The Law of the Internet in Georgia – Trademarks

By Rob Hassett

Hassett Cohen Goldstein, LLP

990 Hammond Drive, Suite 990

Atlanta, GA 30328

(770) 393-0990

www.internetlegal.com.

The writer wishes to thank his wife, Lynn Hassett, an attorney in his law firm and Adam Alexander, formerly a law student at Emory University Law School, now practicing law at the firm of Cooper & Scully, PC in Dallas, Texas, for their help in preparing this section of these materials.

Background and Summary

This article first appeared in the program materials for the internet law seminar sponsored by NBI, Inc. which was held in Atlanta, Georgia on February 18, 1998. This intermediate level article addresses the subject of trademark law as it relates to the internet. (14 Pages)

I.          INTRODUCTION

Rights relating to trademarks and service marks are governed by state law relating to trade names, trademarks, and service marks and federal law relating to trademarks and service marks. The topics that are the subject of this article are addressed in the following order: general principles, Georgia law, federal law, the domain name registration system, court decisions concerning domain name disputes and miscellaneous internet trademark/service mark related issues.

II.        GENERAL PRINCIPLES

A.        Definitions

A trademark is a word, name, symbol, or device, or any combination thereof that identifies the source of the goods to which the trademark relates. Likewise, a service mark is a mark used to identify the source of services. A trade name is a name used to identify a business. Trademarks are placed on the goods themselves, on labels attached to the goods, on packaging, or on displays. Service marks are used in advertising or promotional materials describing the services or on a sign at the location where the services are actually being provided.(1) To establish a trademark or service mark, it is necessary to make it clear that the mark is being used to designate the source of goods or services. For this reason, if the mark is merely one or more words, the word(s) should be emphasized (for example, colored, bolded, italicized, capitalized, or larger letters). Using the letters “tm” for “trademark” or “sm” for “service mark” is always helpful in indicating that the owner intends that the mark not registered on the principal register of the United States Patent & Trademark Office, is being used as a mark.(2)

B.        Descriptiveness and Priority

Two important concepts relating to marks are:

(1)        “Descriptiveness” and “distinctiveness”; and

(2)        Priority.

“The common law has long embodied the rule that terms that are merely descriptive of the qualities, ingredients or characteristics of a product [are descriptive and not subject to protection without secondary meaning].”(3) Marks which are “merely descriptive” are not protectable under trademark law and cannot be registered on the principal register of the Patent and Trademark Office (the only type of federal registration affording legal protection) until, through advertising and use, the marks have become distinctive, also referred to as acquiring “secondary meaning,” which means that the marks are understood to indicate the source of goods or services in the minds of the public.(4) Arbitrary and suggestive marks are protectable, and registerable on the principal register, when first used, provided that their use would not create a likelihood of confusion(5) with other marks having priority or run afoul of state or federal anti-dilution laws.(6) Marks which are generic are never protectable. “A suggestive mark is one that requires some measure of imagination to reach a conclusion regarding the nature of the product.” See, Maritz, Inc. v. Cyber Gold, Inc., 97 F.Supp. 1338 (E.D. Mo. 1996) (August 29, 1996) quoting from Duluth News-Tribune v. Mesabi Publishing Co., 84 F3d at 1093 (this case held that the mark “GOLDMAIL” is “suggestive” rather than “descriptive”).

Users of arbitrary and suggestive marks may acquire priority over uses by others which are likely to be confusing in two ways:

(1)      Actual use with respect to any area before the mark is used by another either actually or constructively; and

(2)     Constructive use by registration on the principal register of the United States Patent and Trademark Office for those territories where no other user has used the mark prior to such registration with the exception that the first user (actual or constructive) anywhere in the United States can have the mark canceled for five years after registration.(7) The date of constructive use for a registered mark relates back to the date of filing or, if the mark was first registered in a foreign country and certain treaties apply, up to six months earlier than the date of filing on the principal register.

