Articles

DOMAIN NAMES AND TRADEMARK LAW

In theory, choosing a domain name is simple. If it is memorable, pronounceable, short, clever, easily spelled and suggests the nature of the commerce on your website, you've got yourself a winner. But even if your choice is brilliant from a marketing standpoint, it may be worse than foolish from a legal perspective. Your name is at risk if it legally conflicts with any one of the millions of commercial names that already exist. It's a big risk. If you put money and sweat into your website under one domain name and then are forced to give the name up, your Web-based business is likely to suffer a damaging, if not fatal, blow.

The rules for understanding whether a legal conflict exists comes from trademark law. Here are the basics you need to understand:

• Names that identify products or services in the marketplace are trademarks.
• Distinctive (clever, memorable) trademarks are protected under federal and state law.
• Distinctive business and domain names usually qualify as trademarks.
  The first commercial user of a trademark owns it in case of a legal conflict with a later user.
• One trademark legally conflicts with another when the use of both is likely to confuse customers about the products or services, or their origin.
• If a legal conflict -- called an infringement -- is found to exist, the later user will have to stop using the mark and may even be held liable to the trademark owner for damages.

Applying these principles to your domain name selection, you are at risk of losing your chosen domain name if the owner of an existing trademark convinces a judge or arbitrator that your use of the domain name creates a likelihood of customer confusion. Confusion in this context can mean two different things.

Most commonly, it means that the goods or services a customer buys are different than what the customer intended to buy. For instance, suppose, on the recommendation of a friend, you decide to purchase Lee's famous Flamebrain barbecue sauce, which is sold only on the Web. You intend to type "flamebrain.com" into your browser but accidentally enter "flamerbrain.com" instead. You get a website run by Henry, who has both copied Lee's idea to offer a barbecue sauce for sale on the Web and, with a very minor variation, the name of Lee's sauce. You order two bottles, completely unaware that you ordered the wrong product from the wrong website.

The other kind of confusion occurs when a misleading name causes customers to believe -- wrongly -- that a product or service is sponsored by, approved of or somehow connected with a business they already know about. In other words, the customers are confused about the source of the product or service. This would be the case, for example, if you took your TV to a repair shop called IBM Electronics because you thought that IBM somehow sponsored the business.

The potential for confusion is a problem only when the names at issue are distinctive -- that is, clever, and therefore memorable. A name may be distinctive because it is made up (chumbo.com for an online software store), arbitrary in the context of its use (apple.com for computer products), fanciful (ragingbull.com for investment advice) or suggestive -- but not literally descriptive -- of the underlying product or service (salon.com for an online magazine). A name such as Ben and Jerry's, which by itself is weak because it uses personal names, may also become distinctive after it has been used for a long time and is recognized by the public. If the trademark owner has registered a name with the U.S. Patent and Trademark Office, it is probably distinctive.

Names that aren't distinctive don't qualify for trademark protection. Many domain names -- for instance, coffee.com, drugs.com and business.com -- are potentially powerful but generic. That is, they are the names of whole categories of products or services. Domain names that use surnames, geographic names or common words that literally describe some aspect of the goods or services sold on the website, such as healthanswers.com for, you guessed it, online health information, are also ineligible for trademark protection.

Avoiding Trouble

The way to choose a domain name that satisfies your own marketing needs and doesn't get in the way of anybody else's trademark rights is to search as many existing trademarks as possible, spot possible conflicts and then pick a name that's unlikely to generate a nasty lawyer's letter.

The first place to go for possible conflicts is the trademark database of the U.S. Patent and Trademark Office at http://www.uspto.gov. Searching this database gives you all registered trademarks and all trademarks for which registration is pending. You should search not only for your proposed mark but also for other marks that are logically close, such as synonyms and variant spellings. In addition, you should also search the Internet and any business name registers, such as Thomas Register Online at http://www.thomasregister.com.

If your search turns up any names that are the same or similar to your proposed domain name, ask these questions:

• Does your website offer goods or services that compete with the goods or services being sold under the other name?
• Does your website offer goods or services that typically are distributed in the same channels as the goods or services being sold under the other name? This would be the case, for instance, if you plan to offer sports equipment on your website, and the owner of the possibly conflicting mark sells sports clothing.
• Might your website in some way divert business away from the mark's owner because of the name? For instance, could the other owner show that your domain name is so similar to the other name that users might end up on your website by mistake?
• Is the other name very well known?

