PHILIPPINE CASES —In Dermaline, Inc. v. Myra Pharmaceuticals, Inc.
, 628 SCRA 356 (2010), we
Registration – Dominancy Test
1. UFC Philippines, Inc. (now merged with Nutri-Asia, Inc. as the surviving
entity) vs. Barrio Fiesta Manufacturing Corporation 781 SCRA 424 , January
20, 2016
1. Same; Same; Same; The Bureau of Legal Affairs of the Intellectual
Property Office (IPO-BLA) and the IPO Director General correctly found the
word “PAPA” as the dominant feature of petitioner’s mark “PAPA
KETSARAP.”-
—A scrutiny of petitioner’s and respondent’s respective marks would show
that the IPO-BLA and the IPO Director General correctly found the word
“PAPA” as the dominant feature of petitioner’s mark “PAPA KETSARAP.”
Contrary to respondent’s contention, “KETSARAP” cannot be the dominant
feature of the mark as it is merely descriptive of the product. Furthermore,
it is the “PAPA” mark that has been in commercial use for decades and has
established awareness and goodwill among consumers. We likewise agree
with the IPO-BLA that the word “PAPA” is also the dominant feature of
respondent’s “PAPA BOY & DEVICE” mark subject of the application, such
that “the word ‘PAPA’ is written on top of and before the other words such
that it is the first word/figure that catches the eyes.” Furthermore, as the
IPO Director General put it, the part of respondent’s mark which appears
prominently to the eyes and ears is the phrase “PAPA BOY” and that is what
a purchaser of respondent’s product would immediately recall, not the
smiling hog.
2. Mercantile Law; Intellectual Properties; Trademarks; Words and Phrases;
In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., 628 SCRA 356 (2010), the
Supreme Court (SC) defined a trademark as “any distinctive word, name,
symbol, emblem, sign, or device, or any combination thereof, adopted and
used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others.”-
defined a trademark as “any distinctive word, name, symbol, emblem, sign,
or device, or any combination thereof, adopted and used by a manufacturer
or merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by others.” We held that a trademark is “an
intellectual property deserving protection by law.”
3. Same; Same; Same; In trademark controversies, each case must be
scrutinized according to its peculiar circumstances, such that jurisprudential
precedents should only be made to apply if they are specifically in point.-
—In trademark controversies, each case must be scrutinized according to its
peculiar circumstances, such that jurisprudential precedents should only be
made to apply if they are specifically in point. The cases discussed below are
mentioned only for purposes of lifting the applicable doctrines, laws, and
concepts, but not for their factual circumstances, because of the uniqueness
of each case in controversies such as this one.
4. Same; Same; Same; There are two (2) tests used in jurisprudence to
determine likelihood of confusion, namely the dominancy test used by the
Intellectual Property Office (IPO), and the holistic test adopted by the Court
of Appeals (CA).-
—There are two tests used in jurisprudence to determine likelihood of
confusion, namely the dominancy test used by the IPO, and the holistic test
adopted by the Court of Appeals.
Confusingly similar
2. Dy vs. Koninklijke Philips Electronics, N.V. 821 SCRA 241 , March 22,
2017
1. Same; Same; Same; Same; Dominancy Test; Applying the dominancy test
to this case requires us to look only at the mark submitted by petitioner in
its application, while we give importance to the aural and visual impressions
the mark is likely to create in the minds of the buyers; In using the holistic
test, we find that there is a confusing similarity between the registered
marks PHILIPS and PHILITES, and note that the mark petitioner seeks to
register is vastly different from that which it actually uses in the packaging
of its products.-
—Applying the dominancy test to this case requires us to look only at the
mark submitted by petitioner in its application, while we give importance to
the aural and visual impressions the mark is likely to create in the minds of
the buyers. We agree with the findings of the CA that the mark “PHILITES”
bears an uncanny resemblance or confusing similarity with respondent’s
mark “PHILIPS,” to wit: Applying the dominancy test in the instant case, it
shows the uncanny resemblance or confusing similarity between the
trademark applied for by respondent with that of petitioner’s registered
trademark. An examination of the trademarks shows that their dominant or
prevalent feature is the five-letter “PHILI,” “PHILIPS” for petitioner, and
“PHILITES” for respondent. The marks are confusingly similar with each
other such that an ordinary purchaser can conclude an association or
relation between the marks. The consuming public does not have the luxury
of time to ruminate the phonetic sounds of the trademarks, to find out
which one has a short or long vowel sound. At bottom, the letters “PHILI”
visually catch the attention of the consuming public and the use of
respondent’s trademark will likely deceive or cause confusion. Most
importantly, both trademarks are used in the sale of the same goods, which
are light bulbs. The confusing similarity becomes even more prominent
when we examine the entirety of the marks used by petitioner and
respondent, including the way the products are packaged. In using the
holistic test, we find that there is a confusing similarity between the
registered marks PHILIPS and PHILITES, and note that the mark petitioner
seeks to register is vastly different from that which it actually uses in the
packaging of its products.
