Trademark Protection For Individual Names ? A ?Poison Pill? For Cybersquatters
Should I register my individual name as a federal trademark?
The unequivocal answer for celebrities, sports figures, published authors, speakers and individuals marketing goods and services under their individual names is, ?Yes.?
A registration allows clients and counsel to act quickly to prevent unauthorized use of individual names for marketing of competitive goods and services, a practice which is exploding on the Internet. Just as major corporations set up a ?poison pill? to prevent uninvited take over attempts by competitors, individuals with trademark rights in individual names can use a trademark registration to serve the same purpose.
There are two major reasons to register an individual?s name as a trademark.
1. Provides access to speedy and less costly remedies afforded to trademark owners whose marks are contained in unauthorized domain names; and
2. Creates a poison pill against competitors purchasing marks as search terms and who use marks in Metadata.
The ?right of publicity? is a legal doctrine used to prevent unauthorized use of a person?s name, image, or likeness for commercial purposes. Access to remedies for such violations is still limited to traditional, more expensive court proceedings. Moreover, the U.S. anti cyber squatting statute, 15 U.S.C.A. ? 1129, provides for relief for theft of unregistered individual names only upon proof the registration was made with an intent to sell the name for a profit, and does not protect against competitive uses, which are much more common.
California Business & Professions Code ? 17525 is another alternative that affords protection for names of deceased celebrities. It eliminates the requirement that registration be made with an intent to extort money. That is well and good, but how do California residents sue a cyber squatter based in Korea, over which there is no jurisdiction, i.e. the court has no authority to bind the party to its decision?
How Does a Federal Trademark Benefit the Individual?
A review of the most common forms of brandjacking provides the answer.
Unauthorized Use of an Individual?s Name in a Domain Name. What happens when an individual?s name ends up in the URL of a domain owned and used by a third party? There are two possible remedies.
Uniform Domain Dispute Resolution (?UDRP?). The arbitration may be filed before the World Intellectual Property Organization (WIPO) or one of several other approved ICANN dispute forums. A decision is made within two months of appointment of the arbitrator. Costs are substantially less than a court proceeding since all proceedings are in writing.
One must prove three elements to secure return of the domain:
? The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right; and
? The registrant has no legitimate rights in the mark; and
? Registration was made in bad faith.
The first element is established by providing a valid trademark registration. A federal registration proves the first element without need for further evidence of trademark use.
Contrast the result where there is no registration and the individual, albeit well known, loses.
David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514. David Pecker, CEO of American Media, was unsuccessful in proving that he had ?used his personal name for the purpose of advertising or promoting his business or for the sale of any goods or services.? Joacim Bruus-Jensen v. John Adamsen, WIPO Case No. D2004-0458.
Anna Nicole Smith c/o CMG Worldwide v. DNS Research, Inc., NAF Case FAO 0220007
?[T]the mere fact of having a successful career as an actress, singer or TV program star does not provide exclusive rights to the use of a name under the trademark laws. The cases require a clear showing of high commercial value and significant recognition of the name as solely that of the performer.?
Anti Cyber squatting Statute. The U.S. Trademark statute, Lanham Act ? 43(d)(2) provides that the U.S. District court for the Eastern District of Virginia is available to file against offenders world wide holding domains with a U.S. registry. This remedy is based upon in rem jurisdiction, an age old doctrine that allows a court to exercise jurisdiction based upon the location of the property, and hails from settling property boundary and ownership issues, including notice to lost or unknown heirs. In the case of domain names, use of the ? 43(d) anti-cyber squatting provisions is available only if the plaintiff?s mark is federally registered with the U.S. Trademark Office.
Protection from Sponsored Internet Ads and Use in Metadata
Search engines now auction search terms to the highest bidders, including
? Generic search terms- for example ?discount airline tickets?
? Trademarks- for example: AMERICAN AIRLINES
? Individual Names
The first use is clearly not objectionable. But as more people bid on the descriptive term, the price goes up making its use cost prohibitive. Competitors start to look for less expensive ways to get their message out using other terms, including the trademarks and individual?s names associated with related products or services.
Courts have already ruled that a competitor purchasing the mark, or placing a mark in metadata to secure search engine ranking is liable for infringement under the concept of ?initial interest confusion.? The controversial topic practice by Google of auctioning trademarks to competitors for sponsored listings is the subjection of pending lawsuits. Google has been turning a deaf ear, leaving the client to pursue only the direct infringer. Here are two examples:
A noted author?s name is being purchased by a competitor to promote a third party?s books and seminars. The author and the publisher must pay Google more for using their own names to advertise due to competitive bidding by infringers!
A popular discount filing service for trademarks markets its services on the internet by purchasing trademarks belonging to others. Our recent Google search of ?XEROX trademark? turned up a sponsored ad by Legal Zoom, which is purchasing the mark XEROX? as a search term to advertise its trademark registration services! What?s the concern?
? The competitor is relying upon the good will existing in someone else?s name to promote their product, thus gaining a free ride to attract customers to their competitive product.
? The terms are bid upon through the Google auction process, forcing the author and the publisher of the books to bid against third parties to use the author?s name! The competition drives up the bid price charged to an individual using his or her own name to promote their own services, increasing Google?s profits and providing the trademark owner?s competitor with a platform.
Next time you perform a Google search, note rankings for products or services which pop up in the rankings other than for the one you keyed in. Some competitors are routinely including better known competitor?s marks in their metadata to gain ranking when the trademarked term is searched. This is an example of infringement by way of initial interest confusion and is illegal.
In sum, consider a federal trademark registration for goods and services sold and promoted under an individual?s name as a poison pill for cybersquatters. Major corporations take them to prevent unfriendly takeover attempts. Individuals should do the same with regard to unfriendly theft of domains. In the Internet Age, you will likely be glad you did.
Copyright 2009 Hodgson Law Group Cheryl L. Hodgson, J.D. For expert Branding advice visit: http://brandaideblog.com Visit us online: http://www.hodgson-law.com BRANDAIDE: Driving Your Brand to Distinction
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