Trademarks and the Internet

Trademarks and the Internet

Trademark laws allow businesses to protect their brands and reputation. They also protect consumers who have come to rely on a company's products and reputation. A trademark gives a consumer confidence in the product and lets the consumer know what he or she is buying. There are several trademark issues that can affect Internet businesses. An attorney at Erik S. Syverson in Los Angeles, California can assist your business with Internet-related trademark issues.

Overview of Trademark Law

A trademark is any word, name, symbol or device, or any combination thereof used by a person or intended to be used in commerce to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. 15 U.S.C. §1127. Company names, brand names, color combinations, product styles and distinctive packaging can all receive trademark protection. The United States Patent and Trademark Office ("USPTO") is tasked with reviewing and registering trademarks. Trademarks are protected under both state and federal laws. The federal trademark statute is the Lanham Act (15 U.S.C. §§1051 et seq.).

Whether a mark is entitled to protection depends on how strong it is. Fanciful or arbitrary marks are strong and better distinguish the owner's goods or services. Weak marks are generally generic terms, which are not entitled to protection. The following categories of marks are listed from strongest to weakest:

• Arbitrary marks are normal words used in an uncommon way, and the normal definition does not suggest that it would be used to describe the given product or service
• Fanciful marks are created for the sole purpose of functioning as a mark and have no other meaning other than to identify a product or service
• Suggestive marks suggest qualities that are desirable for a product, but do not literally describe attributes of the goods or services with which they are associated
• Descriptive marks describe, rather than suggest, the qualities of the product or service in connection with which they are used, and they may be entitled to protection if they have obtained a secondary meaning

Trademark owners have the right to prevent others from using the same, or a confusingly similar mark. They have an exclusive right to use the mark on the product it was intended to identify. However, the mark owner cannot prevent others from making or selling the same goods under a non-confusing mark.

Trademark Infringement

If one party uses the mark of another in a way that creates a likelihood of confusion, mistake or deception with the consuming public, it is known as trademark infringement. The Lanham Act protects against infringement for both registered and unregistered trademarks. In a trademark infringement action, the court will generally look at a number of factors, including the type of mark, the similarity of the marks and the services/goods involved, the prospective purchasers and whether any confusion has actually occurred to determine if there was an infringement. There does not need to be actual confusion or deception for there to be an infringement, a likelihood of confusion or deception is sufficient.

Trademark dilution is the lessening of the value of a trademark when it is used to identify different products. The Federal Trademark Dilution Act (15 U.S.C. §1125(c)) protects the owner’s interest in a famous mark when there is no trademark infringement or likelihood of confusion, but another party is using the mark in a way that tarnishes or disparages it or makes it harder for the famous mark to identify and distinguish goods or services.

Cybersquatting

Cybersquatting is the registration of a well-known trademark as a domain name with the intention to sell the domain name back to the rightful trademark owner. Cybersquatting is prohibited under the federal Anti-Cybersquatting Consumer Act. The Act provides that when a person registers, traffics or uses a domain name that is identical or confusingly similar to a trademark belonging to someone else with a bad-faith intent to profit from the goodwill of that trademark, he or she may be liable to the trademark owner. The Act also provides for civil liability if the use of another's trademark in bad faith and with the intent to profit dilutes that trademark. Typosquatting is the intentional registering of common misspellings of trademarks.

Conclusion

If you own an Internet business, it is important to be aware of trademark laws that may affect your business. A lawyer at Erik S. Syverson in Los Angeles, California can advise you on Internet-related trademark issues.

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