2. Mercantile Law; Intellectual Properties; Trademarks; Words and Phrases;
A trademark is “any distinctive word, name, symbol, emblem, sign, or
device, or any combination thereof, adopted and used by a manufacturer or
merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by others.”-
—A trademark is “any distinctive word, name, symbol, emblem, sign, or
device, or any combination thereof, adopted and used by a manufacturer or
merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by others.” It is “intellectual property deserving
protection by law,” and “susceptible to registration if it is crafted fancifully
or arbitrarily and is capable of identifying and distinguishing the goods of
one manufacturer or seller from those of another.” Section 122 of the
Intellectual Property Code of the Philippines (IPC) provides that rights to a
mark shall be acquired through registration validly done in accordance with
the provisions of this law. Corollary to that rule, Section 123 provides which
marks cannot be registered.
3. Same; Same; Same; As the Supreme Court (SC) have said in Fredco
Manufacturing Corporation v. Harvard University, 650 SCRA 232 (2011),
“[i]ndeed, Section 123.1(e) of Republic Act (RA) No. 8293 now categorically
states that ‘a mark which is considered by the competent authority of the
Philippines to be well-known internationally and in the Philippines, whether
or not it is registered here,’ cannot be registered by another in the
Philippines.”-
—As we have said in Fredco Manufacturing Corporation v. Harvard
University, 650 SCRA 232 (2011), “[i]ndeed, Section 123.1(e) of R.A. No.
8293 now categorically states that ‘a mark which is considered by the
competent authority of the Philippines to be well-known internationally and
in the Philippines, whether or not it is registered here,’ cannot be registered
by another in the Philippines.” Rule 100(a) of the Rules and Regulations on
Trademarks, Service Marks, Tradenames and Marked or Stamped
Containers defines “competent authority” in the following manner: (c)
“Competent authority” for purposes of determining whether a mark is well-
known, means the Court, the Director General, the Director of the Bureau of
Legal Affairs, or any administrative agency or office vested with quasi-
judicial or judicial jurisdiction to hear and adjudicate any action to enforce
the rights to a mark.
4. Same; Same; Same; Dominancy Test; The dominancy test focuses on the
similarity of the prevalent or dominant features of the competing
trademarks that might cause confusion, mistake, and deception in the mind
of the purchasing public. Duplication or imitation is not necessary; neither is
it required that the mark sought to be registered suggests an effort to
imitate.-
—The dominancy test focuses on “the similarity of the prevalent or
dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public.
Duplication or imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more
consideration are the aural and visual impressions created by the marks on
the buyers of goods, giving little weight to factors like prices, quality, sales
outlets, and market segments.”
5. Same; Same; Same; Holistic Test; The holistic or totality test necessitates
a consideration of the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity.-
—The holistic or totality test necessitates a “consideration of the entirety of
the marks as applied to the products, including the labels and packaging, in
determining confusing similarity. The discerning eye of the observer must
focus not only on the predominant words, but also on the other features
appearing on both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other.”
3. Berris Agricultural Co., Inc. vs. Abyadang 633 SCRA 196 , October 13,
2010
1. Mercantile Law; Law on Trademarks; Words and Phrases; Definition of a
“Mark”; “Collective Mark” and “Trademark”.-
—R.A. No. 8293 defines a “mark” as any visible sign capable of
distinguishing the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of goods. It also
defines a “collective mark” as any visible sign designated as such in the
application for registration and capable of distinguishing the origin or any
other common characteristic, including the quality of goods or services of
different enterprises which use the sign under the control of the registered
owner of the collective mark. On the other hand, R.A. No. 166 defines a
“trademark” as any distinctive word, name, symbol, emblem, sign, or
device, or any combination thereof, adopted and used by a manufacturer or
merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by another. A trademark, being a special
property, is afforded protection by law. But for one to enjoy this legal
protection, legal protection ownership of the trademark should rightly be
established.
2. Remedial Law; Administrative Agencies; Administrative agencies, such as
the Intellectual Property Office (IPO), by reason of their special knowledge
and expertise over matters falling under their jurisdiction are in a better
position to pass judgment thereon; Their findings of fact in that regard are
generally accorded great respect, if not finality by the courts, as long as they
are supported by substantial evidence, even if such evidence might not be
overwhelming or even preponderant.-
—The protection of trademarks as intellectual property is intended not only
to preserve the goodwill and reputation of the business established on the
goods bearing the mark through actual use over a period of time, but also to
safeguard the public as consumers against confusion on these goods. On
this matter of particular concern, administrative agencies, such as the IPO,
by reason of their special knowledge and expertise over matters falling
under their jurisdiction, are in a better position to pass judgment thereon.
Thus, their findings of fact in that regard are generally accorded great
respect, if not finality by the courts, as long as they are supported by
substantial evidence, even if such evidence might not be overwhelming or
even preponderant. It is not the task of the appellate court to weigh once
more the evidence submitted before the administrative body and to
substitute its own judgment for that of the administrative agency in respect
to sufficiency of evidence.
