Trademarks and Cyberspace

• Author: Georgios I. Zekos
• Published date: 01 September 2006
• DOI: http://doi.org/10.1111/j.1422-2213.2006.00301.x
• Date: 01 September 2006

Trademarks and Cyberspace

Georgios I. Zekos

Riga Graduate School of Law

Trademark law aids consumers who use trademarks in the marketplace to identify swiftly and

without problems a product they liked or disliked in the past, distinguishing among the

different competing manufacturers of a product. No one is entitled to sell or deliver

commodities under the appearance that the commodities derive from someone else. The

importance of consumer protection cannot be over-emphasized and the average consumer

standard should remain the central point of the inquiry, even under domain name litigation.

Replacing the initial interest confusion doctrine is one decisive step, along with the

introduction of a doctrine representing the fact that there should be no confusion at the

point the sale, and this doctrine would intervene to allow for the capacity of the consumer to

choose freely the products they want.

Keywords trademarks; cyberspace; generic; domain names

Legal Background

Trademarks have been used to designate the source or origin of products for years

and a trademark is ‘‘any word, name, symbol, or device, or any combination

thereof’’

1

used by a company to identify itself as the source of particular goods and

distinguish its goods from those manufactured or sold by competitors. Section 2 of

the Canadian Trademark Act

2

considers ‘‘trademarks’’ as: (a) a mark that is used by

a person for the purpose of distinguishing or so as to distinguish wares or services

manufactured, sold, leased, hired or performed by him from those manufactured,

sold, leased, hired or performed by others, (b) a certif‌ication mark, (c) a distinguish-

ing guise or (d) a proposed trademark.

Trademark law aids consumers who use trademarks in the marketplace to

identify swiftly and without problems a product they liked or disliked in the past,

distinguishing among the different competing manufacturers of a product.

3

The Lanham Act protects the mark-holder’s investment of time, energy and

money in advertising and selling a quality product under a source-identifying

mark.

4

Canadian trademark law confers upon trademark holders the exclusive

right to use their mark anywhere in Canada.

5

In US trademark law, the trademark

holder does not have the exclusive right to use the mark in all geographic territories.

A trademark can be identif‌ied as a nexus between a specif‌ic mark and a

producer. It has to be taken into account that a manufacturer must not defraud or

mislead the consumer, who, as the end-user of the product in circulation, will

eventually be called upon to interpret and assess this nexus. No one is entitled to sell

or deliver commodities under the appearance that the commodities derive from

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r2006 The Author. Journal Compilation r2006 Blackwell Publishing Ltd496

someone else.

6

It has to be taken into account that it is essential to avoid misleading

consumers and consumers will be inclined to sustain additional expenses in

exchange for assurance that the product being purchased emanates from a

particular source or producer.

7

The consumer has a right to expect a consistent

and uniform level of quality when purchasing goods or services associated with a

specif‌ic trademark originating from a single source.

8

When a producer uses

another’s trademark to deceive the consumer, he or she violates the rights of the

legitimate trademark holder. Trademark law displaces confusion between two

trademarks and so a future trademark that engenders a likelihood of confusion

with a registered trademark may not be registered.

While two non-competing users of a trademark can lawfully register the same

mark, these companies are not able to spot their sites with an identical incorpora-

tion of the mark into a domain name notwithstanding the fact that the two

companies sold dissimilar goods and operated in different countries.

9

Cyberspace

is used in disseminating information, expanding networks and generating commer-

cial opportunities.

10

Cyberspace engenders transboundary disputes over trade-

marks and other aspects of intellectual property.

11

The globalization of communications via the Internet has led to a system where

trademarks and trade names may be used as a method of communication, via

domain names. Thus, domain names may be both address and trademark.

The aim of the analysis is to show the problems caused with the use of

trademarks in cyberspace and any convergence or divergence in the doctrine used

to justify trademark misuse.

Marks as Trademarks

A trademark is ‘‘any word, name, symbol, or device, or any combination thereof’’

that is used in commerce to indicate the source of the goods, even if that source is

unknown.

