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in: Trademark, Legislation, Legislation-U.S.-Federal, Legislation-U.S.-Trademark

Use in commerce

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Domain names[]

Trademark infringement/Dilution actions[]

Use of another's same or similar trademark in a domain name can subject the domain name owner to liability for federal trademark infringement or dilution under the Lanham Act depending on the content of the corresponding website. There is no liability, however, unless the domain name owner has "used" another's trademark "in commerce."

Trademark infringement occurs when the defendant uses in commerce another's mark, without consent, in connection with the sale, offering for sale, distribution or advertising of any good or service, where such use of the mark is likely to cause confusion, mistake or deception.[1]

The term use in commerce refers to the bona fide use of a trademark or service mark in either interstate or foreign commerce in the ordinary course of trade. The Lanham Act (U.S. trademark law) provides that:

“ a mark shall be deemed to be in "use in commerce" —
(1) on goods when —
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”[2]
 ”

For goods, the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

Trademark dilution claims also require use of another's mark in commerce. In order to state a federal trademark dilution claim, the plaintiff must show that its mark is famous and that after it became famous, the defendant made "commercial" "use" of the mark "in commerce" which dilutes the mark's quality.[3] Some courts have interpreted the addition of the term "commercial" in the dilution statute to be "roughly analogous" or "virtually synonymous" with the "in connection with the sale of goods and services" definition for "use in commerce" under infringement.[4]

Jurisdictional predicate[]

Congress's power to enact trademark laws is derived from the Commerce Clause. Some courts construe the "use in commerce" requirement references in the Lanham Act to be coextensive with Congress' broad power under the Commerce Clause.[5] Other courts have held that this approach is erroneous because it ignores the specific definition of "use in commerce" in the Lanham Act.[6] This has resulted in some uncertainty regarding whether a domain name and its corresponding website satisfies "use in commerce" for federal trademark infringement and dilution actions.

Domain names incorporating another's trademark[]

Owners of domain names incorporating a third party's trademark can be liable for trademark infringement or dilution if the domain name meets the "use in commerce" requirement. This is because domain names are like trade names and can function as trademarks, and, therefore may infringe trademark rights.[7] In applying the "use in commerce" requirement as defined in the Lanham Act, the inquiry is whether the alleged infringer used another mark in commerce and "in connection with a sale of goods or services," or commercial use of the other's mark was made in commerce.

Domain names and corresponding websites continue to present "use in commerce" issues for federal trademark infringement and dilution actions, sometimes with inconsistent results.

Mere registration of domain name does not constitute "use in commerce"[]

It has consistently been held that mere registration of a domain name incorporating a trademark cannot constitute "use in commerce" under the Lanham Act.[8] This is because the purpose of a mark is to help consumers identify a source, and this function is non-existent until the mark has been used in public so as to create an association among consumers between the mark and its owner.[9]

What might be required more than registration, however, has not been so easy to define. "Domain names present a special problem under the Lanham Act because they are used for both a non-trademark technical purpose, to designate a set of computers on the Internet, and for trademark purposes, to identify an Internet user who offers goods or services on the Internet."[10] The focus turns on whether there is an operable website being used on the Internet, and what kind of content is on that website.

Domain name website content factors for "use in commerce" requirement[]

The "use in commerce" requirement is easily met where one's trademark is being used as the domain name for a competitor's website, assuming the competitor website sells the same or similar goods or services. Where a domain name incorporating a third party's same or similar trademark is being used in connection with a competitor's commercial website, the trademark is being used in commerce within the meaning of the Lanham Act.[11]

On the other hand, where a domain name incorporating another's trademark and the corresponding website is not used to sell or advertise any goods or services, some court have held that there is no "use in commerce" and an action under the Lanham Act should fail for that reason.[12] However, some courts have employed an "expansive" view holding that the "use in commerce" requirement is satisfied even if the corresponding website content somehow affects commerce, even if that website itself does not sell or advertise goods or services.[13]