3. Same; Same; Two tests in determining similarity and likelihood of
confusion-
—the Dominancy Test and the Holistic or Totality Test.—In determining
similarity and likelihood of confusion, jurisprudence has developed tests—
the Dominancy Test and the Holistic or Totality Test. The Dominancy Test
focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception
in the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be registered
suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving little
weight to factors like prices, quality, sales outlets, and market segments. In
contrast, the Holistic or Totality Test necessitates a consideration of the
entirety of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity. The discerning eye of the
observer must focus not only on the predominant words but also on the
other features appearing on both labels so that the observer may draw
conclusion on whether one is confusingly similar to the other.
4. Same; Same; The ownership of a trademark is acquired by its registration
and its actual use by the manufacturer or distributor of the goods made
available to the purchasing public.-
—The ownership of a trademark is acquired by its registration and its actual
use by the manufacturer or distributor of the goods made available to the
purchasing public. Section 122 of R.A. No. 8293 provides that the rights in a
mark shall be acquired by means of its valid registration with the IPO. A
certificate of registration of a mark, once issued, constitutes prima facie
evidence of the validity of the registration, of the registrant’s ownership of
the mark, and of the registrant’s exclusive right to use the same in
connection with the goods or services and those that are related thereto
specified in the certificate. R.A. No. 8293, however, requires the applicant
for registration or the registrant to file a declaration of actual use (DAU) of
the mark, with evidence to that effect, within three (3) years from the filing
of the application for registration; otherwise, the application shall be
refused or the mark shall be removed from the register.
Registration requirement and Infringement
4. Ecole De Cuisine Manille (Cordon Bleu of the Philippines), Inc. vs.
Renaud Cointreau & Cie 697 SCRA 345 , June 05, 2013
1. Intellectual Properties; Trademarks; Under Section 2 of R.A. No. 166, in
order to register a trademark, one must be the owner thereof and must
have actually used the mark in commerce in the Philippines for two (2)
months prior to the application for registration.-
—Under Section 2 of R.A. No. 166, in order to register a trademark, one
must be the owner thereof and must have actually used the mark in
commerce in the Philippines for two (2) months prior to the application for
registration. Section 2-A of the same law sets out to define how one goes
about acquiring ownership thereof. Under Section 2-A, it is clear that actual
use in commerce is also the test of ownership but the provision went
further by saying that the mark must not have been so appropriated by
another. Additionally, it is significant to note that Section 2-A does not
require that the actual use of a trademark must be within the Philippines.
Thus, as correctly mentioned by the CA, under R.A. No. 166, one may be an
owner of a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure to use the same in
the Philippines for two (2) months prior to registration.
2. Same; Same; Same; Courts will protect trade names or marks, although
not registered or properly selected as trademarks, on the broad ground of
enforcing justice and protecting one in the fruits of his toil.-
—As a final note, “the function of a trademark is to point out distinctly the
origin or ownership of the goods (or services) to which it is affixed; to secure
to him, who has been instrumental in bringing into the market a superior
article of merchandise, the fruit of his industry and skill; to assure the public
that they are procuring the genuine article; to prevent fraud and imposition;
and to protect the manufacturer against substitution and sale of an inferior
and different article as his product.” As such, courts will protect trade
names or marks, although not registered or properly selected as
trademarks, on the broad ground of enforcing justice and protecting one in
the fruits of his toil.
3. Same; Same; Intellectual Property Code of the Philippines (R.A. No. 8293);
The present law on trademarks, Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines, as amended, has already
dispensed with the requirement of prior actual use at the time of
registration.-
—In any case, the present law on trademarks, Republic Act No. 8293,
otherwise known as the Intellectual Property Code of the Philippines, as
amended, has already dispensed with the requirement of prior actual use at
the time of registration. Thus, there is more reason to allow the registration
of the subject mark under the name of Cointreau as its true and lawful
owner.
4. Same; Same; Same; Paris Convention; The Philippines is obligated to
assure nationals of the signatory-countries to the Paris Convention that they
are afforded an effective protection against violation of their intellectual
property rights in the Philippines in the same way that their own countries
are obligated to accord similar protection to Philippine nationals.-
—The Philippines is obligated to assure nationals of the signatory-countries
that they are afforded an effective protection against violation of their
intellectual property rights in the Philippines in the same way that their own
countries are obligated to accord similar protection to Philippine nationals.
“Thus, under Philippine law, a trade name of a national of a State that is a
party to the Paris Convention, whether or not the trade name forms part of
a trademark, is protected “without the obligation of filing or registration.’ ”
5. Same; Same; Trademark Infringement; Foreign marks which are not
registered are still accorded protection against infringement and/or unfair
competition.-
—Nevertheless, foreign marks which are not registered are still accorded
protection against infringement and/or unfair competition. At this point, it is
worthy to emphasize that the Philippines and France, Cointreau’s country of
origin, are both signatories to the Paris Convention for the Protection of
Industrial Property (Paris Convention).
