Trademarks in A Digital World

• Jurisdiction: Maryland

XV. TRADEMARKS IN A DIGITAL WORLD

A. Introduction

The Internet's benefits to a trademark attorney are significant because evaluating trademarks includes a degree of espionage in determining how a third party is using a mark and whether one mark is infringing on another. With readily available databases, company websites listing its business activities, and websites providing street level photographs showing the signage at distant facilities, the Internet has provided a treasure trove of information. The Internet has also provided a particularly complex set of dilemmas because of trademark law's concept that marks can coexist in distant territories without infringing on each other. The Internet brings those distant territories together in a way not previously addressed by common law, creating many new situations and issues. This section analyzes many of those issues.

B. Distant Use Creating Common Law Rights

Although the Internet allows a seller to advertise and sell products into a territory distant from its location and a seller's website is available throughout the country, this does not create national common law rights in the mark. Courts more likely will follow a more stringent test that use in commerce exists only where an entity makes a purposeful use in a territory; a website does not afford someone use in a territory merely because an individual viewed a website while sitting in that territory.¹⁸⁶

C. Domain Names as Trademarks

A use of one or more words as a domain name does not necessarily turn that string of words into a trademark, but it could. If a domain name is used purely as the web address, or uniform resource locater (url), and is not otherwise used as a brand, then the domain name has not been used in commerce and is not afforded trademark protection. If, however, the domain name is used as a mark, whether as the heading of the website or in some other way, then the domain name is afforded trademark status. The situation is analogous to how trademark law has been handling street addresses and telephone numbers. If those location devices are used merely as information on where to find the purveyor, then the use is merely informative and not a brand. The moment the information is also then used as a brand, trademark rights exist. The PTO and cases have also found that domain name extensions, such as .com, have no trademark significance (again, unless used as a brand), and are not usable to distinguish one mark from another.¹⁸⁷

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