For a descriptive mark there is no exclusive right to use the mark unless and until the mark acquires secondary meaning. Any user who uses a descriptive mark prior to another user acquiring secondary meaning is not precluded from continuing to use the mark to the extent previously used.(8) Although a descriptive mark is not protectable under state and federal trademark law until secondary meaning is established, trade names, which are often descriptive and not distinctive, are protectable under the state law of Georgia and many other states that have adopted the Uniform Deceptive Trade Practices Act.(9)

III. GEORGIA TRADEMARK LAW

Georgia adopted the Uniform Deceptive Trade Practices Act in O.C.G.A. §10-1-371 et seq. §10-1-372 reads in pertinent part:

(a)        A person engages in a deceptive trade practice, when, in the course of his business, vocation or occupation, he:

(1)        Passes off goods and services as those of another;

(2)        Causes likelihood of confusion or of misunderstanding as to the source, sponsorship, approval, or certification of goods and services;

At one time it was believed that damages would not be recoverable for violation of this statute. However, in Diedrich v. Miller and Meier & Associates Architects & Planners, Inc.,(10) the Georgia Supreme Court held that damages were recoverable. This Act, which provides protection in Georgia even for descriptive trade names without secondary meaning, is not available to a party which has not registered its trade name in the county of its principal office as required under O.C.G.A. §10-1-490 (“the fictitious name” statute).(11)

The user of an arbitrary, suggestive, or descriptive, but distinctive, trademark or service mark may register that mark with the Georgia Secretary of State under O.C.G.A. §10-1-442.(12) The owner of a mark registered with the Georgia Secretary of State has a claim against any person who uses that mark in a way that is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services. A “use” under the Act is the sale, offering for sale, or advertising of goods or services.(13) Remedies include liquidated damages of $10,000 if such act is committed with knowledge that the trademark or service mark has been registered. The owner is also entitled to an injunction and, if the owner elects not to recover liquidated damages, the owner is entitled to recover all provable profits and damages resulting from such wrongful use.(14)

 Are marks in Georgia only protected when there is a likelihood of confusion? For example, under Georgia law would an individual be permitted to use the name “Motorola” for roller skates? The answer is no. The activity may arguably not create a likelihood of confusion as to the source of the skates but it would certainly constitute what is called trademark dilution.(15)

O.C.G.A. §10-1-451(b), the Georgia Anti-Dilution Statute, reads in pertinent part:

Every person … adopting and using a trademark, trade name, label, or form of advertisement may proceed by action; and all courts having jurisdiction thereof shall grant injunctions to enjoin subsequent use by another of the same or any similar trademark, trade name, label, or form of advertisement if there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the trademark, trade name, label, or form of advertisement of the prior user, notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services …

This statute does not require that the plaintiff’s mark be registered.(16) Trade names and service marks are also protected in Georgia under common law,(17) and in equity, for intentionally misleading and deceiving the public.(18)

 IV. FEDERAL TRADEMARK LAW

 All federal trademark law is statutory and is based on the Lanham Act.(19) The Lanham Act provides protection for marks that are both registered on the principal register of the Patent and Trademark Office and those that are not registered. The advantages of registration are:

 (1)        under §7(c) 15 U.S.C.A. 1057 (c), with some exceptions, registration provides “constructive use” priority from the date of filing;

 (2)        under the current policies of Network Solution, Inc., (“NSI”) which is responsible for registering domain names which have the top level domains:

 .com, .org., .gov., .edu, and .net, the holder of a mark registered with the United States Patent and Trademark Office or with a foreign country can, by following NSI’s procedures, prevent the owner of a domain name who doesn’t have a federal or foreign registration from continuing to use their domain name until and unless a court action is filed.(20)

(3)        the certificate of registration is prima facia evidence of the validity of the registered mark;(21)

(4)        With limited exceptions, an owner of a registered mark may recover three times the profits of the infringer or the damages proved, whichever is greater, together with reasonable attorney’s fees for a knowing use of a counterfeit mark under §35(b),(22) (as opposed to other situations, including use of counterfeit marks when the mark is not registered, where the court may, but is not compelled to, award triple damages).(23) Alternatively, for counterfeit use of a mark that has been registered on the principal register, the plaintiff may elect to recover statutory damages which leaves the amount to be awarded up to the court but can be, for a willful infringement, as much as $1 million per counterfeit mark per type of goods or services involved.(24)

