BRUCE A. LEHMAN, CHAIR
A trademark is quite different from either a copyright or a
patent. A trademark is any word, name, symbol or device, or any
combination thereof, that serves to identify and distinguish the
source of one party's goods or services from those of another
party. A service mark is the same as a trademark, except that it
identifies and distinguishes the source of services rather than
goods. In this report, the terms "trademark" and "mark" are
intended to refer to both types of marks.
The purpose of a trademark is twofold -- to identify the source of
products or services and to distinguish the trademark owner's
goods and services from those of others. As long as a trademark
fulfills these functions, it remains valid. Trademark ownership
rights in the United States arise through use of a mark.
Continued use of a mark is necessary to maintain trademark rights.
The owner of a trademark is entitled to the exclusive right to use
the mark. This entitlement includes the ability to prevent the
use, by unauthorized third parties, of a confusingly similar mark.
Marks used by unrelated parties are confusingly similar if, by
their use on the same, similar, or related goods or services, the
relevant consumer population would think the goods or services
come from the same source.
Unlike patent and copyright law, Federal trademark law coexists
with state and common-law trademark rights. Therefore,
registration at either the Federal or state level is not necessary
to create or maintain ownership rights in a mark. For example,
priority of trademark rights between owners of confusingly similar
marks, regardless of whether the marks are Federally registered,
is based upon first use of the mark. (fn.1)
Federal trademark law is embodied in the Lanham Act (fn.2) and is
based upon the commerce clause of the Constitution. (fn.3)
Therefore, to obtain a Federal trademark registration, in most
cases (fn.4) the owner of a mark must demonstrate that the mark is
used in a type of commerce that may be regulated by Congress.
(fn.1)5 Additionally, the Trademark Law Reform Act of 1988 (fn.6)
amended the Lanham Act to establish trademark rights, which vest
upon registration following use of the mark in commerce, as of the
filing date of a trademark application indicating a bona fide
intent to use the mark in commerce. (fn.7)
Goods and services to which a mark applies in a trademark
registration are categorized according to the Nice Agreement
Concerning the International Classification of Goods and Services
for the Purposes of the Registration of Marks of June 15, 1957, as
revised at Stockholm on July 14, 1967, and at Geneva on May 13,
1977 (International Classification). This treaty, of which the
United States is a member, is administered by WIPO. WIPO convenes
a meeting of experts, including representatives of the United
States, every five years to consider and adopt changes to the
International Classification. These meetings will be an important
means to effect changes to the International Classification to
accommodate the changing goods and services available in
connection with the NII and the GII. In preparation for the next
meeting of experts, which is likely to take place in late 1995, a
working group which includes the United States convened in March
1995 at WIPO to discuss proposals to amend the International
Remedies against trademark infringement and unfair competition are
available to trademark owners under both state and Federal law.
(fn.8) In this regard, the owner of a Federal trademark
registration has certain benefits. In a court proceeding,
registration on the Principal Register constitutes prima facie
evidence of the registrant's ownership of the mark. (fn.9)
Registration on the Principal Register may also be used as a basis
to block importation of infringing goods (fn.10) or to obtain
remedies against a counterfeiter. (fn.11) The Lanham Act provides
that under certain conditions the right to use a registered mark
may become incontestable. (fn.12) Additionally, the Lanham Act
provides for cancellation of registrations on certain grounds.
Existing legal precedent accepts electronic transmission of data
as a service and, thus, as a valid trademark use for the purpose
of creating and maintaining a trademark. (fn.14) Additionally,
existing legal precedent applies the available remedies for
infringement and unfair competition to such acts occurring through
the unauthorized use of trademarks electronically. (fn.15)
However, in the future, with widespread access to and use of the
NII, both the legitimate and infringing electronic uses of
trademarks may increase. Unfair competition may increase in the
context of the NII to the extent that it may be easier to copy or
remove trademarks from electronically transmitted information than
from labeled products or from services identified in print media.
In the global context for trademarks, there are likely to be
ramifications of global electronic transmission of trademarks in
view of the fact that trademark rights are national in scope.
Conflicts may arise where the same or similar trademarks are owned
by different parties in different countries, or where different
countries apply different standards for determining infringement.
Additionally, conflicts may arise where terms are in general use
in one country, but restricted as either trademarks or
geographical indications in another country.
With regard to access to the NII, several conflicts have arisen
where trademark owners are aware that third parties have
registered Internet domain names that are identical to their
trademarks. One of the first opportunities for a court to define
the legal relationship between trademarks and the registration and
use of site domain names on the Internet could be presented in an
action presently in Federal district court in the Southern
District of New York. The owners of the MTV cable network ("MTV")
have filed an action seeking injunctive relief and monetary
damages from a former employee who is offering a daily report
about the rock music industry on the Internet using the site name
"mtv.com." MTV is alleging, inter alia, trademark infringement
and unfair competition. (fn.16) In another instance, Kaplan
Educational Centers filed an action alleging trademark
infringement and unfair competition against its competitor,
Princeton Review, which had registered an Internet domain name of
"Kaplan.com." Kaplan reported that an arbitration panel ruled, in
an unreported opinion, that Princeton Review must relinquish all
rights in the "Kaplan.com" name and transfer it to Kaplan. Other
companies noted in the news that have expressed concern recently
about third party domain name registration of their well-known
trademarks include Coca Cola, McDonald's, MCI and Hertz.
