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Trademark law related to Internet domains

The federal government defines a trademark as a symbol used by a company or entity that helps define the company's products or brand. A trademark may be a symbol, a word, or a phrase as defined by USC section 1127.

Understanding a Trademarked Name

A recent and notable issue of trademark infringement was recently seen in St. Louis after a brewery decided to label one of its beers as a "Frappicino," which coffee titan Starbucks declared was copyright infringement because of the word's close spelling to its own trademarked drink, the "Frappuccino."

The brewery argued that no one who ordered a beer called Frappicino would confuse it with a coffee drink from Starbucks; however, the small Missouri brewery agreed to stop using the similar word to sell its beer.

Starbucks and the brewery could have eventually arrived in a courtroom or arbitration if the dispute hadn't ended quickly and with an immediate cessation of the brewery's use of the word.

On the other hand it is common for the same trademarked name to be used by unrelated products. For example EarthWell garcinia is a dietary supplement by EarthWell™. On the other hand EarthWell is also a trademark for a company doing ' Installation of energy efficient electric lighting systems'. The two companies do not compete in the same markets and hence can both use the same trademark name. Indeed every trademark must specify for which types of goods and services it applies.

A Copyright is Different from a Trademark

Regarding internet domains and the protection of a trademarked name, symbol, or word, the United States government does not offer copyright protection for internet domain names. Domain names are registered and handled through the Internet Corporation for Assigned Names and Numbers (ICANN).

However, the lack of copyright protection for a domain name doesn't mean that the domain can't be part of a company's trademark. For example, if Starbucks decided to register "frappucino.com," the company could invoke the right to protect its trademark under certain circumstances.

When Legal Action is Appropriate

To make a case for a trademarked name, Starbucks, or any entity with a cause to bring a claim to the courts, would need to prove the following:

  1. A domain name was registered by someone that didn't own the trademark to the name
  2. The person who registered the name wanted to use the name for its existing fame
  3. The person wasn't given legal rights to use the trademarked word or phrase

Certain uses of trademarked names are allowed under federal law, so occasionally a person or entity might be allowed to use a domain name that's trademarked by another company or person. For example, a website that offers criticism or commentary may legally use a trademark.

Additionally, writing of a critical nature may use trademarked words under the fair use defense. For example, a blogger could write a review of a Frappuccino without fear that Starbucks could stop that blogger from using the word in the review.

Legal Options for Domains and Trademarks

ICANN recommends that any individual or company who believes that trademark infringement has occurred should speak with an attorney who deals with intellectual property law. It's a good idea to investigate available options under the Uniform Domain-Name Dispute Resolution Policy (UDRP), which states that most disputes may be resolved by one of the following:

  • Agreement
  • Arbitration
  • Court action

Complaints regarding abusive registration or "cybersquatting," may be filed as a court action in an appropriate jurisdiction, but every filing won't lead to trial. If the parties are able to come to an agreement without court involvement before the conclusion of pre-trial discovery, the case may be dropped. Additionally, some cases might head to an arbitration panel, which some legal experts suggest is an expedited option that cuts out a lot of the time required to come to a final decision.

Dispute Resolution Process and the Arbitration Panel

Arbitration panels may be affiliated with a variety of official arbitration groups, and the dispute process will tend to look like the following:

  • Complaint filed with arbitration group
  • Preliminary review and approval of the complaint
  • Commencement of case
  • Answer filed from respondent
  • Additional responses from all parties (optional)
  • Arbitration panel assigned
  • Arbitration panel review
  • Decision published and parties notified

Although there are different policies utilized by various arbitration groups to guide the process, the most commonly used resource is the UDRP; however, not every panel uses the same guidelines. Additionally, registrars of domain names will often have a domain dispute policy and standard steps that should be taken to resolve trademark issues.

Cost, Appeals, and Legal Results

As with any legally binding agreement or action, the arbitration process carries some cost, depending on how many domain names are submitted to the panel, as well as how many arbiters are assigned to the case. For example, fees may range from $1,500 to $4,000 for the arbitration process, depending on how many people are involved with the complaint. These fees are additional to any charged by a lawyer on the case.

Regarding an appeal, the time frame for filing is quite short, and legal experts suggest that the presence of a lawyer is important in such cases so as to ensure that an appeal may be filed on time. On-time paperwork often plays a huge role in legal decisions.

Trademarks May Be Large or Small

A trademarked name doesn't need to have the worldwide recognition of a major brand, like Nike or McDonald's, so small companies and individuals do have options. Arbitration is not for everyone; however, it is an option to consider.

Consulting with legal counsel on the best course of action is recommended for anyone who has reason to believe trademark infringement has occurred. Additionally, anyone accused of trademark infringement with a domain name should speak with an internet lawyer so as not to miss any important filing or response dates for court or arbitration.


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