Law Offices Of William E. Maguire

World Wide Web Trademark Squeeze Play

© Copyright 1998, William E. Maguire. All Rights Reserved.
 

Hypothetical:

    Sorting through the day's mail, past Brandweek, AdrEsq.com, Trademark Lawyers Rule, The Daily Journal, counsel finds his/her client's new brochure and notices that prominently displayed on the cover is the client's, albeit new, website address or URL. Not having seen it before, the lawyer surfs over to the client's site. Once there, counsel is relieved to see a distinct commercial impression for their client's trademark, ROXY (chosen arbitrarily by this author for illustrative purposes only), on their homepage. The lawyer also notes that the URL is consistent, i.e., www.roxy.com, which is nice and may avoid the annoying and all too prevalent domain name dispute. Nevertheless, does this end counsel's inquiry from a trademark perspective? Is the registration of the domain name enough protection to help the client avoid potential future legal costs and fees? This article will suggest a winning strategy for counsel to consider in this regard.

Trademark Squeeze Play

The strategy with respect to domain names as 'designations of origin' or trademarks on the world wide web is as follows:

(1) Who's On First?: Primary Domain Name Registration(s). In the case of a business with a trademark and/or service mark, the registration of said marks, including any acronyms or abbreviations, should be obvious "primary" (e.g., second level domain names, i.e., that which appears just to the left of .com) domain name registrations. For instance, in the example above, hopefully ROXY is available as a second level domain name. If the client is a commercial enterprise, hopefully they can register their mark(s) in the ".com" top level domain (TLD). If the .com TLD is not available, it does not necessarily mean that the client has struck out. There may still be the opportunity to use hyphens, underscoring or acronyms, but doing so should not be in an attempt to divert or confuse searchers to the 'true' owner of a well known mark. In any event, InterNIC (www.internic.net) is the registration authority that has responsibility for registering second level domain names that include top level domain names such as .com, .net, .org, and .edu.

(2) Good Defense Can Beat Good Offense: Other/Defensive Domain Name Registration(s). The client also should be thinking defensively. Brainstorming as a "pirate" or domain name trafficker might think is worthwhile. In the example of ROXY, consider registering in the alternative ".org" and ".net" top level categories. In this regard, please note that InterNIC no longer ascertains the non-profit status of .org requesters. Variations or misspellings of ROXY should also be considered, together with changing the TLD. This effort might be charted as follows:

roxy.com	roxie.com
roxy.org	roxie.org
roxy.net	roxie.net
roxi.com	rockzee.com
roxi.org	rockzee.org
roxi.net	rockzee.net
roxee.com	rox-ee.com
roxee.org	rox-ee.org
roxee.net	rox-ee.net

    Country designation top level domain name registries, such as RipeNCC (Europe) and APNIC (Asia-Pacific Region), should also be considered if the client has an international presence. Domain names registered with RipeNCC and APNIC include a country code system that cover non-U.S. first level designations with a two-letter TLD indicating the country of origin. For example, .uk (United Kingdom), .ca (Canada), .fr (France), and .au (Australia). Please note that a separate registration authority, namely, IANA (The Internet Assigned Numbers Authority) is responsible for the .us (United States) TLD. This part of the strategy would be similar to the advice given to a client as to the countries in which to file trademark and/or service mark applications. For instance, if the client plans to sell product in Brazil and Argentina, then it should seek to register their mark(s) with the relevant country designation top level domain name registry for these two countries. In addition, defensive domain name registrations should be considered for commercially contiguous "pirate" countries, e.g., Venezuela, Colombia, etc.

(3) Laying Down A Good B.U.N.T. This acronym stands for "Back-Up National Trademark." This final part of the strategy suggests that it is not enough to have merely a domain name registration. In addition, the client should have backup federal trademark and/or service mark registrations. For instance, if the client sells footwear via its website, then its domain name registration would not be enough protection against third parties wishing to exploit an idential or similar "designation or origin" or trademark for similar goods or services. Additionally, the client should file a federal trademark application in International Class #25 for footwear, in addition to filing a federal service mark application in Class #35 for 'retail services featuring footwear via a global computer information network' ('global computer information network' is accepted U.S. Patent and Trademark Office parlance for the 'internet'), and Class #42 for 'providing information in a wide variety of fields by means of a global computer information network.'

Conclusion

    The suggestions offered in this article, while not intended to cover all issues attendant to 'designations of origin' or trademarks, should help counsel develop a game plan of their own to assist their clientele as they chart the web. Finally, should the client be lucky enough to have captured and registered a domain name consistent with its trademark and/or service mark, remember to have them consider (1) other primary designations such as acronyms, abbrevations or nicknames, (2) defensive designations to ward off pirates or domain name traffickers, and (3) don't forget to BUNT. If the client can accomplish all of this it will definitely be batting 1000.