If the answers to all these questions are no, you can feel reasonably free to go ahead and use your name without fear of creating a legal conflict. If you answer yes to any of them, there will be some risk of a legal challenge down the road. If you aren't sure, take an informal poll of friends. Would they be confused by the simultaneous use of the two names? Might they end up on the wrong website? Another option is to run the possible conflicts by a trademark attorney. You will benefit from having a trained eye go over your circumstances.

Sex and the Copyright Life
By
Lawrence G. Townsend

This is a story about sex and Congress-but no, it's not the seamy kind. In fact, my story takes its footing in our Constitution, the ideal of American ingenuity, and a future of uninhibited innovation. Sadly, however, the story begins in the cloistered world of current legislative policy.

In early 2003 the U.S. Supreme Court decided Eldred v. Ashcroft, the case that challenged Congressional authority to stretch the life of copyrights under The Sonny Bono Copyright Term Extension Act. I believe the Court correctly decided the case, given the protean language in the Constitution's copyright clause, but the real question is: Why did Congress extend the copyright term in the first place? Remarkably, the challenged twenty-year extension was added on top of 10 others given by Congress in only the last 40 years. Copyright now boasts a cryogenic-like life extending from publication to 70 years beyond the author's death. So, for example, the copyright in music, software, or text created by a twenty year old who lives to the ripe age of 100 will endure for 150 years (80 plus 70). Reality check, please: in 1790 the term was a flat 14 years (plus one possible renewal term of 14 years). Back then the same twenty year old's copyright would have fallen into the public domain by age 34-or 48 at the latest.

So, you ask, where does Congress get off?

The Constitution says that “Congress shall have the power... To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive rights to their respective writings and discoveries.” Creation-with investments of time, money and intellect-is therefore promoted by granting creators legal monopolies for limited times. A fair trade-off envisioned by our founding fathers. But 150 years? What exactly does Congress think it's promoting?

Ground-breaking innovation (the steam engine, the telephone, the World Wide Web) is potent; it attracts and combines with other ideas which, in turn, spawn more innovation (railways, fiber optics, e-commerce). Where the most fecund ideas are sooner made available in the wide genetic pool of public domain, they will, by their nature, combine with equally fertile ideas and produce the fittest innovations for the betterment of our economy and society. (The suggested connection between ideas and Homo sapiens is not intended to be subtle here. As Emerson said: “Ideas must work through the brains and arms of men [and women], or they are no better than dreams.”)

On the other hand, where intellectual property is withheld from the public domain beyond a reasonable term necessary for rewarding creators, the public is cheated by a lack of innovation. The genetic pool is diminished. Inbreeding is rampant; limited or no variations occur. Complementary ideas come only from owners or licensed kinfolk; others are excluded or prohibited by law. Pity because variety is the spice of innovation; without it, acts of creation become dull and predictable, lacking the very spark of life.

Congress appears to be promoting a kind of endogamy, i.e., by law intermarrying is restricted to a confined group. And nowhere is intellectual endogamy more prevalent than in the halls of Congress. The Senate voted unanimously in favor of the newest extension, virtually without discussion.

In passing the latest extension, Congress bought into the rationale offered by industry proponents that creators-many of whom are already dead-would not create unless they were “incentivized” by the grant of a longer copyright term. Go figure. It should be noted, incidentally, that I am not making this case as a lawyer on behalf of unnamed clients eager for the chance to leech the property of others. As a published novelist, I can say with complete sincerity that my motivation in writing has never been in any manner connected to a rapturous vision of letter carriers delivering residual royalty checks to mailboxes of unknown heirs 70 years after my death. But to those who say the latter is their motivation, I offer this free advice. Your ideas need to get out more, meet someone new. Mix. Maybe even get lucky. Better yet, get a life.

Disclaimer

This publication and the information included in it are not intended to serve as a substitute for consultation with an attorney. Specific legal issues, concerns and conditions always require the advice of appropriate legal professionals.