Start point

1
Start point

• Company has a website registered in its
  trademarked name Peterbuilttrucks.com. It has
  concern about the risk of sites attacking its
  products as being below standard and about the
  various sites of dealers around the country that
  sell used Peter Built trucks misdirecting
  customers away from its site. What steps, if
  any, can it take to protect itself.
• Sam hates GM motors because of the defective
  truck he bought. Can he publicize his problems
  on Internet?

2
Basic TM tools

• Issue protecting area around a name
• TM infringement
• likelihood of confusion
• Multi-factor test
• First Amendment and descriptive defenses
• ACPA
• Domain name focus
• BF intent to profit
• Dilution
• Least broad and most uncertain
• Famous marks entitled to injunction and damages
  if dilution is intentional

3
Dilution expanded

• Dilution "lessening of the capacity of a famous
  mark to identify and distinguish goods or
  services, regardless of the presence of-- (1)
  competition between the owner of the mark and
  other parties, or (2) likelihood of confusion,
  mistake, or deception. Section 1127
• Tarnish or blurring of the mark, not the
  products
• Others free riding
• Famous see factors

4
Used and resale

• Issue
• Ty case bargainbeanies.com
• Beanie Babies
• No confusion except minor issue
• Disclaimer of affiliation
• Not competing producer
• Dilution?
• Famous
• Note the issue about whether must be national or
  can be local.

5
Dilution and beanies

• Three concerns
• Tiffany illustration
• Restaurant
• There is little danger that the consuming public
  will think it's dealing with a branch of the
  Tiffany jewelry store if it patronizes this
  restaurant. But when consumers next see the
  name "Tiffany" they may think about both the
  restaurant and the jewelry store
• Blurring
• Striptease joint?
• Consumers will not think the striptease joint
  under common ownership with the jewelry store.
  But because of the inveterate tendency of the
  human mind to proceed by association, every time
  they think of the word "Tiffany" their image of
  the fancy jewelry store will be tarnished by the
  association of the word with the strip joint.
• Prevent free-riding. Not articulated in case law
  e.g., not the law!

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This case

• Not producing a distinct , different product
• Selling the same product fair use
• Marketing strategy depends on after market
• Seeks to prevent name from becoming generic
  e.g., thermos will not permit this. Why?
• Social cost and social benefit from losing a mark
  in this manner.
• Extensive litigation

7
Harmful use

• PETA case peta.org Eat animals information
• TM infringe?
• Use in commerce
• Links to over 30 commercial sites
• In connection with goods
• Prevented others obtaining
• Links to sites
• Parody issue? Its confusing, but its a parody
• No simultaneous use first message vs second
  message
• That it is the original and that it is not the
  original

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ACPA Issue? Bad Faith

• (I) no intellectual property right in peta.org
• (II) peta.org is not Doughney's name
• (III) no prior use of peta.org in the bona fide
  offering of goods or services
• (IV) used the PETA Mark in a commercial manner
• (V) "clearly intended to confuse, mislead and
  divert internet users into accessing his web site
  which contained information antithetical and
  therefore harmful to the goodwill represented by
  the PETA Mark"
• (VI) made statements on his web site and in the
  press recommending that PETA attempt to "settle"
  with him and "make him an offer"
• (VII) made false statements when registering the
  domain name nd
• (VIII) registered other domain names that are
  identical or similar to the marks or names of
  other famous people and organizations.

9
Taubman

• Mishkof sites about new mall
• Fan base originally? Shift to critique and
  .sucks site
• Shopsatwillowbend.com
• 1) taubmansucks.com 2) shopsatwillowbendsucks.co
  m 3) theshopsatwillowbendsucks.com etc.
• Defense?
• Is it a commercial use?
• 1st amend? If Mishkoff's use is commercial, then,
  and only then, do we analyze his use for a
  likelihood of confusion. If Mishkoff's use is
  also confusing, then it is misleading commercial
  speech, and outside the First Amendment.
• Not issue of intent
• Minimal links
• Accepted offer to sell

10
Even if

• Under Lanham Act jurisprudence, it is irrelevant
  whether customers would be confused as to the
  origin of the websites, unless there is confusion
  as to the origin of the respective products.
• Disclaimer and link to correct site
• Use of Taubman's mark in "taubmansucks.com" is
  purely an exhibition of Free Speech, and the
  Lanham Act is not invoked.
• Even if commercial, its not confusing
• And although economic damage might be an intended
  effect of Mishkoff's expression, the First
  Amendment protects critical commentary when there
  is no confusion as to source, even when it
  involves the criticism of a business. In fact,
  Taubman concedes that Mishkoff is "free to shout
  'Taubman Sucks!' from the rooftops...." We find
  that the domain name is a type of public
  expression, no different in scope than a
  billboard or a pulpit

11
TMI case

• Maxwell complains about Trendmaker
• www.trendmakerhome.com-- resembled TMI's
  TrendMaker Homes mark.
• Expires, new register trendmakerhome.info
• ACPA claim and dilution claim
• Commercial Use Requirement both statutes?
• Is Maxwells use commercial?
• Mixed use argument
• Admittedly, Maxwell added the Treasure Chest to
  draw more people to his site so that they would
  see his story. This intent does not make his
  site commercial, however. Maxwell never accepted
  payment for a listing on the Treasure Chest, and
  he charged no money for viewing it. Further,
  TMI presented no evidence that Maxwell had any
  intent to ever charge money for using the site.
• Here, the paradigmatic type of harm ACPA
  addresses is not present.

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End Issue

• Company has a website registered in its
  trademarked name Peterbuilttrucks.com. It has
  concern about the risk of sites attacking its
  products as being below standard. What steps, if
  any, can it take to protect itself?
• Sam hates GM motors because of the defective
  truck he bought. How can he publicize his
  problems on Internet?

13
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