An infringer of a registered mark is liable under §32 (1) of the Lanham Act (15 U.S.C.A. 1114 (1)) which defines infringement as using, without consent, in commerce, any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; ….(25)

Profits and damages for infringement of a registered mark are recoverable only if one of the approved notices of registration such as an “®” has been placed next to the mark being used in connection with the goods or services or the infringer had actual notice of the registration at the time the infringement occurred.(26)

An infringer of an unregistered mark is also liable under §43(a) Lanham Act, which reads, in pertinent part:

(a) (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any false designation of origin … which

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person …

shall be liable in a civil action …

Except for remedies against use of a counterfeit mark and relating to the possible award of triple damages, the relief obtainable and damages recoverable are the same for an unregistered mark as for a registered mark.(27) Because the use of the ® would be illegal on an unregistered mark, there is no other particular designation necessary to allow damages to be recovered for infringement of an unregistered mark.

Whether a particular use of a mark is held to be likely to cause confusion is determined by a number of factors. In Jellibeans, Inc. v. Skating Clubs of Georgia, Inc.,(28) the Eleventh Circuit reviewed the decision of the district court that “Lollipops” for a roller skating rink was likely to cause confusion with the mark “Jellibeans.” The Court of Appeals applied the following test to determine likelihood of confusion:

(1)        How distinctive is the plaintiff’s mark? Do consumers strongly identify plaintiff’s service mark with its services? …

(2)        How similar are the designs of the plaintiff’s and defendant’s marks?

(3)        How similar are the services the plaintiff’s and defendant’s marks represent?

(4)        How similar are the plaintiff’s and defendant’s retail outlets and their customers?

(5)        How similar is the advertising the plaintiff and defendant use?

(6)        Whether the defendant intended that purchasers would confuse his service mark with the plaintiff’s; and

(7)        Whether people were actually confused by the similarity of the marks.

While an anti-dilution law had been in effect in Georgia and many other states for years, it was not until 1996 that Congress enacted a federal anti-dilution statute. This statute provides that both registered and unregistered marks which qualify as “distinctive and famous marks” are protected from dilution under Lanham Act §43(c).(29) The statute reads that in determining whether a mark is “distinctive and famous,” a court may consider factors such as, but not limited to –

(A)       the degree of inherent or acquired distinctiveness of the mark;

(B)       the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

(C)       the duration and extent of advertising and publicity of the mark;

(D)       the geographical extent of the trading area in which the mark is used;

(E)       the channels of trade for the goods or services with which the mark is used;

(F)       the degree of recognition of the mark and the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought;

(G)       the nature and extent of use of the same or similar marks by third parties; and

(H)       whether the mark was registered … on the principal register.

Although this section does not indicate whether or not the statute restricts uses of marks that are not likely to be confusing, but may be diluting, prior to the enactment of the statute, at least one court has held that the statute is prospective only.(30)

V.        DOMAIN NAME REGISTRATION

Currently, registration of domain names under the top level domains, .com, .org., .gov, .edu, and .net, are administered by Network Solutions, Inc. (“NSI”) under an agreement with the National Science Foundation.(31) .com and .net are available for commercial purposes.(32) Top level domain names associated with countries and with the U.S. Military (.mil) are administered separately.

The Internet Assigned Number Authority (“IANA”) is an organization that currently acts as a clearinghouse to assign and coordinate the use of numerous Internet Protocol parameters. IANA was chartered by the Internet Society (“ISOC”) and the Federal Networking Council (“FNC”).(33) This turns out not to be accurate.(34) ISOC is a non-profit, non-governmental organization of over 7,000 members that are involved with the internet and is headquartered in Reston, Virginia.(35) The Federal Networking Council is a U.S. government forum for federal agencies with programs that utilize interconnected Internet networks.(36) IANA is headquartered at the Information Sciences Institute at the University of Southern California.