1. Priority may also be established by the filing date of a
Federal registration based upon an intent to use a mark (15 U.S.C.
1051(b) (1988)) or a foreign filing (15 U.S.C. 1126 (1988)).
2. 15 U.S.C. 1051 et seq. (1988 & Supp. V 1993). The Lanham
Act, as amended, forms Chapter 22 of Title 15 of the U.S. Code.
3. The first Federal trademark law in the United States was found
unconstitutional because it was premised on the patent clause of
4. Certain foreign-based applications may register without a
showing of use in commerce. 15 U.S.C. 1126(e) (1988).
5. 15 U.S.C. 1127 (1988 & Supp. V 1993). "The word 'commerce'
means all commerce which may lawfully be regulated by Congress."
This includes interstate commerce, commerce between the United
States and a foreign country, and territorial commerce.
6. Pub. L. 100-667, 1988 U.S.C.C.A.N. (102 Stat.) 3935.
7. 15 U.S.C. 1051(b) (1988).
8. See 15 U.S.C. 1114 - 1121, 1125(a) (1988 & Supp. V 1993) for
relevant Federal law provisions. State and common law unfair
competition provisions include such torts as passing off and
9. 15 U.S.C. 1057(b) (1988).
10. 15 U.S.C. 1124 (1988).
11. 15 U.S.C. 1116(d) (1988); 18 U.S.C. 2320 (1988).
12. 15 U.S.C. 1065 (1988).
13. 15 U.S.C. 1064 (1988).
14. See In re Metriplex Inc., 23 U.S.P.Q.2d 1315 (TTAB 1992),
where the PTO's Trademark Trial and Appeal Board authorized
registration of a mark identifying "data transmission services
accessed via computer terminal" and accepted, as evidence of use
of the mark, a print-out of the mark as it appeared on the
computer screen during transmission.
15. In the case of Playboy Enterprises Inc. v. Frena, supra note
386, the operator of a subscription computer bulletin board system
(Frena) transmitted as part of its bulletin board system
photographs owned by Playboy Enterprises Inc. (PEI). PEI's
trademarks were obliterated on some photographs transmitted by
Frena and PEI's "Playboy" and "Playmate" marks appeared on other
photographs transmitted by Frena. These transmissions were
without authorization from PEI. The court found, in part, that
Frena infringed PEI's registered trademarks when it used PEI's
"Playboy" and "Playmate" marks in unauthorized transmissions of
PEI's photographs as part of its computer bulletin board system.
The court also found Frena to have committed acts of unfair
competition, in violation of Section 43(a) of the Lanham Act (15
U.S.C. 1125(a) (Supp. V 1993)), both by obliterating PEI
trademarks from photographs and by placing its own advertisement
on PEI photographs. Such acts made it appear as if PEI authorized
Frena's use of the images on the bulletin board; see also
Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium
Ass'n, 693 F. Supp. 1080 (S.D. Fla. 1988), modified, 881 F.2d 983
(11th Cir. 1989), remanded, 895 F.2d 711 (1990), in which the
court found that interception of cable television programming
broadcast via satellite which appropriates trademarks and trade
names in a manner likely to cause confusion is unfair competition
in violation of Section 43(a) of the Lanham Act (15 U.S.C.
1125(a) (Supp. V 1993)). See also Pacific & Southern Co. Inc. v.
Satellite Broadcast Networks Inc., 694 F. Supp. 1575 (N.D. Ga.
In California, a U.S. District Court has entered a preliminary
injunction against the owner of a computer bulletin board system
based upon claims of copyright and trademark infringement and
unfair competition. In Sega Enterprises Ltd. v. MAPHIA, supra
note 388, Sega demonstrated that the bulletin board system
knowingly solicited the uploading and downloading of unauthorized
copies of Sega's video games, and that whenever such a copy is
played, Sega's trademark appears on the screen. Further, Sega's
trademark appeared, with the BBS operator's knowledge, on file
descriptors on the bulletin board. With regard to the trademark
and unfair competition claims, the court concluded that there is
support for the conclusion that the transferred games are
counterfeit under the Lanham Act, and that confusion, if not on
the part of the bulletin board users, is inevitable on the part of
third parties who may see the copied games after they enter the
stream of commerce.
16. To send and receive information on the Internet, various
organizations connected to the Internet must register their
domains, networks and autonomous systems numbers with Network
Solutions, part of the Internet National Information Center
(InterNIC). The InterNIC performs this function under a
cooperative agreement with the National Science Foundation.
Within the context of a prescribed format, the Internet user may
register any domain name as long as the identical domain name has
not been previously registered with the InterNIC by another party.
According to the InterNIC, there is no state or Federal statutory
or regulatory authority under which the InterNIC performs this
registration function. The InterNIC does not conduct an
examination of trademark or other records before registering a
domain name. However, the applicant is required to follow a
policy relating to assumption of responsibility and to potential
conflict resolution. The InterNIC policy is available at URL
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