CITIES AS COMMERCIAL ENTITIES TRADEMARKS AND DOMAIN NAMES

Transcription

1 CITIES AS COMMERCIAL ENTITIES TRADEMARKS AND DOMAIN NAMES Garner K. Weng Hanson, Bridgett, Marcus, Vlahos & Rudy, LLP San Francisco, California Web site: I. TRADEMARKS A. What s a trademark? A trademark (or service mark) is a word, name, symbol, or device, or any combination thereof used to identify and distinguish goods (or services) from the goods (or services) of others. 1 Technically, a trademark designates goods or products, and a service mark designates services; but many people commonly use trademark in relation both to goods and services. 2 While trademarks are typically words or logos, in certain cases, they can be colors, sound, and even smell, among other non-traditional devices. 3 Cities and municipalities may have trademarks and service marks for their general municipal services but also for certain special programs, projects, and even merchandising, among other things. Their marks will typically be their names, any distinctive logos (if they have them), and the particular names of special programs and projects. B. What are trademark rights? When you hear the term trademark rights, it usually refers to exclusive rights in a trademark. Trademark rights give you some rights to prevent other persons or 1 See Lanham Act 45, 15 U.S.C (2002) (construction and definitions of trademark and service mark ); J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 4:12, at 4-11 to -12 (4th Ed and Supp.) [hereinafter MCCARTHY ON TRADEMARKS ]. 2 Compare Lanham Act 2, 15 U.S.C (2002) with Lanham Act 3, 15 U.S.C (2002) ( Trademarks Registrable on the Principal Register and Service Marks Registrable.); see also Dictionary.com (visited Apr. 1, 2002) < (definitions of trademark and service mark ). 3 See, e.g., MCCARTHY ON TRADEMARKS 7:39 - :52 (color), 7:104 (sound), 7:105 (fragrance).

2 entities from trading on your name and goodwill. So if an entity adopts a mark that is similar enough to yours that it is likely to confuse the public, that entity infringes your trademark and you have a right to restrain its conduct. Trademark rights are viewed somewhat holistically, in the sense that trademark infringement is viewed with an eye toward numerous factors, including the appearance, sound, and meaning of the mark, the goods or services it designates, and the fame or strength of the mark. 4 So, for example, two marks that are identical in appearance are often not in conflict if the goods or services that they designate are very different from each other; but a very famous and very strong mark may preempt another person or entity from using the same mark even to designate very different goods or services. C. How do I get trademark rights? You establish trademark rights by adopting and using the trademark in commerce, that is, in connection with providing the goods or services. 5 This gives you common-law rights. Your common-law rights are limited in geographic scope to the areas in which you are actually using the mark and where your mark is known. 6 The date of first use of a trademark is pivotal. Generally speaking, in a conflict between marks, the first person to use the trademark in connection with a particular type of product or service has the superior right. 7 But before you start using a trademark or for that matter a bunch of different trademarks you should make sure the mark you are considering is available. This usually involves one or more trademark availability searches and analysis by a trademark attorney. Failing to determine if others have previously used or registered a mark could be an invitation to an infringement claim. Even if you have already been using a trademark, if you have never done the clearance work, it is worth considering doing it now. Conducting a trademark availability search will alert you to the potential for an infringement claim and allow you to cease using the mark, if necessary, or obtain a license to use it from a superior claimant. D. Should I register a trademark for further protection? There are several reasons to register a trademark: 4 See In re E. I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (seminal case followed by the United States Patent & Trademark Office regarding objections based on a likelihood of confusion). 5 See, e.g., MCCARTHY ON TRADEMARKS 26:1. 6 See, e.g., MCCARTHY ON TRADEMARKS 26:1-:30. 7 See, e.g., MCCARTHY ON TRADEMARKS 26:

3 1. Registration provides greater assurance that you own and may continue to use a mark. In most cases, a registration is presumptive evidence that the registrant is the exclusive owner of the mark Registration provides the equivalent of presumptive use throughout the jurisdiction of the registration. 9 This provides a cleaner and typically broader geographic scope of your rights, as compared to common-law rights, which will require you to prove that you used your mark in the geographic area to which you claim rights. 3. For a federal registration and certain state registrations (though not California), you can file an intent-to-use application that can give you first-in-time rights as of the date you file the application even if you 10 have not started using the mark. 4. A federal registration allows you to use the notice of federal registration, as well as notices such as Registered in the U.S. Patent and Trademark Office and Reg. U.S. Pat. & Tm. Off A federal registration gives you access to federal courts A federal registration allows the possibility of recovering attorneys fees and increased damages in litigation to restrain infringers but only in exceptional cases. 13 E. What is the process of federal registration? 1. Basic requirements. Generally, to seek federal registration of a trademark, you must be using the mark in commerce on or in connection with particular good or services or declare your bona fide intention to use the mark in commerce on or in connection with particular goods or services. 14 Technically, the commerce in which you use the mark must be the type of commerce that the federal government can regulate, i.e., interstate commerce. But interstate commerce is interpreted quite broadly in this context. 8 See, e.g., Lanham Act 7(b), 15 U.S.C. 1057(b) (2002). 9 See, e.g., Lanham Act 7(c), 15 U.S.C. 1057(c) (2002). 10 See, e.g., Lanham Act 1(b), 15 U.S.C. 1051(b) (2002). 11 See, e.g., Lanham Act 29, 15 U.S.C (2002). 12 See, e.g., Lanham Act 34(a), 15 U.S.C. 1116(a) (2002). 13 See, e.g., Lanham Act 35, 15 U.S.C (2002). 14 See, e.g., Lanham Act 1, 15 U.S.C (2002)

4 2. Limitations on what types of marks you can register. You will be refused registration of marks if they are 15 : a. likely to cause confusion, mistake, or to deceive vis-à-vis a previously registered mark b. merely descriptive of the goods or services c. deceptively misdescriptive of the goods or services d. primarily geographically descriptive of the goods or services (with some exceptions; see section 3 below for a further discussion of this issue) e. geographically deceptively misdescriptive of the goods or services f. primarily merely a surname g. comprises any matter that, as a whole, is functional h. immoral, deceptive or scandalous matter i. disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute j. geographical indication, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods k. the flag or coat of arms or other insignia of the United States or of any State or municipality, or of any foreign nation, or any simulation thereof adopted to serve as symbols of government authority (as distinguished from logos used merely to identify government services). 16 Thus, a city seal adopted as a symbol of the city s governmental authority cannot be registered as a trademark. l. a name, portrait, or signature identifying a particular living individual except by his written consent 2002). 15 See generally, Lanham Act 2, 15 U.S.C (2002). 16 See TRADEMARK MANUAL OF EXAMINING PROCEDURE [hereinafter TMEP ] 1204 (3d ed

5 m. the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow n. the Olympic symbol of five interlocking rings, or the words Olympic, Olympiad, Citius Altius Fortius, or any combination or simulation thereof Descriptiveness and geographic descriptiveness as problems. This limitation on federal registration is particularly likely to come up with cities and municipalities and should be taken into account in making applications for federal registration for any marks that include the name of the city or municipality. Strategies that should be considered to deal with this potential problem in the registration process include the following: a. Disclaimers. If only part of a mark is merely descriptive or primarily geographically descriptive, it is possible to disclaim that part of the mark. When you disclaim part of the mark, you are still claiming rights in the mark as a whole but are more or less making no or a much weakened claim on the disclaimed part of the mark apart from the mark. 18 So if you wanted to stop someone else from using a similar mark but the only commonality between that person s mark and your mark is the part you disclaimed from your registration, your claim under your registration would be weaker. For example, for a combination mark comprised of the City s name combined with other words or logo designs, you might disclaim the portion most likely to draw a descriptiveness objection, e.g., the name of the City. This might allow you to avoid or overcome a descriptiveness objection. But again, even if registration is then achieved, it would likely not lend that much additional power to stop other entities from using the name of the City, which has been disclaimed apart from the mark as a whole. In certain situations, however, such as if another entity were to use a combination mark that included the name of the City and the same words or logo designs as the City s combination mark or a mark that copied the parts of the City s mark that have not been disclaimed the registration would likely be quite helpful in the assertion of the City s trademark rights. 17 See Amateur Sports Act of 1978, 36 U.S.C. 380(a)(4) (2002). 18 See, e.g., Lanham Act 6, 15 U.S.C (2002); TMEP ,