The use of a third-party trademark in a domain name of a non-commercial commentary, criticism or parody website has been held to not constitute "use in commerce" under the Lanham Act.[14] For example, in Bosley Medical Institute v. Kremer, the Ninth Circuit held that use of another's trademark in a domain name of a consumer commentary website did not satisfy the "use in commerce" requirement.[15] Similarly, in TMI, Inc. v. Maxwell, the Fifth Circuit held that trendmakerhome.com's criticism of the owner of TREND MAKER HOMES registered mark was non-commercial use under the Lanham Act.[16] Notable to these conclusions were the facts that the websites did not offer goods/services for sale, generated no advertising or other revenues and had no direct links to commercial websites.[17] Thus, "cybergripe" and other purely non-commercial websites incorporating others' trademarks in their domain names fail to meet the "use in commerce" requirement under the Lanham Act, even if such use of the mark might deter customers from reaching the trademark owner's website.[18]

However, while trademark law distinguishes commercial and non-commercial activity, the courts have disagreed on how on-line content falls into these categories. In some instances, courts have interpreted the use of a mark "in connection with the sale of goods or services" language broadly, and have sometimes ignored the definition in Section 45 altogether, to find that domain names and corresponding websites are used in commerce even if the website does not sell goods or services.

Under the "broad" approach, if the website content somehow affects commerce (e.g., including mere "plugs" for another), or affects the commercial value of the other's mark or the owner's interstate activities, some courts have found the "use in commerce" requirement satisfied for Lanham Act purposes. Other courts have rejected this "expansive" approach.

This tension has arisen, for example, in the context of hyperlinks to non-commercial websites. Links from a non-commercial website to a commercial website have been held to satisfy the "use in commerce" requirement. Thus, where a website operator uses another's trademark in a domain name used for a parody of the mark, or to "cybergripe" about the mark's owner, this use loses its non-commercial status if the website contains hyperlinks to commercial websites.[19] Expanding on this reasoning, some courts have held that if hyperlinks or other website content somehow affects commerce, the commercial use requirement is met.[20]

For example, in Planned Parenthood Federation of America, Inc. v. Bucci, the court held that defendant's use of plaintiff's trademark in the domain name "plannedparenthood.com" and a corresponding website containing anti-abortion views, was used in commerce since (1) the site contained a "plug" about an anti-abortion book written by a third party, and (2) the website affected plaintiff's abilities to offer its interstate commerce services.[21] Other courts have followed this approach.[22]

But some courts have rejected this approach as "over-expansive" because the appropriate inquiry under the Lanham Act is whether the defendant offers competing goods/services to the public.[23] In Bosley Medical Institute, the Ninth Circuit held that a non-commercial (consumer commentary) website that contained a hyperlink to a discussion group that in turn linked to commercial advertisers was not using the mark in commerce.[24] The Court rejected the broad approach, noting it "would place most critical, otherwise protected consumer commentary under the restrictions of the Lanham Act" and found the appropriate inquiry was whether defendant offered competing services to the public. Because the defendant was a critic, not a competitor of plaintiff, defendant's activities did not meet the Lanham Act's "use in commerce" requirement.[25]

The narrower approach has also applied the reasoning that hyperlinks do not infringe unless there is source confusion.[26]

Other issues have arisen and continue to arise with respect to using third party trademarks not only in domain names but also in other website content (e.g., keyword metatags, pop-up advertising). Note also that the use of other's trademarks in individual web page URL post-domain paths does not constitute trademark use because such use does not signify its source of origin and serves a different purpose than a website's domain name.

References[]