IANA, ISOC and other organizations combined to form the Internet International Ad Hoc Committee (IAHC) which sought to create a framework to allow the addition of other top level domain names. The IAHC came up with recommendations in February of 1997 and was dissolved on May 1, 1997. Its recommendations are now being pursued by the generic top level domain – Memorandum of Understanding Policy Oversight Committee (POC). The POC appears to be mostly controlled by representatives of ISOC.(37) Recommendations of IAHC include adding 85 to 90 gtld registers, which will be in addition to NSI, for registering domain names, adding a dispute settlement procedure which would, in effect, allow for an arbitration proceeding mechanism for resolving domain name disputes and establishing seven (7) additional top level domain names which are:

.firm for businesses

.shop for businesses offering goods to purchase

.web for entities emphasizing activities related to the World Wide Web

.arts for entities emphasizing cultural and entertainment activities

.rec for entities emphasizing recreation/entertainment activities

.info for entities providing information services

.nom for personal internet addresses.

The activities of the POC have become very controversial because of the limitation on the number of new top level domain names (a number of companies wish to have that determined by the market) and regarding resolution of domain name disputes.(38) For additional information about the proposals see http://www.gtld-mou.org/docs/faq.html. For the views of an Atlanta based company that seeks to add its own top level domain name “.per” see: http://www.iperdome.com/.

The White House just issued a proposed rule of the Department of Commerce entitled “A Proposal To Improve Technical Management of Internet Names And Addresses,” discussion draft 1/30/98 which proposes that the domain name structure, and other matters relating to the internet, be overseen by a new not-for-profit corporation headquartered in the United States with what would appear to be a more open arrangement for selection of a board of directors and the addition of new domain names than the IAHC proposal.(39)

Until the issues relating to the White House and POC proposals are resolved, the NSI procedures will continue to control. The NSI registers domain names on a first come first serve basis. If no one has registered a particular domain name, the applicant, by completing the required form and meeting other requirements such as having two services available for its proposed website, can register the name. Usually someone wishing to reserve a domain name first checks on the “Whois” database of InterNIC administered by NSI.(40) Once it appears the name is available, an individual would usually call an internet service provider such as Mindspring and request that the name be reserved. The person desiring to reserve a domain name will be charged $100.00 for the registration, payable to NSI, and about $50.00 payable to their Internet Service Provider (“ISP”). They will then be charged a nominal fee (Mindspring charges $5.00 per month) unless and until they actually set up their website on their ISP’s server at which time they will be required to pay whatever charges apply for the hosting of the website.

NSI has posted its policies regarding conflicting claims to any domain name at ftp://rs.internic.net/policy/nic-rev03.txt NSI’s policy is subject to change at any time. Currently NSI will comply with any order of a federal or state court in the United States appearing to have jurisdiction. Where the owner of a mark registered on the principal register of the United States Patent and Trademark Office or a foreign registration provides written notice to the owner of a domain name of a claimed violation with a copy to NSI, NSI’s policy is to give notice to the owner of the domain name that NSI is going to put the domain name on hold unless: (a) the date the domain name was obtained precedes the date of registration of the trademark or service mark shown in the certified registration; (b) the domain name owner provides proof of ownership of a federal or foreign registration of a trademark or service mark obtained prior to receipt of written notice from the complainant; or (c) a lawsuit is filed to resolve the dispute.(41)

To guard against the danger of another party registering a mark with a foreign government, then causing a domain name to be placed on hold, a domain name owner should consider obtaining a foreign registration. Obtaining a registration on the Principal Register will take a minimum of ten months. Registration in some other countries, including Tunisia, take much less time (as little as a few days). It should be understood that a foreign registration under these kinds of circumstances will not affect a decision about the right to use a domain name in a United States Court.