12

These marks, as registered at the Patent and Trademark Off‌ice (PTO),

merit protection against infringements, unfair competition and dilution. Similarly,

trade names are names used to identify a person’s business or vocation. They are

not registrable as trademarks, but are still entitled to protection against unfair

competition. As the protection offered and the test used is generally the same for

both trademark infringement and unfair competition, the discussion of trademark is

also applicable to trade names, unless indicated otherwise.

A descriptive mark is a word, name, or symbol used to indicate a brand of

merchandise or service describing the qualities or characteristics of the merchandise

or service sold under that mark.

13

The Lanham Act allows applicants to register

marks that are ‘‘distinctive’’ of the applicant’s goods or services in commerce,

including descriptive marks that have ‘‘become distinctive’’.

14

The Lanham Act

grants exclusive rights in distinctive marks and permits broad enforcement of these

rights against domain name registrants, competitors, and others who use the same

descriptive term as a mark to advertise and sell their own goods or services.

15

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The Journal of World Intellectual Property (2006) Vol. 9, no. 5 497

Trademarks and Cyberspace Georgios I. Zekos

United States trademark law protects fanciful marks (‘‘Kodak’’ f‌ilm), arbitrary

marks (‘‘Apple’’ computers), suggestive marks (‘‘Tide’’ laundry detergent) and, if

they have ‘‘become distinctive’’, descriptive marks (‘‘Park ’N Fly’’ long-term

parking lot services near airports).

Descriptive marks do not distinguish the origin or source of a product as well as

a mark that is fanciful, arbitrary or suggestive as descriptive terms retain their

original descriptive meaning.

16

Hence, descriptive terms used as marks do not

automatically or immediately signal a brand (unlike inherently distinctive marks)

because they also function to describe the attributes of the product.

Generic marks (‘‘Shredded Wheat’’ breakfast cereal)—the common name for a

class of products or services—are never considered worthy of trademark protec-

tion,

17

which means that if the key connotation of the term in the minds of the

consuming public is the product, rather than the producer, the mark is not capable

of protection under the trademark laws. Protecting exclusive rights in generic terms

would restrain free expression in the marketplace and damage competition, and so a

company cannot have a monopoly on the use of common words that consumers use

to refer in general to a product.

Trademark law stif‌les the free f‌low of commercial information more than

needed when it protects exclusive rights both in inherently distinctive marks and

descriptive marks. Trademark laws harm speech more than essential when they

grant exclusive rights in marks that are not inherently distinctive. In fact, the

Lanham Act’s fair use defense is limited and does not effectively protect the right of

competitors to describe the attributes of their goods. Owing to extensive advertising

and product sales under distinctive marks, words can identify a single source of, for

instance, photographic equipment (‘‘Kodak’’), computers (‘‘Apple’’) and laundry

detergent (‘‘Tide’’). Trademark law should persuade companies to use inherently

distinctive marks as these marks instantaneously tell a customer that the term refers

to a brand name, not a product attribute.

18

There is a need to protect the capability

of consumers to identify and distinguish among the products of a business and its

competitors; descriptive trademark laws do not directly advance this interest and

are more extensive than necessary.

19

Distinctiveness is a requirement to registration

on the federal principal register and protection of exclusive trademark rights but the

word ‘‘distinctive’’ is not def‌ined anywhere in the Lanham Act.

20

While there is a considerable governmental interest in protecting the capability

of consumers to distinguish the source of a product and differentiate among the

products of a business and its competitors, there is no such interest in granting and

enforcing sole property rights in descriptive words for the reason that this harms

expression without providing any corresponding benef‌it to the public. Descriptive

words are important because they connect information regarding the attributes of a

product and so a f‌irm that has not created this value in a descriptive term should not

gain exclusive rights to utilize the term as a mark, despite any investment of time,

energy or money in advertising or selling the product under that descriptive mark.

Descriptive marks with secondary meaning work both to identify the source and

r2006 The Author. Journal Compilation r2006 Blackwell Publishing Ltd

The Journal of World Intellectual Property (2006) Vol. 9, no. 5

498

Trademarks and CyberspaceGeorgios I. Zekos