Is a parked page considered "commercial use" under US Trademark law?

[Theo]

Enrico, thanks for the valuable info. Would the same benefits be acquired via the registration of a state mark, versus a federal one?

 

[EnricoSchaefer]

Perhaps. State filing is not nearly as strong. I have not researched, or seen, any UDRP decisions which discuss state trademark filings. My belief is that they might falls just below foreign registrations which do not include an examination or review process. But even a state filling might improve your protection. Anything that shows legitimate use is moving the ball in the right direction. It certainly would not hurt.

 

[steveatvillas]

I couldn't agree more with everything above. Those of you who know me, know I sold a very nice domain a few weeks ago, along with it's trademark. The mark certainly put the polish on the apple and gave the new buyer a huge barrier to entry, and it added value. As I told their lawyer: "Now instead of receiving C & D letters, you'll be sending them!" A joke, as I know C & D's are not funny, and I've received a few...but always prevailed amicably.

Maybe it's because of my background prior to becoming a career domain developer, but I take the effort to trademark all my important business stuff, not only domains. Is it expensive? Not really when one considers that a mark is for 10 years, and you can renew it for another 10 years, forever.

I do my own Trademark stuff, and have about 50. But if you're new to this arena, absolutely use an agent or a lawyer!!! While it is a cut and dried procedure, on small slip and you go back to zero and start over again. Or you get into a negotiation with the examining body. So go with a professional. And don't go wild by trademarking everything in your existence. A main conceptual framework of Trademark law is: use it or lose it. You can't warehouse a trademark like you can with domain names. If you do, some one slicker than you can actually prove abandonment through non-use. And you have to be vigilant (ruthless?), and defend it, within reason. Otherwise, it can be considered non-exclusive.

As to state versus national, in the USA, go national. State marks have no force and effect when going for a Trademark Sunrise Application when a new TLD is launched. And I'd agree with Enrico, I've never seen a UDRP case with a state mark. IMHO, they're a waste of time and money, especially when we're talking Internet intellectual property; and National trumps State...it's part of the hierarchy of law in the USA. The exception is if State predates National, in the state of infringement.

Another misconception that I see time and time again on the forums, is that every domainer thinks that USPTO is the center of the universe. It's not. A national mark from the majority of countries in the world is equally viable, thanks to a series of "conventions" agreed by a majority of nations on the planet (research the Madrid Protocol and Agreements). For example, here in Europe, I go for the Community TradeMark (CTM) which affords me protection in 27 countries with one application. Careful, though. If your mark post dates another in any one of the 27 countries, back to zero and you have to register in each of the other countries one-by-one.

Fun stuff, and I think every serious internet Professional can no longer afford to ignore this cornerstone of Intellectual Property. And I guarantee it will change your perspective.

 

[Theo]

Having a state mark makes it easier to get a federal mark though; and getting a state mark is extremely easy (and cheap). Therefore, I would not exclude this option as a strategy of acquiring marks. By the way, federal marks are issued for 7 years before they get renewed for 10.

 

[steveatvillas]

Having a state mark makes it easier to get a federal mark though; and getting a state mark is extremely easy (and cheap). Therefore, I would not exclude this option as a strategy of acquiring marks. By the way, federal marks are issued for 7 years before they get renewed for 10.

Well, all I can say to the State mark is, "whatever". We each have our own strategies, and I personally prefer a mark of National status, in that I approach IP from a global perspective. Kinda hard to enforce a website's IP across state lines.

As to 7 years, not quite, but I take your point. Here's the deal, from USPTO:

How long does a trademark registration last?

For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.

The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.

Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term.

This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.

By international convention, all marks have a 10-year reg period.

 

[allroundguy]

It should also be remembered that TM decisions depend upon people, who may accept or reject an application.
Their are a Trial and Appeal Board that can modify certain things.
Thumb rule: Who proves to operate an activity under a name/mark is automatically protected because of TM by usage.
Here is what USPTO says about that: http://www.uspto.gov/web/offices/tac/doc/basic/register.htm
The point is that people can get a registration for their mark, but that somebody else can prove later that the mark was already unregistered in legitimate use.

 

[tldrental]

Well in my experience, the lawyers for Paramount Pictures seem to think by me parking PARAMOUNTPICTURESBLURAY.COM with Parked.com was a conflict of interest because I was earning money and soiling there brand, as well as misleading people that I was Paramount Pictures. they make reference of me profiting from the site and thats a no..no!

I don't know what any of this means, but I just gave it up to them, why fight it?

I also dont know if this helps you. hope it does!



Re: PARAMOUNTPICTURESBLURAY.COM Domain Name

Dear Mr. Giammarinaro:

This letter is being written to you on behalf of our client, Paramount Pictures Corporation (“Paramount”). Paramount is the exclusive owner of all trademark and other intellectual property rights in and to the PARAMOUNT PICTURES trademark (the “Trademark”). Paramount and its affiliated companies own trademark registrations for the Trademark. Paramount uses the Trademark in connection with its promotion of various merchandise and services, including pre-recorded motion pictures, television series and made-for-television motion pictures, and this mark has become firmly associated with Paramount in the minds of the public.
It has come to our attention that you and your company have registered and are advertising, using, offering for sale, and/or engaging in services connected with the PARAMOUNTPICTURESBLURAY.COM Internet domain name (the “Infringing Domain Name”).