US CASES
Sporty's Farm, LLC vs. Sportsman's Market, Inc., 2000 U.S. App. LEXIS 1246
(2d Cir. 2/2/2000)
This is the first appellate case decided under the new ACPA (Anti-
Cyberpiracy Act). Sportsman's Market - a catalog company targeted at
aviation enthusiasts uses the logo and trademark "sporty's" to identify its
catalogs. Omega Engineering, a catalog company that sells mainly scientific
instruments, registered the domain name sports.com. Omega's owner is a
pilot who was familiar with Sportsman's catalogs and the Sporty's
trademark. Nine months after registering sportys.com, Omega transferred
the name to a subsuidary it created to grow and sell Christmas trees. It
named the subsidiary Sporty's Farm and sold the rights to sportys.com to
the subsidiary. The case was originally filed under the Federal Trademark
Dilution Act (FTDA), but the ACPA was passed before the appellate court
rendered its decision. The appellate court determined that new law applied
on appeal. It then analyzed the facts in the case and found that there was
more than enough evidence in the record to demonstrate bad faith. Neither
Sporty's Farm nor Omega had any intellectual property rights in sportys.com
and Sporty's Farm did not begin use of the name in a bona fide offering of
goods or services until after the litigation began. Most importantly,
however, the court holds that although the "unique circumstances" of the
case do not fit neatly within the bad faith factors enumerated by Congress,
there is sufficient evidence to find bad faith. For instance, the court found
that Omega planned to enter into direct competition with Sportsman's in
the pilot and aviation consumer market and thus their primary intent was to
prevent Sportsman's from using the sportys.com domain name. The court
found that Omega created the Sporty's Farm business solely to find a use fo
the sportys.com name in some commercial fashion and thus keep the name
away from Sportsman's and protect against a posible infringement claim.
Because the domain name was registered prior to the passage of the ACPA,
the court refused to award damages to Sportsman's Market.
WorldSport Networks Ltd. v. Artinternet S.A., 2000 U.S. Dist. LEXIS 17 (E.D.
Pa. 1/3/2000)
Defendant, a French organization registered a variety of domain names
including the WorldSport trademark. Plaintiff, an Irish organization sued to
enjoin this behavior. Defendant admitted that they had no right to use the
mark and stipulated that their use of the mark constituted infringement.
The court initially ordered that NSI not allow anyone to register a name
similar to the one that was determined to infringe. NSI challenged this
order claiming that it did not have the resources to evaluate every
requested domain name for possible similarity. In APril, 1999, the court
amended its order and to only require that NSI screen applications by the
defendant for similarity. NSI again sought modification. In a January 3,
2000 order, the court once again modified its early decision. NSI is no
longer responsible for preventing similar registrations by the defendants.
Instead, if the defendants register a domain name, they are required to file
with the Court and with the plaintiffs a report setting forth that the register
does not violate the court's order. Thus the court determined that NSI need
not screen domain name registrations in order to comply with the court
order.
Shade's Landing v. Williams, 1999 U.S. Dist. LEXIS 19782 (D. Mn.
12/22/99)
Plaintiff Shade's Landing registered the domain name Home-Market.com in
connection with its web site referral network targeted at businesses in the
real estate industry. The company offered registration in the referral
network to be accessed b consumers through the Home-Market.com web
page. The primary business of the plaintiff is web site development services
for real estate agents. Defendant provides web site development services
for real estate agents and registered Home-Market.net as a host for his
client's web sites. The court concluded that the marks were essentially
identical since the only distinction is the difference in gTLD which is highly
significant. Despite this, however, the court denied plaintiff's motion for
preliminary injunction. One factor considered what that while the parties
compete with each other for the same business, the plaintiff does not
market its web page development services through its Home-Market.com
web site.
HQM Ltd. and Hatfield, Inc. v. William Hatfield, 1999 U.S. Dist. LEXIS 18598
(D. Md. Dec. 2, 1999)
Defendant William Hatfield registered the domain name hatfield.com for
email purposes. Plaintiff - HQM - owns a trademark in Hatfield in
connection with meat products. Defendant filed a Rule 12(b)(6) motion to
dismiss. Although many domain name cases are determined in summary
judgment, the use of a 12(b)(6) motion is not common. Nonetheless, the
court granted defendant's motion. Citing several prior cases including
Lockheed v. NSI and Panavision, the court emphasized that mere
registration of a domain name without more does nt constitute use of the
name as a trademark. Additionally, the court held that the .com designation
alone does not establish commercial use. Thus the court held that simply
registering and activating the domain name under the .com designation
does not constitute commercial use. In this case the defendant had not
responded to letters by the trademark holder, but the court indicates that
such failure to respond does not constitute commercial use and thus does
not impact the decision. The plaintiff also alleged that its inability to use its
trademark as a domain name constituted blurring because potential
customers might fail to find their web site. The court held that such facts
are not sufficient to satisfy dilution.
CCBN.com, Inc. v. C-Call.com, Inc., 1999 U.S. Dist. LEXIS 18187 (D. Ma.
11/18/99)
Plaintiff CCBN uses its StreetEvents.com web site to provide access to
events calendaring service regarding stock market information. Defendant
C-Call.com uses its StreetFusion.om web site to offer similar stock market
information about publicly traded companies. Access to the
StreetEvents.com site was free at the time of the suit while subscriptions to
the StreetFusion.com site cost up to $400,000. The issue in this case turns
on priority. While plaintiff used the mark on its page beginning in January
1999, at that time the site was only available to limited number of
subscribers in a test version. Plaintiff promoted its service at a trade fair in
February, 1999 and the first advertising was published in May, 1999. The
company applied for service mark registration on June 2, 1999.
