The process of giving out domain names is not the only place where trademark law intersects with the Internet - nor even, for most users (who will never try to acquire their own domain name) the most important one. We all use trademarks all the time, if only in our discussions with others about goods or services we have used or thought about using. How can you know whether or not you are infringing anyone else's trademark?
The first rule of thumb is the easiest: if you're not trying to associate a name with some goods or services that *you* are offering to the public, you're almost certainly OK. You can participate in a discussion group about the pros and cons of Netscape (and use the Netscape trademarked name to your heart's content), you can put up a Web page discussing "The Ten Things I Love (or Hate) About Pizza Hut" and nobody can claim that you are infringing Pizza Hut's trademark. Remember that the touchstone of trademark infringement is consumer confusion about the origin or source of goods or services to ensure that consumers do not go to another pizza restaurant ("Pizza House") thinking that they are going to Pizza Hut. In other words, as long as you do not try to attach a trademark that is already in use to some *other* goods or services (thereby deceiving or confusing potential consumers), you are generally safe.
But what if you are offering goods and services over the Internet and you want to use a particular word, or phrase, or symbol to identify *your* stuff? Here you do have to think a little bit. Obviously, if you know of some other business that is using the same or a similar mark, and unless you are *quite* sure that the other business is operating in a market that is *very* different from the one you're planning to operate in, your best course of action is probably to think of another identifier. Discretion being the better part of valor and all that.
But can you ever know for certain whether there is trademark being used somewhere out there that is the same as the one you have chosen? The fact is, you can't. In the US, there are a number of commercial firms that will perform a search of the US Patent and Trademark Office's Trademark Register for you (and wouldn't it be nice if we could all persuade the Patent and Trademark Office to put this database online for us all to use?). That may well be worth doing if you are serious about the use of a mark for a business venture you're engaged in. But bear in mind that even that is not foolproof insurance against an infringement claim, for two reasons. First, as we saw earlier, trademark rights in the US are based on *use*, not registration; someone may own a protectable trademark without ever having registered the trademark.
Second, what about marks that are in use and possibly registered in countries other than the US? Might some, say, Brazilian company see your logo on the Web and complain that your use conflicts with its trademark registered in Brazil?
Here, we have to admit, we're on uncertain ground. Every country does indeed have its own trademark system, and the general rule is that each country's trademarks will be enforced within that country's boundaries. So we know, for example, that if your mark conflicts with an existing Brazilian mark, you can't send your goods into Brazil bearing that mark. The problem, of course, is that the global nature of the Internet makes it difficult to apply this simple rule; are you "sending your goods into Brazil" when you put up a Web page on a server in Kansas - a server that is, of course, accessible by people in Brazil?
An interesting and important question - but one that, in these early days of the Net, has not yet been resolved.
authors:
| Larry Lessig | David Post | Eugene Volokh |
Copyright © 1999 Social Science Electronic Publishing, Inc. All Rights Reserved