Trademark Laws 101 – Part 1
A basic understanding of trademark law and a little research will help businesses, non-profits, and start-ups avoid the costly mistake of “infringing” on someone else’s trademark or service mark. The primary cause of infringement occurs when a “reasonably prudent” consumer would likely be confused by the similar trademarks or service marks of competing businesses or organizations.
There are approximately four different ways that trademarks can be protected:
- Nationally register them through the United States Patent and Trademark Office.
- Register them on a state by state basis.
- Use them within a specific geographic area and achieve protection under the common law of particular states.
- Trademarks can be registered internationally, too, but a national registration is a prerequisite to an international registration.
How Trademarks Can Override Domain Names; But Not Always
The internet is no exception to trademark law – domain names are an important part of branding for almost every organization. The domain name is used by consumers searching to locate an organization online, either by directly typing in the URL, such as www.eyestonelawoffices.com or by performing a search through a search engine, such as Google or Yahoo.
Use of a domain name that contains your trademark or service mark begins creating some common law rights in that name. The common law rights only extend where your products or services are purchased by consumers and only if someone else did not acquire those rights before you. Proving common law trademark rights is more difficult in a domain name dispute than the rights of a registered mark.
Registering a trademark with the United States Patent and Trademark Office creates a number of presumptions that weigh heavily in favor of a trademark owner versus a domain name registrant. Many times the costs and risks to the domain name registrant are much greater than to the federally registered trademark owner. A federally registered trademark owner who prevails in a case might be entitled to statutory damages and attorney fees in Federal Court, but a domain name registrant who prevails would just get to keep the domain name.
Trademark owners (registered and unregistered) can also secure a domain name being used by a competing organization by using a streamlined arbitration process offered by ICANN (Internet Corporation for Assignment of Names and Numbers). ICANN will decide an arbitration action against the domain name itself through a process that is relatively speedy and inexpensive compared to a law suit in Federal Court. The procedure seems to favor trademark owners, but the Federal Court action would be needed to receive statutory damages and attorney fees.
Speculation of Rights vs. Knowledge of Trademark Registration
While the most egregious form of trademark infringement is producing counterfeit goods and is easy to spot, there are many much less sinister ways of stumbling into a trademark infringement situation, which can be nearly as costly to a business owner. Even with the information provided in this post, it is best to consult with a qualified business attorney who can help ensure the protection of your trademark and maintain the consistency of your organization’s image – online as well as offline.