6 b. Secondary meaning. The United States Patent & Trademark Office ( PTO ) may object to the registration of a mark on the grounds that it is merely descriptive or geographically descriptive. Such objections to registration can be rebutted by demonstrating that the mark has acquired distinctiveness (or secondary meaning ). This showing can be made with sufficient evidence of long and exclusive use of the mark (typically 5 years or longer) or that the public associates the mark only with the applicant for other reasons, such as extensive advertising and promotion. 19 c. Supplemental Register. The PTO maintains both a Principal Register of trademarks and a Supplemental Register of trademarks. The Principal Register is the more typical subject of discussion (and the above discussion of federal registration is written primarily in reference to the Principal Register). But there is also the Supplemental Register. You can register many marks that cannot be registered on the Principal Register including merely descriptive and geographically descriptive marks on the Supplemental Register, if they are at least capable of distinguishing your goods or services. 20 (Marks that are generic are not even capable of distinguishing goods or services and cannot be registered on the Supplemental Register either. For example, where the mark is the name of the product, it is generic; and you could not register the word mark BLUE PENS for pens that contain blue ink.) A registration on the Supplemental Register is not presumptive evidence that you are the exclusive owner of the registered mark, but does allow you to use the and other notices of federal registration. A registration on the Supplemental Register may also block other persons or entities from gaining registration of the same or confusingly similar mark either on the Principal Register or the Supplemental Register. Furthermore, you may ultimately be able to get your Supplemental Register mark onto the Principal Register, for example, after it has acquired secondary meaning. 19 See Lanham Act 2(f), 15 U.S.C. 1052(f) (2002); TMEP See Lanham Act 23(a), 15 U.S.C. 1091(a) (2002)

7 4. Application process. Obtaining a federal registration often takes many months and may in some cases take years. a. As mentioned earlier, an applicant is well advised to begin by clearing the mark by doing due diligence to identify other users or registrants of similar or identical marks to the mark you wish to register. b. Another element of initial trademark analysis is to determine what marks are important to your client and to identify the products or services with respect to which those marks are or will be used. Whether the time and expense necessary to register a mark is costjustified is another important initial consideration. The importance of the mark to your client, the volume of business associated with it, and the likelihood of meaningful competition for the mark are among the issues to be considered. c. Prepare and file the application or applications. An application must disclose precisely what form of mark the applicant wishes to register and for what goods or services the applicant seeks registration. 21 In determining the descriptions and choices regarding the form of the mark, the applicant should consider (i) its marketing needs, and (ii) strategies for distinguishing the mark from potential claims by third parties identified during the due diligence described above. If you are filing an application for a mark you are already using, 22 the application must include specimens of use showing the mark. If you are filing an intent-to-use application, you do not need specimens yet. (Note: Occasionally, there are reasons to file an intent-to-use application even though you have already started using the mark if, e.g., you are concerned the PTO may not accept the available specimen of use.) d. Respond to any objections raised. A Trademark Examining Attorney at the PTO reviews an application. An application can be approved without controversy, but often the Examining Attorney raises a question or objection. Some objections are procedural or go only to matters of form and 21 TMEP 805, 807, et seq. and 808, et seq. 22 TMEP 904, et seq

8 23 TMEP 1500, et seq. 24 TMEP TMEP 1503, et seq. 26 TMEP 1109, et seq. 27 TMEP 1108, et seq. can be resolved quickly and easily. Others are substantive and can require a full legal brief to persuade the Trademark Examining Attorney to allow the application to proceed. If the Trademark Examine Attorney is unpersuaded and you are not willing to concede the rejection of your proposed mark, his or her decision can be appealed to the Trademark Trial and Appeal Board. 23 e. Publication and Opposition. After the PTO approves the application, the mark is first published in the Official Gazette, 24 and a party taking issue with the registration of the mark has thirty days from the date of publication to oppose the registration or to request an extension of time to do so. 25 If no timely opposition is filed, or if any opposition is overcome, the application will proceed to registration. An intent to use application cannot be registered until proof is provided to the PTO that the mark has actually been used in commerce, as discussed below. f. Notice of Allowance. If an intent-to-use application is not successfully opposed after publication in the Official Gazette, the PTO issues a Notice of Allowance. The applicant must then provide the PTO with specimens of its use of the mark within six months. 26 If necessary, an applicant can request several extensions of time to do so in sixmonth increments, up to a total of 36 months from the date the Notice of Allowance is issued, 27 provided the applicant pays a fee and demonstrates good cause for the extension (e.g. that further product development is needed). 5. On-line applications for federal registration. 28 For on-line filing, see TMEP 301. The PTO maintains an on-line program called TEAS (Trademark Electronic Application System), which allows applicants to file trademark applications electronically. 28 TEAS can be accessed at