Paramount contends that your registration, use, and exploitation of the Infringing Domain Name constitute trademark infringement and unfair competition in violation of trademark law. Consumers who become aware of your domain name may erroneously believe that your services and/or online activities are licensed, sponsored, or authorized by Paramount. Paramount considers such consumer confusion to be extremely damaging. In addition, the Infringing Domain Name dilutes the distinctiveness of the Trademark by trading on the goodwill and reputation that the public associates with that trademark. Moreover, by placing sponsored search listings on the website at the Infringing Domain Name, you are monetizing and profiting from the consumer confusion you have created.​

​

In order to specifically address this kind of domain name infringement, the Anticybersquatting Consumer Protection Act, which provides for civil sanctions against those who engage in the bad faith registration or use of infringing domain names, provides statutory damages of no less than $1,000.00 and up to $100,000.00 per infringing domain name. 15 U.S.C. § 1125(d).​

​

In addition to your potential liability under the Anticybersquatting Act, numerous​

courts have restrained individuals from the use of infringing and diluting domain names, and ordered the deletion and/or transfer of the domain names. See e.g., Jews for Jesus v. Brodsky, 993 F. Supp. 282, 293 (E.D.N.J), aff’d, 159 F.3d 1351 (3d Cir. 1998); Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998); Playboy Enter., Inc. v. Calvin Designer Label, 985 F. Supp. 1221, 1219 (N.D. Cal. 1997); Teletech Customer Care Management (California), Inc. v. Teletech Communications, Inc., 977 F. Supp. 1407, 1415 (C.D. Cal. 1997); Toys “R” Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836, 1840 (N.D. Cal. 1996); Fujisankei Communications, Int’l v. Claxton, 1998 U.S. Dist. LEXIS 1790 * 2 (S.D.N.Y. 1998); Toys “R” US, Inc. v. Abir, 45 U.S.P.Q.2d (BNA) 1944, 1949 (S.D.N.Y. 1997); Planned Parenthood Fed’n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430, 1441 (S.D.N.Y. 1997), aff’d, 1998 U.S. App. LEXIS 22179 (2d Cir.), cert. denied, 119 S. Ct. 90, (1998); Green Prods. Co. v. Independence Corn By-Prods. Co., 992 F.Supp.1070, 1080 (N.D. Iowa 1997); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q.2d (BNA)1479, 1480 (W.D. Wash 1996).

Further, your conduct violates the provisions of ICANN’s Uniform Dispute Resolution policy, and would likely be found to constitute bad faith by an arbitration board authorized by ICANN. See e.g., DreamWorks L.L.C. v. Grantics, ICANN Case No. D2000-1269 (WIPO Dec. 2000) (ordering transfer of baggervance.com).

​

Through receipt of this letter, you have actual notice that your actions constitute​

cybersquatting, trademark dilution, trademark infringement, and unfair competition. Based on your trademark infringement and unfair competition, Paramount is entitled to treble damages and attorneys' fees under 15 U.S.C. § 1117. See Cardservice Int'l, Inc. v. McGee, 950 F.Supp. 737 (E.D. Vir. 1997). Based on your cybersquatting, Paramount is also entitled to $100,000.00 for each of your infringing domain names under 15 U.S.C. § 1125(d). See, e.g., Graduate Management Admission Council v. Raju, [FONT=&quot]267 F.Supp.2d 505, [/FONT](E.D. Vir. 2003) (awarding $100,000 per infringing domain name); Pinehurst, Inc. v. Wick, 256 F.Supp.2d 424 (M.C.N.C. 2003) (awarding $100,000 per infringing domain name).​

As this matter is of serious concern to Paramount, we anticipate your immediate response to our request that you agree to the following:

(1)[FONT=&quot] [/FONT]cease registering domain names which infringe the above-described rights of Paramount, and

(2)[FONT=&quot] [/FONT]transfer the Infringing Domain Name to Paramount.

Should you fail to comply with this letter, we will be forced to recommend that Paramount immediately take further legal action.

This letter is not a complete statement of Paramount’s rights in connection with this matter, and nothing contained herein constitutes an express or implied waiver of any rights, remedies or defenses of Paramount in connection with this matter, all of which are expressly reserved.

​

Very truly yours,

/s/

 

[steveatvillas]

The point is that people can get a registration for their mark, but that somebody else can prove later that the mark was already unregistered in legitimate use.

Well, this is certainly true for a trademark ™, however you have to take it a bit further when talking about a registered trademark, "®".

If you look back to John Berryhill's post on this thread, you'll see that he has presented the full text of a trademark he prosecuted for his client. There, you'll see a notation "Published for opposition" with a date. After a trademark examiner has done his/her duty in researching all possible potential infringements, and you clear this hurdle (perhaps with modifications) your mark application is published in a bulletin for the public. This is the manner in which constructive notice is given to the world that you intend to register your mark. It's the legal equivalent of "speak now or forever hold your peace."

