internet users. To
obtain a domain name, a registrant files an application with Network
Solutions, Inc. ("NSI") or a similarly ICANN-authorized
domain name registrar. NSI makes no independent determination
of a registrant's right to use a particular domain name.
Web users most easily locate a web site through the web site's
domain name. Web users assume that, as a general rule, the domain
name of a particular company will be the company name followed
by ".com." Sometimes, a trademark is even better known
than the company name, in which case a web user will assume that
the web address is "trademark.com." When a web surfer
does not know a specific domain name he has two (2) options: try
to guess the correct domain name or use an Internet "search
engine." Search engines are searchable databases of web pages
and web content. When a user enters a key word or phrase, the
search engine return links of web sites that contain key words
in the body and meta information sections of the web page. Key
words are often found in a web site's meta tags, and are invisible
to the casual web page viewer.
The incidence of conflicts between owners of trademarks and businesses
on the Internet who may, intentionally or otherwise, use a similar
name in their Internet addresses appears to be on the rise. Registered
trademark owners that wish to protect their business goodwill
on the Internet may seek protection of federal trademark laws
under (a) Section 32 of the Lanham Act 15 U.S.C. § 1114 for
trademark infringement; (b) Section 43(a) of the Lanham Act 15
U.S.C. § 1125(a) for dilution or unfair competition; or (c)
under state unfair competition laws.
When a trademark, service mark, collective mark or certification
mark is composed, in whole or in part, of a domain name, neither
the beginning of the URL (http://www.) nor the TLD have any source
indicating significance. Instead, those designations are merely
devices that every Internet site provider must use as part of
its address. Today, advertisements for all types of products and
services routinely include a URL for the web site of the advertiser.
Just as the average person with no special knowledge recognizes
"800" or "1-800" followed by seven digits
or letters as one of the prefixes used for every toll-free phone
number, the average person familiar with the Internet recognizes
the format for a domain name and understands that "http,"
"www," and a TLD are a part of every URL.
Applications for registration of marks consisting of domain names
are subject to the same requirements as all other applications
for federal trademark registration. A mark composed of a domain
name is registerable as a trademark or service mark only if it
functions as a source identifier. The mark as depicted on the
specimens must be presented in a manner that will be perceived
by potential purchasers as indicating source and not as merely
an informational indication of the domain name address used to
access a web site.
In In Re Eilberg, the Trademark Trial and Appeal Board held that
a term that only serves to identify the applicant's domain name
or the location on the Internet where the applicant's web site
appears, and does not separately identify applicant's services,
does not function as a service mark.
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