The Internet And Trademark Conflicts

The same trademark rules that govern the ownership and control of more traditional trademarks govern the application of trademark law to the internet.

A trademark is any word, name, symbol or device, or any combination of them, used by a person to distinguish its goods and services from those of others.  Use of a similar mark that is likely to cause confusion may constitute infringement.  Whether or not the mark is registered with the USPTO, an infringement suit can be brought in the federal courts if the mark is used on goods and services that are used in interstate commerce.

The infringement does not have to be direct to constitute "tarnishment."  Thus, a termite company that used the phrase "Where's The Life There's Bugs" was made to stop using the phrase by Budweiser, which uses the line "Where  There's Life There's Bud."  American Express got the courts to shut down the use by a condom company of "Don't Come Without It".  However, Utah's slogan "The Greatest Snow On Earth" was held not to infringe or tarnish the Ringling Brothers' mark "The Greatest Show On Earth." 

Whether or not a domain can be registered as a trademark is treated in the "Domain Names" section of this website.  The point to remember is that a trademark is limited to the goods and services it identifies.  This means "Dove" soap does not prevent an ice cream manufacturer from using the mark "Dove" ice cream.  But there can be only one "dove.com."  This is one reason there have been fights over internet domain names.

Interesting trademark questions have arisen over the use of "links", "framing", and "metatags." (See the "Linking" And "Framing" section of this website.)  Metatags are covered in "Resolution Of Disputes Over Domain Names & Cyberpirates".  A company that used its competitor's name in metatags embedded in its web pages, and then registered its site with 380 search engines, ultimately had to take its website entirely off the internet because it couldn't eliminate the "footprints" its search engine registration has strewn across the web.  So don't be too clever.  Even the hidden tags are now the subject of litigation.

Trademark infringement will continue to be a significant percentage of internet litigation because the law in this area is developing and the expansion of the internet will bring more and more businesses on-line, many of whom will find out to their surprise that they have inadvertently stepped on the rights of other trademark and copyright owners.

Law Offices of Douglas Clark Hollmann

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