VI.       DOMAIN NAME LITIGATION

The above-discussed principles have been applied to the resolution of domain name disputes. Examples follow:

In Card Service International, Inc., v. Webstar McGee & WRM & Associates,(42) the Defendant, a competing credit card processing company, used the Plaintiff’s registered mark “Card Service” in the domain name for its website – “cardservice.com.” Holding that the Defendants’ use was likely to cause confusion among consumers, the court, in a bench trial, issued a permanent injunction against the Defendants’ using that domain name and ordered that the Defendants relinquish all interests in the domain name. The court also ordered that the Defendants pay reasonable attorney’s fees to the Plaintiff.

In another case, where the use of a mark in a domain name by the Defendant, which was a licensed publisher of the magazine “Atlanta Computer Currents,” did not appear to have been done in bad faith and the Defendant was shifting its operations over to a different domain name, balancing the harms, Judge Hunt of the U.S. District Court for the Northern District of Georgia denied a preliminary injunction.(43)

In cases where, after applying the likelihood of confusion test (which varies somewhat from case to case but are all similar to the test quoted from Jellibeans), the court does not find a likelihood of confusion and the anti-dilution statutes do not apply, no infringement will be found. For example, in Maritz, Inc. v. Cybergold,(44) the Plaintiff had been using the unregistered mark “goldmail” for its advertising service that provided financial incentives to potential consumers for reading electronic mail. The Defendant had been setting up the same kind of service under the mark “cybergold.” In deciding on whether or not to grant a preliminary injunction, the court determined that the Defendant chose its mark and domain name in good faith. Applying all of the factors, the court determined that the marks were probably not likely to create confusion for their consumers. In comparing “www.goldmail.com” to “www.cybergold.com” the court disregarded the similarities of the domain names because of the functional use of the “www” and “com” portions. The Court also pointed out that Cybergold had filed an intent to use registration possibly prior to use by the Plaintiff. The Second Circuit Court of Appeals has held that this alone would prevent a preliminary injunction from being entered.(45)

The courts have also held that where there is not a likelihood of confusion arising from the use of a domain name incorporating another’s mark, but where the mark is famous and distinctive under the Federal anti-dilution statute referred to above, and there is a violation of that statute, or where there is a violation of a state anti-dilution statute, use of a domain name will be enjoined. For example, in TOYS “R” US, Inc. and Geoffrey, Inc. v. Mohamad Ahmad Akkaoui d/b/a Adults “R” Us, et. al.,(46) the Defendants had an internet site offering a variety of sexual devices and clothing using the domain name “www.adultsrus.com.” In granting a preliminary injunction, the court held that the Defendants’ use of “adultsrus” caused dilution of the distinctiveness of the quality of the “Toys ‘R’ Us” mark. The Court ordered that the Defendants cease all use of the mark and “request Network Solutions, Inc. to cancel their ‘adultsrus’ domain name registration.” Similarly, in Hasbro, Inc. v. Internet Entertainment Group, Ltd.,(47) a preliminary injunction was granted against the defendant’s using the internet domain name “candyland.com” for a sexually explicit internet site.

There is a requirement that for a use of a mark as part of a domain name to be considered to violate applicable law, the domain name must be used in commerce. For example in Juno Online Services, L.P. v. Juno Lighting, Inc.,(48) Juno Lighting had been using its mark for many years. The Juno email service began operating under the domain name “juno.com.” Juno Lighting, seeking to invoke the NSI procedures relating to cancellation of a domain name, sent the requisite letter to Juno Online and also registered, but never used, the domain name “juno-online.com.” NSI notified Juno Online that it would be placing its “juno.com” domain name on hold unless a court action were filed. Juno Online then filed a court action seeking a declaratory judgment to avoid cancellation of its domain name and also seeking relief against Juno Lighting for grabbing the “juno-online.com” domain name. In response to Defendant’s Motion for Summary Judgment regarding Plaintiff’s claim that Juno Lighting’s domain name registration of “juno-online” constituted dilution, the court held that the dilution statute was not applicable because Juno Lighting was not using the “juno-online” domain name for any website and was not using the mark in any other way so that it could be considered “use in commerce.”