If, during the opposition period, no one comes forward and makes a counter claim against your application, with due cause and bona-fide proof, the mark application proceeds. And, the burden of proof is on the claimant, not you. I have opposed the application of a conflicting mark before, and prevailed, but only with respect to that mark's overlapping in one Class. That is, we both had the same or confusing similar mark in one of many Classes that we each had. The other guy's mark was finally approved, but not in my Class.

The whole purpose of publishing for opposition in a public bulletin is to flush out any other possible conflicting marks. If no one opposes, you are one step closer to getting Registered protection, and once the opposition period closes, that's that. Again, this is the legal equivalent of "If you snooze, you lose!"

It takes a great deal of vigilance to protect one's Registered Trademark, and here's another rub--discussed before--if you don't protect your mark, you may very well lose it! It's also why folks like Paramount have an army of lawyers looking out for their interests.

But, hey, if you have the time, you can play along side the big fish by the same rules and be just as vigilant and effective; in this respect the Trademark procedure is a level playing field.

The C & D letter that TLDRental actually gives credence to the original point of this thread: a Parked/Monetized domain is recognized as "commercial-use-in-commerce"! Paramount sure thought so, and so did the framers of the ACPA!

This is great news! But sorry about your C & D, mate.

 

[jberryhill]

I have not researched, or seen, any UDRP decisions which discuss state trademark filings.

One way...

http://domains.adrforum.com/domains/decisions/125751.htm


Complainant is Wake Forest University, Winston-Salem, NC (“Complainant”) represented by John Berryhill. Respondent is Jerry D. Needham, Kernersville, NC (“Respondent”).

<...>

Respondent obtained a North Carolina State Trademark Registration for WFUBMC under the pretense of using it as an acronym for a “Web Forum for Unaffiliated Business Management Consultants”. This may be disregarded as a mere fig leaf, when one considers the collection of domain names which Respondent has accumulated. An applicant for a valid trademark in North Carolina must certify that the mark does not conflict with the rights of other parties. Respondent, located in nearby Kernersville, North Carolina, was aware of the operation of the Wake Forest University Baptist Medical Center and its use of the WFUBMC mark prior to his application for his state trademark registration. It is not credible that Respondent would have coincidentally happened upon such a distinctive sequence of six letters without knowledge of Complainant’s use of WFUBMC to identify its services. It is even more incredible that Respondent would also coincidentally happen to register another domain name consisting of WFUHS for legitimate purposes.

<...>

The Panel concludes that the trademark registration and the <wfubmc.net> and <wfubmc.org> registrations were designed to bolster, if possible, Respondent’s position in any dispute or negotiations with Complainant.

<...>

the Panel directs that the domain names <wfubmc.com>, <wfubmc.net>, <wfubmc.org> and <wfuhs.com> be TRANSFERRED to Complainant.


...or the other:

http://domains.adrforum.com/domains/decisions/281591.htm


Complainant is Angstrom Corporation (“Complainant”), represented by Dean Boland, 3723 Pearl Road, Cleveland, OH 44109. Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill

<...>

Complainant presents a document issued by the State of Ohio granting a trademark in the term SMARTGAUGE in the year 1997. State registrations have been found to be sufficient to show rights under this Paragraph. See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding that complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials). See also Quality Custom Cabinetry, Inc. v. Cabin wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that complainant’s trademark registration in Pennsylvania and New Jersey operated as evidence that complainant had sufficient standing to bring a claim under the UDRP). The state registration in Ohio is found, in this case, to be sufficient to show “rights” in the mark so as to permit Complainant to proceed.

<...>

Complainant offers no evidence that Respondent had actual or constructive knowledge of Complainant’s mark at the time of registration. Complainant’s registration was notice in the State of Ohio. Respondent is not a resident of Ohio.

<...>

the Panel concludes that relief shall be DENIED.

 

[allroundguy]

Hello all.

I need an answer to a very specific issue that has been brought to my attention...

Under Federal US Trademark Law (NOT UDRP) is a monetized/parked domain considered use in commerce?

I am told that current case law does not support this interpretation, even though it seems counter-intuitive to me.

I've read through the appropriate sections of the Lanham Act that define commercial use, but I can't find any citations or further info that directly apply to monetized/parked domains. I think I need to look at how the courts are interpreting monetization/parking.

If anyone can steer me in the right direction to find some precedents or refinements to the code IN RE this, I would be most grateful.

Again, to be clear, I'm interested in a definition/interpretation of the US Trademark Law as to what constitutes "use in commerce", not UDRP panels' decisions.

Thanks in advance,

Steve

----------------------------------------------------------------------
If a domain points to a document that is intended to generate revenue, then it is a commercial activity.
This is what USPTO says:

***Start***

What is "use in commerce"?

For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

If you have already started using the mark in commerce, you may file based on that use. A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.
***End***

Here is the link:
http://www.uspto.gov/web/offices/tac/doc/basic/