Defendant launched its web site under a different name (c-call.com) in
November, 1998. It registered the domain name StreetFusion.com on April
2, 1999 and filed a trademark application on April 7, 1999. Its web site was
operational at the new address as of late-April, 1999 and a press release
announced the launch of the site on May 1, 1999.
Plaintiff asserts senior rights to the StreetEvents.com mark. The question,
however, is what constitutes "use" of the mark in the context of the
internet. Advertising and promotional use along are not sufficient to
constitute use in commerce unless such pre-sales marketing is extensive.
There was no evidence in the record of extensive marketing ad thus plaintiff
did not establish use in commerce prior to April, 1999 at the earliest. The
court determines that the record is unclear as to which company actively
began providing services in commerce under the disputed mark first.
Under the reasoning of this court, it is clear that establishing a web site with
only minimal test marketing (or simply announcing the intention of a future
service) will not constitute sufficient "use in commerce" to establish priority
for trademark infringement.
Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (9th Cir.
10/25/99)
Lockheed Martin sued NSI for contributory infringement. The district court
granted summary judgment in favor of NSI. On appeal, the Ninth Circuit
upheld the district court's judgment. The court ruled that NSI's involvement
does not extend beyond registration, and thus a trademark holder could not
hold the registrar liable for contributory infringement. According to the
court, NSI cannot reasonably be expected to monitor the internet for
infringement.
Hasbro v. Clue Computing, 66 F.Supp.2d 117 (D. Mass., Sept. 2, 1999)
Defendant Clue computing registered clue.com in June, 1994 and uses the
Web site to advertise its business including Internet consulting, training,
system administration, and network design. Plaintiff, Hasbro brought suit
against Clue Computing for trademark infringement and dilution of the Clue
trademark. The court granted summary judgment for Clue Computing.
While Hasbro attempted to argue that the two companies provided
competing services, the court rejected Hasbro's argument that Hasbro's on-
line technical support for the game constitutes substantial product overlap
with Clue Computing technical services. Following traditional trademark
infringement analysis of the eight factors, the court determined that Hasbro
failed to demonstrate that there was any likelihood of confusion. The
opinion is most cited, however, for its dilution analysis. First, the court
determined that while the Hasbro mark had acquired secondary meaning it
was not famous. The court indicates that there is a high standard for finding
that a mark is famous. Courts should be "discriminating and selective in
categorizing a mark as famous," and thus should apply a "rigorous standard
of fame." Additionally, the court refused to find a per se category of
dilution for use of anothers trademark as a domain name. While some prior
cases (primarily cybersquatting cases) had language that could be
interpreted as providing for such a per se rule, the court specifically rejected
per se dilution. Instead it held that
"while use of a trademark as a domain name to extort money from the
markholder or to prevent that markholder from using the domain name
may be per se dilution, a legitimate competing use of the domain name is
not. Holders of a famous mark are not automatically entitled to use that
mark as their domain name; trademark law does not support such a
monopoly. If another Internet user has an innocent and legitimate reason
for using the famous mark as a domain name and is the first to register it,
that user should be able to use the domain name, provided that it has not
otherwise infringed upon or diluted the trademark."
Avery Dennison Corporation v. Jerry Sumpton, et al., 189 F.3d 868 (9th Cir.
8/23/99)
Jerry Sumpton and his company Freeview registered thousands of domain
names - primarily typical surnames - and used these domain names to offer
"vanity" email addresses to people who want an address incorporating their
name. Two of the names registered included avery.net and dennison.net.
Avery Dennison brought suit against Sumpton claiming trademark dilution.
The district court granted an injunction in favor of Avery Dennison. The
Ninth Circuit reversed claiming that Avery Dennison failed to meet the
required of elements of dilution. The court concluded that the Avery and
Dennison trademarks were not famous. Although the court acknowledged
that the trademarks had reached a level of distinctiveness, dilution requires
that a mark be both distinctive and famous. According to the court for a
mark to meet the "famousness" element of dilution it must be truly
prominent and renowned. Additionally, the court held that Avery Dennison
failed to meet a second requirement for dilution: commercial use.
Commercial use under the dilution statute requires that the defendant use
the trademark as a trademark, capitalizing on its trademark status. In this
case, the defendants were using the domain names as surnames with the
intent to capitalize on the surname status and not the trademark status.
Thus the defendant's use does not constitute "commercial use" for the
purposes of trademark dilution.
The district court opinion is also available. Avery Dennison Corporation v.
Sumpton, 999 F.Supp. 1337, (C.D.Cal. 1998)
The defendant registered 12,000 domain names in the .net domain that
corresponded to typical surnames. Their stated intent (and apparent
business practice) was to license these domain names to individuals for use
as email addresses. Thus one could open an email account with the
defendant using the domain name that corresponds to one's surname as
part of the email address. The 12,000 registered names included avery.net
and dennison.net. Avery Dennison sued claiming trademark infringement.