In Teletech Customer Care Management (California) v. Tele-Tech Company, Inc., a Kentucky Corporation, et. al.,(49) the Defendant was an engineering and installation services contractor in the telecommunications industry which began using the name “Tele-Tech” in 1978. The Plaintiff is a very large concern that provides call center and fulfillment services for other companies. The Defendant had set up a web site under the domain name “teletech.com” without the hyphen. The court granted a preliminary injunction, not because of any likelihood of confusion (the court said that once viewers actually go to the Defendants’ website any confusion will be dispelled), but because of a violation of the federal anti-dilution law. The writer does not agree with this decision. The federal dilution law expressly provides that it does not prohibit the use of a famous mark unless “such use begins after the [famous] mark becomes famous.” Since the Defendant had been using the mark (albeit without a hyphen) since not only before the Plaintiff’s mark was famous, but before the Plaintiff ever used it, it seems that the Defendant should have been permitted to continue to use that domain name.

In Lockheed Martin Corporation v. Network Solutions, Inc., et al.,(50) Lockheed sued Network Solutions, Inc. for registering various domain names including, or similar to, Lockheed’s federally registered mark “skunk works.” As in Juno Online Services, L.P., supra, the court said that NSI had simply registered domain names and had not used any of the marks commercially as proscribed by the Federal Anti-dilution Act. The court expressly distinguished the well-known cases of Panavision International, L. P. v. Toppen,(51) and Intermatic, Inc. v. Toppen,(52) on the grounds that, in those cases, the Defendants had used the marks in commerce inasmuch as the Defendant was registering famous domain names with NSI and offering them for sale to the owners of the marks. The court also said that NSI would not be liable for contributory infringement because NSI cannot be considered to have knowledge of an infringement even after an attorney has sent NSI a letter. The court noted that “trademark law” permits multiple parties to use the same mark where, for example, the uses are not likely to create confusion and there is no violation of the anti-dilution statute, and there is no way for NSI to know whether the use of a particular mark is permissible.

VII. LITIGATION INVOLVING USE OF MARK IN BODY OF WEBSITE

Playboy Magazine sued the owner of two adult-oriented websites for placing the “Playboy” mark on pages of the site in a manner that was not readily visible to viewers of the site. The problem was that the presence of the marks was visible to “spiders” that index sites for search engines and therefore the Defendant’s site would turn up in search engine searches for the “Playboy” site. The court issued a preliminary injunction requiring the Defendant to remove the uses of the “Playboy” trademark from the site.(53)

Other cases that have been settled include the use of trademarks in keywords to lure viewers to sites.(54) Any use of the trademark of another party in bad faith to attract users to a website would constitute trademark infringement and/or dilution.

VIII.    GEORGIA STATUTE RELATING TO EMAIL ADDRESSES AND USES OF TRADEMARKS HELD UNCONSTITUTIONAL

In 1996, the Georgia legislature enacted O.C.G.A. §16-9-93.1(a) which read in pertinent part:

It shall be unlawful for any person … knowingly to transmit any data to a computer network … for the purpose of setting up, maintaining, operating, or exchanging data with an electronic mailbox, home page … if such data uses an individual name, trade name, registered trademark, logo, or legal or official seal or copyrighted symbol to falsely identify the person … transmitting such data or which would falsely state or imply that such person … has permission or is legally authorized to use such trade name, registered trademark, logo, legal or official seal, or copyrighted symbol for such purpose when such permission or authorization has not been obtained …

It was arguable that this statute made it illegal to use an email address other than one’s own name and (important for trademark law purposes) made it illegal to, for example, use a trademark of another company in situations not prohibited by trademark law, such as in comparing products or including links to a corporate or governmental site. This statute was found to likely constitute a violation of the Free Speech clause of the First Amendment because it was not narrowly tailored to avoid prohibiting protected speech and on the grounds that the statute was unconstitutionally vague.(55) The ACLU had also requested the court to find the statute unconstitutional under the commerce clause because the statute was unreasonably interfering with interstate commerce. The ACLU argued that since the internet is international in operation, if every state enacted uncoordinated regulations regarding the internet, it could create a nightmare for internet commerce. The District Court here did not reach that issue here, but in American Library Association, et al. v. George Pataki, in his official capacity as Governor of the State of New York, et al.,(56) a Judge in the U.S. District Court for the Southern District of New York held that a New York State statute regulating the depiction of certain adult content on the internet was unconstitutional under the commerce clause.

