Trademark Law and Your Business—Protecting Your Brand

In today’s world, business owners need to stay connected to the global economy. One way to do this involves operating a Web site to advertise your goods or services to your customers. To start the process, a business owner must register a domain name with a registrar such as GoDaddy. The selection of a domain name is tricky business, not only because of the lack of domain names available, but also because of the trademark issues involved.

That’s right: domain names can serve as trademarks and the bad faith registration or use of a domain name can be grounds for legal action. A trademark owner who believes that another registrant has registered or is using a similar domain name in bad faith has two options. The first option is to bring an action under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). When you sign up for a domain name, you agree to arbitrate any disputes regarding your domain name under the terms of the UDRP. The end result of a UDRP action may be the transfer of the domain name to the trademark owner. The second option for an aggrieved trademark owner is to bring an action in federal court under the Anti-cybersquatting Consumer Protection Act (ACPA). Under the ACPA, the trademark owner files suit in federal court and may seek transfer of the domain name at issue and damages up to $100,000.00 per domain name.

Marc Randazza analyzes several common defenses under the ACPA in this post. He also discusses the advantages to the UDRP process versus defending an ACPA claim, at least for those accused of bad faith registration or use of a domain name. Under the UDRP, the only relief available is the transfer of the domain name. Moreover, the process is conducted through an arbitrator or arbitration panel by way of pleadings only. There is no discovery or oral arguments. Conversely, in defending an ACPA action, not only are the options for relief greater (transfer of the domain name and statutory damages), but the aggrieved trademark owner gets to choose his venue. As such, you, the new business owner using your new domain name, may get haled into a far-off federal court. Defending such an action can be very expensive. In addition, an action in federal court would almost certainly require discovery, which only makes the process more expensive.

There are several other issues relating to domain names and trademark law, but they are beyond the scope of this post. Business owners need to be aware of the possibility of infringing someone else’s trademark with their domain name could subject them to legal action and choose their domain name carefully. With careful planning, however, you can avoid these situations.

Many business owners want to use as a trademark or service mark a phrase that incorporates their geographic location. For example, a house cleaning service in Charlotte might want to apply for the service mark “CHARLOTTE MAIDS”. Like immoral, deceptive, or scandalous marks, geographically descriptive marks may not be registered on the Principal Register at the Patent and Trademark Office.

Section 1052 of the Lanham Act forbids registration of not only geographically descriptive marks, but also marks that are primarily geographically deceptively misdescriptive. An example might be, using our scenario above, if our Charlotte-based house cleaning service attempted to register the service mark “NEW YORK MAIDS”. The Lanham Act does provide an exception for marks that act as an indicator of regional origin, which I’ll discuss in a future post.

Business owners should take this into account when thinking of a service mark for a new service or product.

In my post on the trademark application process, I wrote about the examination and opposition of your application. These are two distinct processes, but many parts overlap. One area where the examination process and the opposition process overlaps concerns grounds for refusing registration of your proposed mark.

Section 1052 of the Lanham Act states that an application shall not be refused registration unless it fails to meet one or more standards. The first item listed prohibits the registration of an application that is “immoral, deceptive, or scandalous”. What determines whether a mark is immoral, deceptive, or scandalous? Various tests have been crafted by the Trademark Trial and Appeal Board and the courts, but as a business owner, you should be aware that an examiner or an opposer may try to refuse your application to register your mark on this basis.

Recent examples of marks that have been challenged on the basis that the mark was immoral, deceptive, or scandalous include DYKES ON BIKES and COCAINE (for soft drinks).