Thursday, June 08, 2006

General discussion of the Trademark Dilution Revision Act of 2005

In early 2005 the House introduced this bill, Trademark Dilution Revision Act of 2005. Trademark law exists mainly to protect the idea of a brand name of any product or service, in order that companies that sell these may easily advertise and maintain persistency with customers. Trademarks prevent other companies or individuals from intentionally adopting similar marks in the same line of business. Trademarks consist of both “wordmarks” (the names of businesses and products associated with businesses) and trade dress, which can include illustrative logos. Generally, companies in totally different lines of business may use similar names.

Generally, the name of a book or of a movie cannot be trademarked, but the name of a series of books or movies may be. This concept, especially in the movie business, is generally known as a “franchise.” A good example is the Harry Potter series (both the books and movies). Another good example is the “… for Dummies” books. But in the publishing and movies businesses, it is acceptable for individual movies and books to duplicate names already used before (one can see this quickly on imdb.com).

Internet domain names are generally issued to individuals, organizations and companies by registrant companies as long as they are requested in good faith. There have been some problems when some domain names have accidentally, or sometimes intentionally, trampled upon an existing trademark. There obviously issues when someone registers a name mimicking that of a celebrity. ICANN has an administrative arbitration procedure to resolve domain name disputes for low cost, but an important concept is registration and use of a domain name “in good faith”.

In 1996, Congress passed a law targeting entities that deliberate try to tarnish or dilute an existing trademark held by another. In 2005, Congress introduced the bill noted above, to reduce the burden of proof on plaintiff companies that in the past have had to show actual harm to their trademarks; under the new bill, a plaintiff would need to show only the likelihood of future dilution. The most recent activity for this bill that I can find is a Senate Subcommittee and Mark Up hearing on November 3, 2005.

I personally think that it is important to maintain the concept that companies or individuals in different kinds of businesses may use similar wordmarks. I also think that the law should increase the level of consumer awareness required in understanding the meaning of a brand. One should not always look at the lowest common denominator, although publicly held companies often feel a fiduciary responsibility to do just that in pursuing litigation. I would have a concern that a trademark law revision overly indulgent of existing large corporate trademark holders will severely hamper small business, particularly on the Internet.

One possible solution with respect to domain names would be for ICANN to further refine the use of the last TLD node in the domain name. “Dot com” is overused and lazily used, and it could well be that individuals should be encouraged to use a different suffix (.name).

See my letter to Representative Jim Moran in Virginia. This is an ongoing issue, and I welcome comments. Also visit We can stop the big box stores. This site reports that the bill has passed the House of Representatives as of early 2006. It was reported out of a Senate committee favorably on Feb 16 2006 with some revision (substitute wording) that would strengthen "fair use" defenses particularly with non-commercial comment and reporting and probably strengthen the requirements that plaintiffs properly register their marks first. As of 3/1/2006 the Senate had not yet published this bill.

Also, note well: In early 2006, it appears that trademark searching technology has been advancing rapidly. Some ISPs (such as Verio) now offer much more comprehensive trademark research facilities to subscribers (some of them without extra fees) than before. One such service is ActiveIP . NameProtect (SearchSmart), both of which are themselves trademarks and servicemarks. You can learn more at http://www.activeip.com/about.html . These services can do USPTO searches but aslo search internet content, and can also (for fees) do international searches. Again, you can also do reasonable searches at http://www.uspto.gov/ and follow the links; generally the information is current within about a month and is updated most mornings Tue-Sat.

Here is the March 4, 2003 Supreme Court ruling
http://www.supremecourtus.gov/opinions/02pdf/01-1015.pdf “Moseley et al. DBA Victoria’s Little Secret v. Secret Catalogue, Inc., et. al.”

The text of the act is this link: Trademark Dilution Revision Act of 2005

Here is a comment posted from a user (the comment is on a different blog). This is the link.

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