ENDNOTES

1         § 45 Lanham Act (15 U.S.C.A. §1127).

2         Once a mark is registered on the principal register it is necessary for the owner to place a statutory notice of registration, such as an “®,” adjacent to the mark whenever used or the owner risks not being entitled to recover profits and damages from any infringer. See § 29 Lanham Act (15 U.S.C.A. §1111). Using a statutory notice of registration on an unregistered mark is illegal.

3         J. Thomas McCarthy, McCarthy on Trademarks §11:15.

4         See §2(e) Lanham Act (15 U.S.C.A. 1052). Descriptive marks, without secondary meaning, may be protected under state law as a trade name. See the discussion on Georgia law below.

5         The “likelihood of confusion” test is discussed below.

6          Anti-dilution laws are discussed below.

7          See §7(c) Lanham Act (15 U.S.C.A. 1057) and §15 Lanham Act (15 U.S.C.A. 1065). In the event a cancellation action is filed because there was a prior actual user operating in a limited geographical area, there is the possibility that the junior user may be able to obtain a concurrent registration for the territory in which such junior user was using the mark first. See § 2(d) Lanham Act 15 U.S.C.A. 1052(d).

8          See McCarthy on Trademarks §16:34. On the other hand, the Patent and Trademark Office appears to only be concerned with which party first established secondary meaning and gives that party the same priority as the first user of an arbitrary or suggestive mark with respect to rights to registration on the principal register. See McCarthy on Trademarks §16:34 at page 16-45. However, as stated above, a court will not enjoin a person or entity from continuing to use a descriptive mark that that person or entity was using prior to another party acquiring rights in the descriptive mark before the mark, as used by the second party, acquired secondary meaning to the same extent previously used.

9          O.C.G.A. §10-1-371. The Georgia Uniform Deceptive Trade Practices Act is discussed below.

10        254 Ga. 734, 334 S.E.2d 308 (1985).

11        See, e.g., Elite Personnel, Inc. v. Elite Personnel Services, Inc., 259 Ga. 192, 378 S.E.2d 117 (1989).

12        There are many other restrictions on registration, such as the use of surnames, that are not being addressed in this article.

13        O.C.G.A. §10-1-450.

14        See O.C.G.A. §§10-1-450 & 451.

15        Dilution is not defined in the Georgia statute but is defined under the federal act as follows:

The term “dilution” means the lessening of a capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of –

(1)        Competition between the owner of the famous mark and the other parties, or

(2)        Likelihood of confusion, mistake, or deception. 45 Lanham Act (15 U.S.C.A. §1127).

16        See, e.g., Giant Mart Corporation v. Giant Discount Foods, Inc., 247 Ga. 775, 279 S.E.2d 683 (1981).

17        See, e.g., Diedrich, supra note 10.

18        See, O.C.G.A. §23-2-55.

19        15 U.S.C.A. 1051 et. seq.

20   See InterNIC registration services on the internet at wysiwyg://7/http://rs.internic.net/index.html).

21        §§ 7(b), 33 Lanham Act (15 U.S.C.A. §§1057(c), 1115).

22        15 U.S.C.A. 1117(b).

23        §35 Lanham Act (15 U.S.C.A. § 1117).

24        § 35(c) Lanham Act (15 U.S.C.A. 35(c)).

25        § 32(1) Lanham Act (15 U.S.C.A. 35(c)).

26        § 29 Lanham Act (15 U.S.C.A. 1111).

27        § 35 Lanham Act (15 U.S.C.A. 1117).

28        716 F2d 833 (11th Cir. 1983).

