Bitlaw

Trademarks on the Internet

Executive summary:

Trademarks on the Internet: The expansion of the World Wide Web has led also to an expansion in trademark infringement claims and lawsuits involving the Internet (see the BitLaw page on trademark infringement for a general discussion of trademark infringement). The Internet has in fact become the latest hotbed of activity for trademark attorneys. The discussion of Internet trademark issues on this page is divided into the following topics:

Discovery on the Internet:

Perhaps the most significant reason for the number of trademark allegations involving the Internet is that activity on the Internet and the World Wide Web is so easy to monitor. Previously, a trademark owner in Minnesota would probably be unaware of what an individual or small company may be doing in California. With the Internet, that same trademark owner can do a complete Internet search for users of its marks in a matter of seconds. As a result, trademark owners are discovering more infringers of trademarks, including both intentional and unintentional infringers.

This ease of discovery, however, is a two-edged sword for trademark owners. Because one of the obligations of a trademark owner is to police use of its mark, the ease of Internet searching may be placing the requirement on trademark owners to police the Internet routinely. If an infringer of a mark is known to the trademark owner (or should have been known through routine diligence) and is allowed to go unchallenged, the trademark owner could lose its trademark.

Inappropriate allegations of trademark infringement:

In addition to the increased discovery of actual trademark infringers, the expansion of the Internet is also leading to an expansion of inappropriate trademark infringement allegations. Typically, a company will assert trademark infringement every time it views one of its trademarks on a web page of a third party. However, the determination of whether trademark infringement has occurred involves an analysis of the factors described in BitLaw's page on Trademark Infringement. For instance, a person who develops a web site that discusses her experience with Microsoft software may use Microsoft's trademarks to refer to specific products without fear of infringement. However, she probably would not be able to use the trademarks in such a way as to cause viewers of her web page to believe that she is affiliated with Microsoft or that Microsoft is in some way sponsoring her web page. The distinction could only be analyzed upon seeing how the marks are actually used on the page.

As an example, the home page of the BitLaw web site used to contain an Apple logo, along with the phrase "This web site was constructed using Apple technology." Some might argue that the use of the Apple logo on the BitLaw home page constitutes trademark infringement. This particular use was not infringement, however, since Apple had specifically authorized this type of use pursuant to a trademark license with web site developers. In contrast, the trademarks and logos shown on the page containing BitLaw's discussion of trademark devices were not authorized in any way by the trademark owners. However, it is unlikely that the trademark owners could successfully institute a trademark suit for this page, since the context of the page makes it clear that the marks are being used as examples of trademarks. It would be difficult to show the likelihood-of-confusion necessary for trademark infringement to occur as a result of this page.

Domain names disputes:

The allegations of Internet trademark infringement that have generated the largest amount of publicity involve domain names. Domain names can be considered the addresses of the Internet; e-mail is sent and web pages are found through the use of domain names. As an example, the web address for the BitLaw web site is www.bitlaw.com, while e-mail to Dan Tysver (BitLaw's author) is sent to dtysver@bitlaw.com (both using the "bitlaw.com" domain name). Domain names are more than just addresses, however, since they can be selected by the "addressee" and are usually closely associated with a particular service or product.

Because of the increasing popularity of the Internet, companies have realized that having a domain name that is the same as the company or product name can be an important part of establishing an Internet presence. To obtain a domain name, an application must be filed with an appropriate registrar. However, when companies attempt to obtain their desired domain name, they may discover that their desired domain name is already taken. When this happens, the company can either choose a different name or fight to get the domain name it really wanted.

These fights are called domain name disputes. A separate page in BitLaw has been created to discuss domain names and these types of disputes.

Trademark infringement and domain names:

In domain name disputes, the party seeking to obtain the domain name typically relies on their trademark rights. In most cases, the domain name was identical to the company's well-established trademark. However, that fact alone is insufficient to prove a charge of trademark infringement. As explained in the BitLaw discussion on trademark infringement, the similarity of the two marks in question is only one (albeit important) factor to be considered. In fact, in some of the situations above it is not clear that any trademark infringement is actually occurring. In the roadrunner.com situation, Warner Brothers has no history and no intention of offering Internet access services to the public. In addition, Warner Brothers has allowed many other companies to operate businesses under the Road Runner name. As a result, it would be difficult to prove that the operation of a web page for Internet access services under the roadrunner.com domain name would involve a likelihood of confusion with their Road Runner mark.

Dilution and domain names:

In addition to claims of trademark infringement, domain name disputes often include an allegation that use of the domain name dilutes a famous mark owned by the plaintiff. Under the dilution theory, the plaintiff would have to show the mark was "famous", and that the use of the domain name actually dilutes this famous mark (see the BitLaw discussion of dilution for more information on the requirements for dilution). Since the dilution theory does not require showing a likelihood of confusion, plaintiffs may find the theory a helpful aid in obtaining domain names "stolen by others." On the other hand, the requirement that the mark be famous should limit these types of domain name disputes to those circumstances involving marks which are immediately associated to a single source.