  1. ↑ Lanham Act §32 (15 U.S.C. §1114).
  2. ↑ Id. §45 (15 U.S.C. §1127).
  3. ↑ Id. §43 (15 U.S.C. §1125).
  4. ↑ See Bosley Medical Institute v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005) (full-text); Cintas Corp. v. Unite Here, 601 F.Supp.2d 571, 580 (S.D.N.Y 2009) (full-text).
  5. ↑ See, e.g., Planned Parenthood Fed'n of America, Inc. v. Bucci, 1997 WL 133313, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. 1997); SMJ Group, Inc. v. 417 Lafayette Rest. LLC, 439 F.Supp.2d 281, 286-87 (S.D.N.Y. 2006) (full-text).
  6. ↑ See, e.g., Bosley, 403 F.3d at 677 (district court erred in focusing on "use in commece" language instead of whether the use was "in connection with a sale of goods or services."); see also Lamparello v. Falwell, 420 F.3d 309, 314 (4th Cir. 2004) (full-text) (declining to reach issue of "use in commerce" because there was no likelihood of confusion).
  7. ↑ Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 956 (C.D. Cal. 1997) (full-text).
  8. ↑ Brookfield Communic'ns, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (full-text); 555-1212.com, Inc. v. Communication House Int'l, Inc., 157 F.Supp.2d 1084 (N.D. Cal. 2001) (full-text); HQM, Ltd. v. Hatfield, 71 F.Supp.2d 500 (D. Md. 1999) (full-text); Lockheed Martin Corp., supra, 985 F. Supp. at 956; Cf. Vulcan Golf LLC v. Google, Inc., 552 F.Supp.2d 752, 254 F.R.D. 521 (N.D. Ill. 2008) (full-text) (holding that aggregation of numerous domain names incorporating another's trademark and contracting with advertising service to license and commercialize those domain names, constituted "use in commerce"); Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) (full-text) (defendant's registration of plaintiff's "Panavision" trademark as domain name for defendant's website was commercial use under dilution statute because defendant registered domain name in order to sell it to trademark owner).
  9. ↑ Brookfield Communic'ns, supra, 174 F.3d at 1051.
  10. ↑ Lockheed Martin Corp., supra, 985 F. Supp. at 956; see also Bensusan Restaurant Corp. v. King, 126 F.3d 25, 27 (2d Cir. 1997) (full-text) ("[A]ttempting to apply established trademark law in the fast-developing world of the internet is somewhat like trying to board a moving bus . . .")
  11. ↑ See "Lanham Act Trademark Infringement Actions in Internet and Website Context," 197 A.L.R. Fed. 17 §3 (originally published in 2004).
  12. ↑ Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235 (11th Cir. 2009) (full-text) (competitor did not use domain name in commerce because competitor did not sell or advertise any goods or services or otherwise use it in commerce; no sufficient evidence that competitor used domain name to redirect traffic to its own website nor that it used teh domain name to obtain strategic commercial information)
  13. ↑ Planned Parenthood, supra, 1997 WL 133313; People for the Ethical Treament of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (full-text); Jews for Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J. 1998) (full-text).
  14. ↑ "The term 'services' has been interpreted broadly," and the Act applies to "defendants furnishing a wide variety of non-commercial public and civic benefits." United We Stand America, Inc. v. United We Stand America N.Y., Inc., 128 F.3d 86, 89-90 (2d Cir. 1997) (full-text).
  15. ↑ Bosley Medical Institute, supra, 403 F.3d at 679.
  16. ↑ 368 F.3d 433 (5th Cir. 2004) (full-text).
  17. ↑ Id.
  18. ↑ Bosley Medical Institute, supra, 403 F.3d at 679; see also Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (full-text).
  19. ↑ People for the Ethical Treament of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (full-text) (parody website "People Eating Tasty Animals" at peta.org — which incorporated plaintiff's mark — satisfied use in commerce requirement of Lanham Act because website contained links to other commercial websites and prevented others from obtaining PETA's goods/services); OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176 (W.D.N.Y. 2000) (full-text) (website operator's use of newspaper's trademarked name as domain name for website used to parody and criticize newspaper was "in commerce" sufficient to satisfy infringement claim because website contained link to operator's commercial website, and use of the trademark affected newspaper's ability to offer its services in commerce).
  20. ↑ Id.
  21. ↑ 1997 WL 133313 (S.D.N.Y. 1997).
  22. ↑ See, e.g., Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998) (commercial use requirement for dilution was met where defendant used a domain name that was similar to plaintiff's trademarks, in connection with a website critical of plaintiff's mission, because the website contained a hyperlink to another website that sold merchandise) ; PETA v. Doughney, supra, 263 F.3d at 365; OBH, Inc. v. Spotlight Magazine, supra, 86 F.Supp.2d at 186.
  23. ↑ Bosley Medical Institute, Inc., supra, 403 F.3d at 678-679, citing L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 33 (1st Cir. 1987); Ford Motor Co. v. 2600 Enters., 177 F.Supp.2d 661, 664 (E.D. Mich. 2001).
  24. ↑ 403 F.3d at 677-679.
  25. ↑ Id. at 679.
  26. ↑ Ticketmaster Corp. v. Tickets.com, Inc., 2000 WL 525390 (C.D.Cal. 2000) (deep linking to the interior web page of another does not necessarily involve unfair competition unless there is source confusion).
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