US Trademark Law - Avoid Troubles
Thomason, NetMechanic, Inc.
Monday, March 08, 2004; 5:00pm EST
You're sure that you've covered every possible angle related to your
online business. You carefully selected a good domain name, researched
keyword phrases, and now you're kicking off an extensive pay per click
(PPC) advertising campaign to quickly get the new site off the ground.
But be wary: trademark troubles may be lurking just around the corner.
Copyright Versus Trademark
Although many people tend to regard the terms copyright and trademark
as synonyms, they aren't - although they are related. Both copyright
and trademark law exists to protect artists, writers, and businesses
from unauthorized use of their property.
A copyright protects original expression in written and artistic
works. Copyright law protects plays, films, books, software, and Web
site copy. Our November 2002 Webmaster Tip discusses copyright law in
more detail and explains how it relates to your Web site.
A trademark protects names, company and product logos, slogans, color
combinations, and product design and packaging. A trademark is used to
identify the source of goods and services. An individual or company
must use the trademark in commerce.
Note the difference: the copyright belongs to the person who
created the work, while the trademark belongs to the person (or
business) who creates and markets a product.
As with copyright law, it's not necessary to formally register a
trademark to have the right to use it, but it's really a good idea to
do so. Under trademark law, a trademark owner can exercise his rights
in two ways: use the trademark to identify his goods or services
and/or authorize others to also use the trademark.
It's probably easier to understand in terms of brand names and
authorized dealers. The Chevrolet division of General Motors owns the
trademarked Chevrolet logo and allows its authorized Chevrolet dealers
to display that logo on their signs and promotional merchandise.
However, a used car dealer with no relationship to General Motors
wouldn't be allowed to display the Chevrolet logo without express
authorization from the company.
Trademarks seem pretty straightforward, but plenty of online
businesses are having problems.
Domain Names And Trademark Law
In the United States, a domain name is viewed as a piece of property
that can be sued. The basis for this situation is a law passed by
Congress in 1999 called the Anti-Cybersquatting Consumer Protection
Act of 1999 (ACPA).
We tend to think of cybersquatting in pretty direct terms: buying
McDonalds.tv or Microsoft.net in hopes of making a huge profit when
the companies in question buy the rights to those domain names.
However, some companies refuse to play that game and file complaints
even if the domain name owner has been using the name for his or her
own business, isn't a competitor, and has no interest in selling the
name at a profit.
Trademark holders got another boost from the Internet Commission on
Assigned Names and Numbers (ICANN) when ICANN introduced a process for
handling domain name disputes. Called the Uniform Domain Name
Resolution Process (UDRP), it was established as a way to handle
domain disputes without lawsuits.
In order to win under the UDRP, a trademark holder must prove three
The domain name is identical or could be easily confused with its
The domain holder has no legitimate interest in the domain
The domain was registered and is being used in bad faith.
During its first year, over 1000 disputes were settled through the
UDRP and the trademark holder won 76% of those cases.
That large percentage troubles many critics who charge that the
process is rigged against small businesses and individuals. They point
to several high-profile decisions like these:
The clothing company J. Crew successfully gained control of the domain
name crew.com from its owner because of the possible confusion between
the two names.
Hanna Barbara, owner of the Scooby Doo cartoon trademark shut down a
fan site - scoobydoo.co.uk - even though the site linked to the
"official" Scooby Doo site operated by Hanna Barbara
Naturally, you should always research the history a prospective domain
name before you buy. These types of laws and regulations make it
really important to research the name itself as well! Otherwise, you
could find the name yanked away by a trademark holder just as your
search engine marketing campaign finally begins to pay off.
Research And Register Your Trademark
Unfortunately, researching a trademark isn't easy because - unlike
other countries - trademarks don't have to be registered in the United
States. There are a number of separate registries in the US:
Each state maintains a registry for trademarks that will only be used
The US Patent and Trademark Office maintains a central registry for
companies who provide their goods and services nationwide. Access that
registry online at: USPTO.com
But remember, even if you don't find the trademark registered
anywhere, someone may still be using it locally. That's generally not
a problem. Two businesses can use the same trademark as long as one
isn't using it in an effort to confuse consumers.
For instance, the Alamo rental car company owns the domain name
Alamo.com. At the same time, San Antonio, TX is the site of the Alamo
US historic site and many San Antonio businesses have the word Alamo
in their names. But this is ok because someone needing to rent a car
isn't likely to call Alamo Pet Sitting by mistake.
This "mistaken identity" problem is as the heart of many trademark
disputes. For instance, in the mid 1990's, the Nissan Computer company
registered the domain name "Nissan.com." Although the Nissan Motor
company later complained, they didn't really have a case under
trademark law until the Nissan.com Web site began to carry
Once you've researched the trademark, you're ready to register it.
Although it isn't strictly necessary, registration does give you far
more rights under the law than you would have otherwise. It's
particularly important because the first person or company to register
a trademark is automatically assumed to be the owner. You'd spend a
lot of time and money proving otherwise if your competitor beat you to
In the US, file your application with the Patent and Trademark Office
and state your intention to use the trademark. In other countries, you
usually have to formally register a trademark for it to be valid.
The paperwork is simple and you get added protection for your online
About Source of Article
The author of this
article is Larisa Thomason, Senior Web Analyst with NetMechanic, Inc.
NetMechanic is an online service specializing in html code checking,
search engine optimization and web site maintenance and promotion. For
more information visit