1 Priority may also be established by the filing date of a Federal registration based upon an intent to use a mark (15 U.S.C. § 1051(b) (1988)) or a foreign filing (15 U.S.C. § 1126 (1988)).

2 15 U.S.C. § 1051 et seq. (1988 & Supp. V 1993). The Lanham Act, as amended, forms Chapter 22 of Title 15 of the U.S. Code.

3 The first Federal trademark law in the United States was found unconstitutional because it was premised on the patent clause of the Constitution.

4 Certain foreign-based applications may register without a showing of use in commerce. 15 U.S.C. § 1126(e) (1988).

5 15 U.S.C. § 1127 (1988 & Supp. V 1993). "The word 'commerce' means all commerce which may lawfully be regulated by Congress." This includes interstate commerce, commerce between the United States and a foreign country, and territorial commerce.

6 Pub. L. 100-667, 1988 U.S.C.C.A.N. (102 Stat.) 3935.

7 15 U.S.C. § 1051(b) (1988).

8 See 15 U.S.C. §§ 1114 - 1121, 1125(a) (1988 & Supp. V 1993) for relevant Federal law provisions. State and common law unfair competition provisions include such torts as passing off and dilution.

9 15 U.S.C. § 1057(b) (1988).

10 15 U.S.C. § 1124 (1988).

11 15 U.S.C. § 1116(d) (1988); 18 U.S.C. § 2320 (1988).

12 15 U.S.C. § 1065 (1988).

13 15 U.S.C. § 1064 (1988).

14 See In re Metriplex Inc., 23 U.S.P.Q.2d 1315 (TTAB 1992), where the PTO's Trademark Trial and Appeal Board authorized registration of a mark identifying "data transmission services accessed via computer terminal" and accepted, as evidence of use of the mark, a print-out of the mark as it appeared on the computer screen during transmission.

15 In the case of Playboy Enterprises Inc. v. Frena, supra note 386, the operator of a subscription computer bulletin board system (Frena) transmitted as part of its bulletin board system photographs owned by Playboy Enterprises Inc. (PEI). PEI's trademarks were obliterated on some photographs transmitted by Frena and PEI's "Playboy" and "Playmate" marks appeared on other photographs transmitted by Frena. These transmissions were without authorization from PEI. The court found, in part, that Frena infringed PEI's registered trademarks when it used PEI's "Playboy" and "Playmate" marks in unauthorized transmissions of PEI's photographs as part of its computer bulletin board system. The court also found Frena to have committed acts of unfair competition, in violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a) (Supp. V 1993)), both by obliterating PEI trademarks from photographs and by placing its own advertisement on PEI photographs. Such acts made it appear as if PEI authorized Frena's use of the images on the bulletin board; see also Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium Ass'n, 693 F. Supp. 1080 (S.D. Fla. 1988), modified, 881 F.2d 983 (11th Cir. 1989), remanded, 895 F.2d 711 (1990), in which the court found that interception of cable television programming broadcast via satellite which appropriates trademarks and trade names in a manner likely to cause confusion is unfair competition in violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a) (Supp. V 1993)). See also Pacific & Southern Co. Inc. v. Satellite Broadcast Networks Inc., 694 F. Supp. 1575 (N.D. Ga. 1988).

In California, a U.S. District Court has entered a preliminary injunction against the owner of a computer bulletin board system based upon claims of copyright and trademark infringement and unfair competition. In Sega Enterprises Ltd. v. MAPHIA, supra note 388, Sega demonstrated that the bulletin board system knowingly solicited the uploading and downloading of unauthorized copies of Sega's video games, and that whenever such a copy is played, Sega's trademark appears on the screen. Further, Sega's trademark appeared, with the BBS operator's knowledge, on file descriptors on the bulletin board. With regard to the trademark and unfair competition claims, the court concluded that there is support for the conclusion that the transferred games are counterfeit under the Lanham Act, and that confusion, if not on the part of the bulletin board users, is inevitable on the part of third parties who may see the copied games after they enter the stream of commerce.

16 To send and receive information on the Internet, various organizations connected to the Internet must register their domains, networks and autonomous systems numbers with Network Solutions, part of the Internet National Information Center (InterNIC). The InterNIC performs this function under a cooperative agreement with the National Science Foundation. Within the context of a prescribed format, the Internet user may register any domain name as long as the identical domain name has not been previously registered with the InterNIC by another party. According to the InterNIC, there is no state or Federal statutory or regulatory authority under which the InterNIC performs this registration function. The InterNIC does not conduct an examination of trademark or other records before registering a domain name. However, the applicant is required to follow a policy relating to assumption of responsibility and to potential conflict resolution. The InterNIC policy is available at URL http://rs.internic.net.

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Posted on 10/5/95
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