The court, in a scathing opinion, held that the domain names diluted the
trademarks. The court holds that "for purposes of the [Lanham] Act, a
famous mark is ‘used in the ordinary course of trade’ when (a) it is
registered as a domain name by a registrant who is not otherwise identified
by or associated with any of the commonly accepted meanings of the
domain name, and (b) it is not used by the registrant as its own domain
name, but rather is held by the registrant for sale or license to others."
(1339-1340). Additionally, the court subscribes to the Panavision precedent
that "it is the registration of the trademark name as a domain name, which
denies the holder of the famous trademark from using its trademark name
as an internet domain name, that dilutes the ability to identify goods and
services." (1341) Note that in this situation, Avery Dennison had already
registered names corresponding to its trademarks in the more typical .com
domain. The defendant's actions only prevented Avery Dennison from using
their trademarks in the less popular .net domain.
Interstellar Starship Services Limited v. Epix, Inc., 184 F.3d 1107 (9th Cir,
July 19, 1999)
Epix, Inc., the owner of the Epix trademark, manufactures and sells video
imaging hardware and software products. Interstellar Starship Services, Ltd.
(ISS) registered epix.com as a domain name and displayed photos of a
drama group along with information about how the pictures were
transferred to a computer and touched up for posting. The district court
granted summary judgment in favor of ISS. The Ninth Circuit reversed,
holding that it is not appropriate to grant summary judgment when there
are genuine issues of material fact. In fact, the court indicated that
summary judgment is generally disfavored in the trademark arena. While
the general business of ISS did not seem to be related to the business of
Epix, the court concluded that it is the use of the epix.com website, rather
than the entirety of the business transacted under the ISS name, that is the
relevant criterion. Because there were genuine issues of material fact, the
court held that Epix must be granted to right to go to trial on its
infringement claim.
The earlier district court opinion is also available. Interstellar Starship
Serv. Ltd. V. Epix, Inc., 1197 WL 736486 (D. Or. Nov. 20, 1997).
Defendant Interstellar Starship registered and used the domain name
epix.com to publicize a theater group performing the Rocky Horror Picture
Show. Plaintiff, Epix, Inc., a circuit board and computer program
manufacturer owns the federally registered trademark Epix. While the
trademark was found to be valid, the court determined that the use by
defendant did not infringe on the plaintiff's trademark because the required
element of likelihood of confusion was missing. The court emphasizes that
the relevant likelihood of confusion "is confusion that affects the purchasing
decisions of actual or prospective purchasers of the products of Epix, Inc."
Additionally, the court indicates that the "law does not per se prohibit the
use of trademarks or service marks as domain names. Rather, the law
prohibits only uses that infringe or dilute an owner's trademark or service
mark." While there was no evidence of bad faith, the court emphasizes
that intent is not necessary for a finding of likelihood of confusion.
Note that often a likelihood of confusion analysis includes not only
confusion that would lead to a mistaken purchase, but also confusion that
would lead a potential consumer to believe that the product sold is
affiliated with the trademark owner. See Data Concepts v. Digital
Consulting, Inc., for a case with that holding.
Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49
F.Supp.2d 496 (E.D. Va., May 19, 1999)
Leading Authorities, a direct competitor or Washington Speakers Bureau
(WSB) registered a variety of domain names incorporating parts the
Washington Speakers Bureau trademark. The court found that registration
and use of these domain names constituted trademark infringement and
ordered the defendant to relinquish ownership of the domain names.
Concerned that the domain names could be registered to a third party
stranger if relinquished, Leading Authorities requested a stay of the order
pending appeal. If no stay was granted, the names would be returned to
the registrar and would become available on a first-come first-serve basis to
any interested takers. Although the court initially granted the stay, it then
reconsidered and denied the stay. The court's decision was based on its
determination that Leading Authorities was not likely to success on the
merits of its appeal. Thus Leading Authorities was once again ordered to
relinquish ownership of the domain names and to notify WSB of the precise
date on which it relinquished the names so as to provide WSB with the best
chance of registering these names if it so desired.
Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d
1036 (9th Cir., April 22, 1999)
This case analyzes the priority issue as well as reviewing standard trademark
infringement in a case where a competitor has registered another's mark as
a domain name. Brookfield, the owner of the moviebuff trademark sued
West Coast to prevent its use of the moviebuff.com domain name for its
web site. While overall the companies provided some different services,
they were both provided similar searchable databases of movie information.
Thus the court held that the proximity of their products is quite high.
According to the court, the relatedness of the overall company mission is
not relevant. The focus is instead on whether they consuming public is
likely to associate the defendant's product with the plaintiff's. Proceeding
through the standard eight factor test, the court finds that the plaintiff is
likely to succeed on the merits and thus grants a preliminary injunction.
Before addressing the infringement issue, the court establishes that the
plaintiff is the senior user. Without such a holding, an infringement analysis
is irrelevant. In order to determine which party has priority, the court
undergoes a tacking analysis. It concludes that West Coast video cannot
tack its use of moviebuff.com to its prior trademark registration of "The
Movie Buff's Movie Store" because the two marks are not legally identical.
