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Trademarking is a method of Protecting brand recognition. Most suits over trademark violation involve consideration of whether the infringing conduct resulted in confusion in the marketplace. 1 Confusion can be over origin (such as appropriating the name of a competitor) or misrepresentations regarding nature or quality (like claiming that orange juice is “freshly squeezed”). To prevent dilution of famous marks, however, a suit need not involve confusion. Mere usage of a trademark may be a violation if unauthorized. 2
In the Web context, trademark violation generally occurs in one of two ways: within the URL 3 or as content on the web page. 4 A great deal of litigation has revolved around whether attempts to register domain names that contain a protected trademark are violations. 5 The short answer is that courts strive to find that such attempts are violations. Domain name owners who have usurped trademarked names have been forced to surrender the registered name. 6 In the early days of the Internet, many enterprising ‘netizens registered domain names of famous companies to sell a profit when the company decided it need a Website. On the other hand, mere registration of a domain name that happens to contain a trademark may not be a violation in and of itself.

ICANN, 7 has instituted an arbitration procedure for determining whether a trademark owner has the right to take away a domain name.8 Whether U.S. courts will demur to the decisions of ICANN remains to be seen.

Trademarks can appear in portions of the URL other than the domain name. A subdirectory name can use a trademark, or a specific file name can contain a trademark. For example, the fictional URL would seem to violate two trademarks. But a federal judge in California has ruled that such usage is entitled to less protection than domain names because it is merely descriptive and does not entail the likelihood of confusion that domain name usage does. 9 The court found that as long as the content of the page does not lead to confusion about source, then there is no violation when a server uses a trademark as a descriptive indicator.

As in other areas of law, freedom of speech may be a defense to suit for violation of trademark, 10 particularly when satire or parody is involved. 11 The defense is limited, however, and will generally not avail when there is commercial intent 12 or alternative avenues of communication. 13

1 15 U.S.C. 1114(l) and 1125(a).

2 15 U.S.C. 1125(c).

3 Uniform Resource Locator.

4 Another possible violation of trademark could occur through the use of false headers in email. See e.g., Hotmail Corp. v. Van$ Money Pie Inc., 47 U.S.P.Q.2d 1020 (N.D. Cal. 1998).

5 See, e.g., Maritz, Inc. v. CyberGold, Inc., 947 F.Supp. 1338 (E.D.Mo. 1996); Computer Currents Publishing Corp. v. Jaye Communications, Inc., 968 F.Supp. 684 (N.D.Ga. 1997).

6 See e.g., Planned Parenthood v. Bucci, 97 Civ. 0629 (KMW) (S.D.N.Y. 1997) (finding that use of trademark created likelihood of confusion with regard to source);but see Desknet Systems, Inc. v. Desknet, Inc., 42 U.S.P.Q.2d (BNA) 1954 (S.D.N.Y. 1997) (denying request for preliminary injunction for lack of diligence).

7 ICANN is the International Coalition of Assigned Names and Numbers.

8 See

9 Patmont Motor Werks Inc. v. Gateway Marine Inc., C-96-2703 (N.D.Cal. 1997). Judge Thelton Henderson found that the use of the trademark in the URL constituted “nominative fair use.” Id.

10 Rogers v. Grimaldi, 695 F. Supp. 112, 120-21 (S.D.N.Y. 1988), aff’d 875 F.2d 994 (2d Cir. 1989) (finding that biographical movie was artistic expression and not “primarily intended to serve a commercial purpose”).

11 L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987), cert. denied 483 U.S. 1013 (1987); but see Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972) (finding tarnishment of soft drink’s mark with substitution of word “cocaine”).

12 Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994).

13 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206 (2d Cir. 1979).

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