29        15 U.S.C.A. §1125(c).

30        See, Circuit City Stores, Inc. v. OfficeMax, Inc., 949 F. Supp 409 (E.D. Va. 1996).

31        http://rs.internic.net/internic/index.html.

32        .net was initially to be available only for computers of internet network providers. That rule isn’t being followed and .net is available for commercial use. For a description of each of the current top level domain names and their purposes see ftp://rs.internic.net/rfc/rfc1591.txt.

33        http://http://www.isi.edu/iana/overview.html

34        For an explanation of why the statement is inaccurate, see, e.g., the writer’s later article at http://www.internetlegal.com/articles/governin.htm

35        http://www.isoc.org/

36        http://www.fnc.gov/FNC_charter.html.

37       See Voting Rights of Member Organizations at http://www.iahc.org/gTLD-MoU.html.

38        See, e.g., the complaints in the following cases:

PGP Media, Inc. d/b/a/ Name.Space v. Network Solutions, Inc., U.S. District Court, S.D. NY 97 Civ. 1946 (RPP) which was filed on March 20, 1997 and Image Online Design, Inc., a California corporation v. Internet Assigned Member Authority, et al., Superior and Municipal Court of the State of California for the County of San Luis Obispo, which was also filed in March of 1997. It is interesting that NSI was sued in the New York case. The writer doubts that NSI would wish to promote the POC plans to add 85 to 90 new top level registers and also doubts that NSI has much influence over that proceeding.

39        http://http://www.ntia.doc.gov/ntiahome/domainname/dnsdrft.htm

40        http://rs.internic.net/cgi-bin/whois

41        Interestingly, the NSI policy provisions provide for indemnification and limitations of liability on the part of NSI by any domain name owner; however, individuals reserving domain names generally work through their Internet Service Providers (“ISP’s”) and would rarely read these materials, much less consent to these provisions by entering into a “clickwrap” agreement or otherwise.

42        950 Supp. 737 (E.D. Va. 1997) (January 16, 1997).

43        Computer Currents Publishing Corp., v. Jay Communications, Inc., 98 F.Supp. 684 (1997).

44        947 F.Supp. 1338 (E.D. Mo. 1996) (August 29, 1996).

45        See, WarnerVision Entertainment, Inc. v. Empire of Carolina, Inc., 101 F.3d 259 (1996) (November 27, 1996).

46        40 U.S.P.Q.2d 1836 (N.D. Cal. 1996).

47        40 U.S.P.Q. 2nd 1479 (W.D. Wash).

48        1997 WL 613021 (N.D. Ill.).

49        977 F.Supp. 1407 (C.D. Cal. 1997)

50        1997 West Law 721899 (C.D. Cal.).

51        945 F.Supp. 1296 (C.D. Cal. 1996).

52        947 F.Supp. 1227 (M.D. Ill. 1995).

53        Playboy Enterprises, Inc. v. Calvin Designer Label, Civ. No. C-97-3204 (N.D. Cal., Sept. 8, 1997). It couldn’t have been helpful to the Defendant that, as the court pointed out, the Defendant had no connection with Calvin Klein.

54        See, e.g., Wall Street Journal, September 15, 1997.

55        See American Civil Liberties Union of Georgia, et. al. v. Zell Miller, et. al., 977 F. Supp. 1228 (N.D. Ga. 1997).

56        969 F. Supp. 160 (S.D.N.Y. 1997).

The information above is provided for general educational purposes and not as legal advice. Laws in areas in which we practice change continually and also vary from jurisdiction to jurisdiction. Therefore no visitor to our site should rely on any of the articles provided for legal advice, but should always consult their own attorney regarding legal matters.

© 1998 Rob Hassett, All Rights Reserved.

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About Rob Hassett

Rob Hassett is an attorney in technology, entertainment and corporate law with the law firm of Casey Gilson P.C. in Atlanta, GA. He is a co-author of a leading volume on internet and interactive media law and has taught many classes in the professional education program at Georgia Tech.

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