9 While on-line filing can be quick and efficient, it also involves both additional filing requirements and potential problems. First, you must later provide a signature on a separate document (instead of as part of the electronic application). Second, the specimens and drawings (if not simply block text) must be capable of being transmitted by a.gif or.jpg graphics file, so you may need software, a scanner, a digital camera, or other technology and perhaps a combination of those things to accomplish electronic registration. As to risks, some practitioners believe that electronic filing is much more susceptible to error and data entry error by the PTO. However, the PTO strongly encourages electronic filing, and can ultimately be expected to address these issues. F. What is the process for state registration? The process of registering a mark with the California Secretary of State is somewhat simpler and less expensive than a federal registration, although the underlying legal principles are quite similar; California trademark law tracks federal law in many respects. However, a trademark must be used before it can be the subject of a California trademark application. 29 G. What other things should I consider to protect trademark rights? 1. Monitor and document your own use of the marks to preserve or build strength in the marks. Misuse or inconsistent use of marks can, especially over time, weaken the strength of the marks or create complications with later filings with the PTO (discussed below). Additionally, to discourage infringement and, possibly, to improve your case if your mark is infringed, your use of the marks should always include the TM, the SM or the notices, as appropriate. 2. Maintain your registrations with appropriate filings. Even after you attain registration, you must eventually make other filings with the PTO to show you are continuing to use the mark and to renew the registration. Within the sixth year (and again within a year before the end of the ten-year registration period), you must file an affidavit showing continued use of the mark and provide a specimen of use. 30 After five years, you can also bolster the strength of your registration by making a filing to make the registration incontestable. 31 Finally, after ten years, if 29 See generally California Business and Professions Code et seq. 30 TMEP 1604, et seq. 31 TMEP 1605, et seq

10 you are still using the mark, the mark can be renewed in the six-month period before the expiration of the ten-year period. 32 If you are handling your registrations internally in your office, it is important to have a reliable calendaring system, as the deadlines for these future filings come up years down the road and can therefore be overlooked, especially if there are personnel changes over time, as is often the case. 3. Consider exploiting your marks through licensing and co-branding. Most commercial entities view trademarks as valuable assets from which to profit. Cities and municipalities, of course, have additional concerns that should be considered before determining to license or co-brand a mark. If licensing or co-branding is pursed, appropriate license agreements and quality control measures will be needed to protect the strength of the mark and the interests of the mark holder. 4. Monitor your mark against infringing uses and genericide. a. If it is necessary to respond to multiple infringements of your mark, it is appropriate to prioritize. It is not necessary to address every possible infringer at once. b. Watch services are available to alert the holder of a mark to potential infringements. However, not all such services are reputable and the rule of caveat emptor applies strongly in this context. II. DOMAIN NAMES A. What are top-level domain names? 32 TMEP 1606, et seq. 1. Domain names, of course, are the identifiers for Internet Web sites and addresses. Top-level domain names refer to the trailing extensions on a domain name that indicate which broad category of use the site is associated with. When the Internet conventions were first established, the top-level domains were:.com (commercial activity),.net (entities which maintain networks of computers),.org (non-profit organizations),.gov (government entities), and.edu (educational entities). Other top-level domain names have been recently established:.aero (aviation industry, including airports),.biz (business and commercial purposes),.coop (business cooperatives, including credit unions and rural cooperatives),.info (general information, companies and individuals),.museum (museums),.name (personal names, e.g

