NATIONAL INFORMATION INFRASTRUCTURE
C. TRADEMARK
A trademark is quite different from either a copyright or a patent. A trademark is any word, name, symbol or device, or any combination thereof, that serves to identify and distinguish the source of one party's goods or services from those of another party. A service mark is the same as a trademark, except that it identifies and distinguishes the source of services rather than goods. In this report, the terms "trademark" and "mark" are intended to refer to both types of marks.
The purpose of a trademark is twofold -- to identify the source of products or services and to distinguish the trademark owner's goods and services from those of others. As long as a trademark fulfills these functions, it remains valid. Trademark ownership rights in the United States arise through use of a mark. Continued use of a mark is necessary to maintain trademark rights. The owner of a trademark is entitled to the exclusive right to use the mark. This entitlement includes the ability to prevent the use, by unauthorized third parties, of a confusingly similar mark. Marks used by unrelated parties are confusingly similar if, by their use on the same, similar, or related goods or services, the relevant consumer population would think the goods or services come from the same source.
Unlike patent and copyright law, Federal trademark law coexists with state and common-law trademark rights. Therefore, registration at either the Federal or state level is not necessary to create or maintain ownership rights in a mark. For example, priority of trademark rights between owners of confusingly similar marks, regardless of whether the marks are Federally registered, is based upon first use of the mark.[1]
Federal trademark law is embodied in the Lanham Act[2] and is based upon the commerce clause of the Constitution.[3] Therefore, to obtain a Federal trademark registration, in most cases[4] the owner of a mark must demonstrate that the mark is used in a type of commerce that may be regulated by Congress.[5] Additionally, the Trademark Law Reform Act of 1988[6] amended the Lanham Act to establish trademark rights, which vest upon registration following use of the mark in commerce, as of the filing date of a trademark application indicating a bona fide intent to use the mark in commerce.[7]
Goods and services to which a mark applies in a trademark registration are categorized according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977 (International Classification). This treaty, of which the United States is a member, is administered by WIPO. WIPO convenes a meeting of experts, including representatives of the United States, every five years to consider and adopt changes to the International Classification. These meetings will be an important means to effect changes to the International Classification to accommodate the changing goods and services available in connection with the NII and the GII. In preparation for the next meeting of experts, which is likely to take place in late 1995, a working group which includes the United States convened in March 1995 at WIPO to discuss proposals to amend the International Classification.
Remedies against trademark infringement and unfair competition are available to trademark owners under both state and Federal law.[8] In this regard, the owner of a Federal trademark registration has certain benefits. In a court proceeding, registration on the Principal Register constitutes ]prima facie evidence of the registrant's ownership of the mark.[9] Registration on the Principal Register may also be used as a basis to block importation of infringing goods[10] or to obtain remedies against a counterfeiter.[11] The Lanham Act provides that under certain conditions the right to use a registered mark may become incontestable.[12] Additionally, the Lanham Act provides for cancellation of registrations on certain grounds.[13]
Existing legal precedent accepts electronic transmission of data as a service and, thus, as a valid trademark use for the purpose of creating and maintaining a trademark.[14] Additionally, existing legal precedent applies the available remedies for infringement and unfair competition to such acts occurring through the unauthorized use of trademarks electronically.[15] However, in the future, with widespread access to and use of the NII, both the legitimate and infringing electronic uses of trademarks may increase. Unfair competition may increase in the context of the NII to the extent that it may be easier to copy or remove trademarks from electronically transmitted information than from labeled products or from services identified in print media.
In the global context for trademarks, there are likely to be ramifications of global electronic transmission of trademarks in view of the fact that trademark rights are national in scope. Conflicts may arise where the same or similar trademarks are owned by different parties in different countries, or where different countries apply different standards for determining infringement. Additionally, conflicts may arise where terms are in general use in one country, but restricted as either trademarks or geographical indications in another country.
With regard to access to the NII, several conflicts have arisen where trademark owners are aware that third parties have registered Internet domain names that are identical to their trademarks. One of the first opportunities for a court to define the legal relationship between trademarks and the registration and use of site domain names on the Internet could be presented in an action presently in Federal district court in the Southern District of New York. The owners of the MTV cable network ("MTV") have filed an action seeking injunctive relief and monetary damages from a former employee who is offering a daily report about the rock music industry on the Internet using the site name "mtv.com." MTV is alleging, inter alia, trademark infringement and unfair competition.[16] In another instance, Kaplan Educational Centers filed an action alleging trademark infringement and unfair competition against its competitor, Princeton Review, which had registered an Internet domain name of "Kaplan.com." Kaplan reported that an arbitration panel ruled, in an unreported opinion, that Princeton Review must relinquish all rights in the "Kaplan.com" name and transfer it to Kaplan. Other companies noted in the news that have expressed concern recently about third party domain name registration of their well-known trademarks include Coca Cola, McDonald's, MCI and Hertz.
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