Monday, January 07, 2008

"Ordinary people," domain names and commercial trademarks or wordmarks

When people started getting their own Internet domains in the mid to late 1990s, the main issue that people looked for was whether the name was “taken.” Even when it was, they could often use the root with a different TLD. There were supposed to be some rules about .org and .edu and others, and these weren’t always followed. In time, many more TLD’s appeared (with .tv being very popular for a while). Because “dot com” was so popular, the original intention to use it for business was lost, so that “dot biz” had to be invented.

The new trademark dilution law (discussed in this blog and passed in Oct. 2006) would seem capable of raising questions about the practice of individuals using catchy names for domains in order to be remembered and noticed. I did this with my domain in 1999, which is based on the title of my 1997 book. I had originally promoted the book with a domain called (for “High Productivity Publishing”) and used only one domain when I set it up in 1997. At the time, expected conventions for domain names were not as well established or understood.

If a domain is strictly non-commercial and offers nothing for sale, but rather exists for political or social commentary, the new law, as I read it, still seems to offer some protection and defense. I talked about this with some entries on this blog last summer. A question could come up, however, if a domain links to a major e-commerce site (amazon, which I do) to make the sales. Logically, the site is promoting commerce, potentially for profit or at least revenue. Perhaps that could weaken a defense claim. Non-profit organizations can still be concerned about this problem, because many non-profit organizations sell things for revenue. For example. Blue Cross and Blue Shield plans are very much commercial enterprises, even if technically they are “not for profit” and they all jealousy guard their own trademarks and “brands” just as do conventionally financed public companies. A more relevant point may be that it’s supposed to be acceptable for companies in different categories to reserve the same names as wordmarks, but often these have been challenged anyway.

Another issue is, of course, the well known problem of parked domains and poaching; other companies take out names that are misspellings of famous names and post link farm entries for easy revenue. Trademark owners will probably have the right to shut these down, but usually don’t bother. McAfee Site Advisor catches these and flags them (with a yellow rating) as deliberate link farms.

Still another issue is synonymous names. People have been blocked from using their own names as domains when they match the name of a more “famous” person or company.

Even so, it doesn’t seem to be a problem always for different entities to use the same domain root with a different tld. Try “brainbox” with both .com and .tv .

A trademark connotes a “brand”, which is supposed to be a consumer’s “key” to understanding what a company (or sometimes even an advocacy organization like MADD) stands for. In a sense, a trademark is an “anti-intellectual” concept that relieves the consumer of some homework, even as the notion is well established in common and statutory law. Public companies defend their brand marks aggressively because they believe that they have a fiduciary responsibility to their shareholders to do so.

A potential factor in trademark litigation between entities of vastly different financial resources (to afford lawyers) could be who started using the wordmark in public first, and whether a non-commercial or “less commercial” entity has become known. A possible factor could even be whether it has a Wikipedia entry or whether Wikipedia would view it as meeting notability standards. Generally, notability requires some evidence of financial success or some accomplishment in the form of recognizable industry recognition. Companies with established financial stakes in a name will argue that jobs and benefits of employees depend on it, and than financial success is an important consideration in evaluating “fame” or notability. Legally, it may all be pretty murky.

Parties can always research a particular mark by going to the US Patent and Trademark Office website and clicking on “Search TM database TESS” (Trademark Electronic Search System). The “Free Form Search (Advanced Search)” is probably the best one. The visitor should check the most recent paper and electronic filing updates. The electronic date will be more recent. The website will warn the visitor that results are not conclusive, although in practice the site is quite reliable and up-to-date. Workmark conflicts may occur with names that do not appear at the beginning of a search string ,like the “for Dummies” book series – that’s a good search to try .

So will individuals be able to use cute and easy-to-remember domain names in the future as easily as in the past, or will this cause trademark difficulties with well-established financial and commercial interests? It still seems too early to say. So far, there have not yet been a lot of problems since the new law passed, as far as one can tell.