11 john.smith.name),.pro (professionals, such as attorneys, doctors and accountants, e.g. johnsmith.law.pro) and.us (our country code top-level domain). All of these new domains are currently available except.pro. It is expected that the.pro domain names will be available in the summer or fall of Generally speaking, the use of the top-level domain names.com,.net,.org,.us and.info is not restricted. The only restriction for.biz is that it be used for a bona fide business or commercial use. However, the other top-level domains have restricted uses (e.g.,.museum can only be registered by museums and other similar entities). B. How do domain-name registrations relate to trademarks? 1. Internet domain names can be another part of your branding strategy. 2. Your monitoring potential infringement of your trademarks should probably include efforts to identify infringing Internet domain names and Web sites. The use of a trademark as part or all of a domain name may cause confusion and may constitute trademark infringement or otherwise violate the proprietary rights of the holder of the mark. One strategy to prevent this form of infringement is to register those domain names yourself. Because there is a cost to obtain and maintain control over a domain name, however, this strategy can be expensive and will become more so as more top-level domain names are made available. Use or misuse of your trademarks on third-party Web sites can also be a problem, especially if they imply some sort of connection or official endorsement. C. What are some of the main legal avenues for policing domain-name disputes? U.S.C. 1125(d). 1. Anticybersquatting Consumer Protection Act 33 a. A plaintiff under the Act must be the owner of a mark, including a personal name which is protected as a mark. b. A defendant under the Act is someone who has a bad faith intent to profit from that mark and registers, traffics in, or uses a domain name that is confusingly similar to the mark. c. The similarity of goods and services is not at issue, as in traditional trademark infringement cases. d. The statute authorizes actual damages, injunctive relief, and statutory damages of up to $100,000 per domain name

12 e. Domain-name registrars and registries are protected from liability. f. Use by cities and municipalities. To date (at the time this paper was finalized), there is only one reported federal court decision under the Act involving a city, Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona (E.D. Va. No A, Feb. 22, 2002). In that case, the City of Barcelona, Spain, with its forty-two trademark registrations incorporating BARCELONA, prevailed over a cybersquatter and was awarded the domain name, BARCELONA.COM. 2. Internet Corporation for Assigned Names and Numbers ( ICANN ) Uniform Domain Name Dispute Resolution Policy ICANN is the organization charged with responsibility for overseeing the domain name system. In late 1999, ICANN adopted its Uniform Domain Name Dispute Resolution Policy ( UDRP ) in order to help resolve disputes between trademark owners and domain name registrants. 34 Since then, each time a person or entity registers a domain name with an accredited registrar, such person or entity agrees to be bound by the UDRP. a. Complainants to a UDRP proceeding are typically trademark owners. b. A respondent is one who registers and uses a domain name alleged to be confusingly similar to a trademark that is alleged to have done so in bad faith. c. The policy provides for a mandatory administrative proceeding, which is typically faster and cheaper than court litigation. d. Either party may seek judicial review of an UDRP decision within ten days after a decision is rendered. e. Use by cities and municipalities. To date (at the time this paper was finalized), there are a number of reported UDRP decisions involving cities. 35 By and large, cities without trademark registrations or other evidence that the name or mark in question had acquired secondary meaning have had difficulty prevailing on their claims. The same problems that can crop up in seeking registration mere and geographic 34 The UDRP can be accessed at 35 Decisions rendered to date under the UDRP can be found at

13 descriptiveness have led arbitrators to rule against cities in many of these cases. There has been some discussion about revising the UDRP to specifically permit cities and municipalities to bring claims on domain names incorporating their names (rather than forcing them to rely on trademark-rights analysis), but it seems likely the United States will oppose any revision along these lines; and at this time, there does not seem to be any serious movement on this point. SUGGESTED RESOURCES Trademarks Lanham Act, 15 U.S.C. 1051, et seq. California Business and Professions Code 14200, et seq. United States Patent and Trademark Office Web site (visited Mar. 31, 2002) < TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP), (3 rd Ed. 2002), which can be found at JEROME GILSON, ET AL., TRADEMARK PROTECTION AND PRACTICE (2001 and Supp.) J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION (4 th Ed and Supp.) Domain Names ICANN (visited Mar. 31, 2002) <