In further analyzing the priority issue, the court determines that mere
registration "does not in itself constitute "use" for purposes of acquiring
trademark priority." Nor is registration with an intent to use the name
commercially sufficient to convey trademark rights. To establish priority,
one must demonstrate use in a way sufficiently public to identify or
distinguish the marked goods in an appropriate segment of the public mind
as those of the adopter of the mark.
Columbia Insurance v. Seescandy.com, 185 F.R.D. 573 (N.D. Ca. 3/8/99)
The holder of the See's Candy and See's Candies trademark sued the
registrants of seescandies.com and seescandy.com. The registrants of these
domain names had not provided sufficient contact information for the
trademark holder to find them in order to serve the complaint. The court
denied the trademark holder's request for a temporary restraining order,
but granted the trademark holder the right to conduct discovery to
determine the identity of the defendant in order to make service of process
possible. The court acknowledged a general interest in allowing innocent
parties to participate online without fear that someone will attempt to
discover their identity. The court concluded, however, that where a plaintiff
can show that its claim would survive a motion to dismiss, then the plaintiff
can establish a right to determine the identify of the party causing the harm.
Archdiocese of St. Louis v. Internet Entertainment Group, Inc., (E.D.Mo.
2/12/99)
Defendant registered papalvisit.com domain name and used the name to
provide limited information on the Pope's upcoming visit. The site was
primarily used, however to advertise defendant's adult entertainment site
and list off-color jokes about the church. Plaintiff, owner of the Papal Visit
trademark, brought suit alleging trademark infringement, dilution and unfair
competition. The court granted a preliminary injunction, finding that
plaintiff's were likely to prevail on their dilution claim. The court found that
the Papal Visit marks were famous and that their association with adult
entertainment sites would likely cause tarnishment.
The decision was published on February 12, 1999, but is no longer available
after a court order issues March 26, 1999.
Jews for Jesus v. Brodsky, 993 F.Supp. 282 (D. NJ. 1998))
The analysis in this case is very similar to Planned Parenthood. Defendant
owned the domain name jewsforjesus.com which linked to a site that
disparaged Jews for Jesus and provided another link to a pro-Judaism site.
Defendant admitted that his site was intended to "intercept potential
converts." Plaintiff, Jews for Jesus, sued to prevent plaintiff from using the
domain name. A preliminary injunction was granted after the court
determined that the plaintiff would likely succeed on the merits. The court
analyzes trademark infringement, dilution and unfair competition. It claims
that the plaintiff would be likely to succeed on all three counts. The case
relies heavily on Planned Parenthood. The Third Circuit then upheld without
issuing an opinion. Rather than viewing this as protected speech, the court
viewed the fact that the defendant registered the exact name in order to
discredit and disparage the trademark owner as additional evidence of
infringement.
Bally Total Fitness Holding Corporation v. Andrew Faber, (C.D. Ca. 1998)
Defendant Faber posted a web site at www.compupix.com/ballysucks
critiquing Bally's fitness centers. Bally filed suit claiming trademark
infringement, dilution and unfair competition. The court granted
defendant's motion for summary judgment on all three claims. Using
traditional trademark infringement analysis, the court held that Faber had
demonstrated that there was no likelihood of confusion. This determination
was based in part on the fact that the goods were not related and that a
reasonable consumer would not mistake Faber's site for Bally's official site
(given that Faber says his site is unauthorized and that he has superimposed
the word "sucks" over the Bally's mark). Bally's dilution claim fails because
the court classifies Faber's site as a consumer commentary rather than
commercial use.
Playboy Enterprises, Inc. v. AsiaFocus International, 1998 WL 724000
(E.D.Va.)
Defendant AsiaFocus International maintained web sites using the domain
names asian-playmates.com and playmates-asian.com in connection with
pictures of adult nude women and related merchandise. Determining that
the Playboy mark deserves a high degree of protection as a strong mark, the
court decided that the use of the two domain names infringed on Playboy's
"playmate" trademark. The court emphasized the similarity of the goods
and services offered and indicated that the differences between the
registered mark "playmate" and the domain names was minimal. In
determining that the use of the domain names also diluted the Playmate
mark, the court focused on the intent of the defendants.
Toys "R" Us, Inc. v. Feinberg and Guns are We, 1998 WL 760219, Oct. 28,
1998, (SDNY).
Plaintiff Toys "R" Us sued defendant Guns are We for use of the domain
name gunsareus.com. The court granted the defendant's motion for
summary judgment after concluding that the plaintiff had not demonstrated
any evidence of likelihood of confusion or dilution. In determining that
there is no likelihood of confusion the court indicated that it is unlikely that
a prudent consumer would be misled into thinking that Toys "R" Us had
sponsored a small gun shop web site targeting primarily gun dealers.
Additionally the court emphasized that the gunsareus.com domain name
did not use the infamous "r" but instead spelled out the word "are."
Additionally, in its dilution analysis, the court noted that the title of the web
page was not "Guns Are US" or "Guns ‘R’ Us," but instead "Guns Are We."
