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Trademark LawTrademark Law
Ray Everett-Church,ePrivacy Group, Inc.Introduction 448
Trademark Defined 448
Federal Trademark Law 449
Trademark Registration 449
The Differences Between©R,TM, andSM 450
State Statutes and Common Law 450
Infringement and Dilution 451
Infringement 451
Dilution 451
Other Trademark Claims 451
Parody and Fair Use 452
Policing Trademark on the Internet 452
Meta Tags 452Deep Linking 453
Domain Names 453
Domain Name System Basics 454
Domain Name Registration 454
Internet Domain Disputes 455
Cybersquatting 455
Anticybersquatting Consumer Protection Act 455
ICANN Domain Name Dispute Process 456
Conclusion 457
Glossary 457
Cross References 457
References 457INTRODUCTION
Trademark law is a fascinating subject for many people, in
part because most everybody in our society understands
and appreciates the power of popular trademarks, such
as Lexus, Pokemon, Safeway, and Yahoo! Trademarks are
such an integral part of our language and culture that
we all have a vested interest in their protection. Because
trademarks are all about meaning, trademark disputes are
a kind of spectator sport: They involve popular cultural
icons and turn on questions such as whether the average
person is likely to be confused if a trademark is used im-
properly. So in many respects, everybody gets to have an
opinion on trademark issues, and that opinion more of-
ten than not counts for something in the final calculus of
trademark disputes.
In this chapter, I discuss the fundamental ideas that
underlie the protection of trademarks and look at ways in
which trademarks can be infringed and protected. Once
that groundwork has been laid, I then look at how these
fundamentals have been to be applied to the unique and
significant disputes that have arisen in the Internet con-
text. In many respects, trademark law has been turned up-
side down the Internet, so I describe how the principles
of trademark law are being applied in today’s Internet-
oriented business environment.TRADEMARK DEFINED
Merriam-Webster’s Dictionary of Lawdefinestrademarkas
“a mark that is used by a manufacturer or merchant to
identify the origin or ownership of goods and to distin-
guish them from others and the use of which is protected
by law.”
In practice, a trademark is any word (Sun), name
(Calvin Klein), symbol (golden arches), device (the Ener-
gizer Bunny), slogan (“Fly the Friendly Skies”), package
design (Coca-Cola bottle), colors (FedEx purple and or-
ange), sounds (the five-tone Intel Corporation sound), orany combination thereof that identifies and distinguishes
a specific product or service from others in the market-
place.
As trademark law has evolved, the field has become
an important subset of the larger category known as
intellectual propertylaw. As the name implies, intellectual
property law (which also includes patent, copyright, and
trade secret law) treats these rights as a kind of property
right, protecting the rights of owners to exploit the prop-
erty for their own benefit while prohibiting unauthorized
use by others. Unlike real estate or personal property law,
intellectual property law concerns ownership of intangi-
ble things such as ideas, words, and meanings, rather than
physical things.
The legal protections afforded by trademark law also
extend to the related concepts ofservice marksandtrade
dress.Service marks differ from trademarks in that they
are marks used to identify a particular service or to dis-
tinguish the provider of a service, rather than a tangible
product. For example, the name of a consulting firm, or
the name of a proprietary analytical process used by that
consulting firm, might be more properly identified as a
service mark. Trade dress is the overall image of a prod-
uct, composed of the nonfunctional elements of its design,
packaging, or labeling. This could include specific colors
or color combinations, a distinctive package shape, or spe-
cific symbols or design elements.
Many people confuse trademark with copyright. Copy-
right is a person’s exclusive right to benefit from the repro-
duction or adaptation of an original work of authorship,
such as a literary, artistic, or musical work. Trademark
differs from copyright in that trademark law does not
prohibit the reproduction or adaptation of the creative
products of an author. Rather trademark law seeks to pre-
vent confusion over words or other characteristics used to
identify uniquely the source or quality of a product or ser-
vice. For example, Paul Simon’s 1973 song “Kodachrome”
refers to a trademark owned by Eastman Kodak Company
even though Simon holds the copyright on his work.448