Thus the distinctiveness of the "R" Us family of marks was not likely to be
blurred.
Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, (6th Cir.,
August 1998).
Data Concepts, Inc., owner of the domain name dci.com, supplies computer
software for data management. Digital Consulting, Inc., owner of the
trademark DCI, provides training and educational services in many computer
related fields. The District Court in the case granted summary judgment for
Digital, holding that the use of dci.com infringed on the DCI trademark. The
Sixth Circuit court reversed and remanded for additional consideration.
Although Data Concepts had used a stylized mark incorporating the letters
d, c, and i, since 1982, they had only registered the stylized mark and not
simply the letters dci. The court determined, therefore, that Digital was the
senior user of the mark DCI which they had registered in 1987. The Sixth
Circuit analyzed the traditional likelihood of confusion factors and
determined that additional information was needed to determine if
infringement had occurred. Two areas of the analysis are important when
compared with other domain name infringement cases. First, the court
indicates that likelihood of confusion is not measured simply by whether a
buyer might accidentally purchase the good, but also by whether a buyer
might mistakenly believe that the good is affiliated with the trademark
owner. (626). Second, the court indicates that evidence of intent does merit
weight as a factor in likelihood of confusion. (627).
Additionally, the concurring opinion raises the interesting issue of whether
or not use of the domain name dci.com constitutes use of a trademark at all.
Panavision v. Toeppen, 141 F.3d 1316 (9th Cir. 4/17/98)
Dennis Toeppen had registered a multitude of domain names incorporating
famous trademarks including panavision.com. When contacted by
Panavision, owner of the trademark, he offered to sell the domain name to
them for $13,000. Toeppen had previously offered similar sales to other
trademark owners for domain names incorporating their marks (Intermatic
and American Standard). Panavision filed suit claiming trademark dilution.
Toeppen argued that the requirements for dilution were not met because
his use of the domain name to display the city of Pana, IL did not constitute
commercial use. The court determined that Toeppen's business is to
register trademarks as domain names and then sell them to the rightful
trademark owners. As such, they found the requisite commercial use.
Panavision establishes the principle in cybersquatting cases that the offer to
sell a domain name to the trademark holder constitutes use in commerce
for purposes of trademark infringement. Establishing commercial use,
however, is not sufficient. The plaintiff must also show that there has been
dilution. Here the Ninth Circuit indicates that a court need not rely on the
traditional definitions of blurring or tarnishment to find dilution. Because
Toeppen's conduct diminished the capacity of the Panavision marks to
identify and distinguish Panavision's goods and services on the Internet, the
court finds that dilution has occurred. While this is one of the older cases
and its interpretations have been questioned by scholars, it has frequently
been relied on by courts throughout the US in subsequent cases.
CD Solutions, Inc. v. CDS Networks, Inc., 15 F.Supp.2d 986, (D. Or., April
1998).
Plaintiff, CD Solutions - owner of the domain name cds.com - was granted
declaratory judgment that the cds.com did not infringe the trademark CDS
registered by CDS Networks. The District Court emphasized that the
relevant confusion is the confusion that affects the purchasing decisions of
the customers and that there would be no such confusion in this case. CD
solutions sells compact disks while the CDS trademark of CDS Networks is
registered for printing and document services. Additionally, the court notes
that there is not prohibition against the use of trademarks as domain
names, only those that infringe or dilute are prohibited. (citing Lockheed
Martin v. NSI 43 USPQ2d 1056 (C.D.Cal., 1997)).
Teletech Customer Care Mgmt., Inc. v. Tele-Tech Co., 977 F.Supp. 1407
(C.D. Cal. 1997).
Defendant Tele-Tech registered and used the domain name teletech.com
for its company web site. The court granted a preliminary injunction
preventing continued use of the domain name. The court determined that
the plaintiff was likely to succeed on the merits of its dilution claim since the
TeleTech trademark is probably famous. Relying on the Toeppen cases, the
court determined that dilution probably exists if the trademark owner is
prevented from using its federally registered mark as its domain name.
Although this seems to be a case where the defendant had legitimately
registered the name for business purposes and not simply as a
cybersquatter, the court indicated that such a distinction is irrelevant in
granting preliminary injunction. Because the defendant can use its exact
name "tele-tech" (with a hyphen) as a domain name, the case is unlike many
other cases where a conflict arises between two companies with similar
names. In its likelihood of confusion analysis, the court indicates that the
plaintiff will have to show more than "brief confusion" on the part of the
Internet browser who accesses defendant's web site to prove likelihood of
confusion. Thus the court decided that it was unlikely that TeleTech would
succeed on its likelihood of confusion claim.
Juno Online Service v. Juno Lighting, Inc., 979 F. Supp. 684 (N. D. Ill. 1997)
This case presents an interesting twist in domain name / trademark
infringement suits. The plaintiff, Juno On-line, owns the domain name
juno.com. The plaintiff sued the defendant, Juno Lighting, owner of the
trademark Juno for declarative relief from the court indicating that its use of
juno.com does not infringe or dilute the Juno Lighting trademark. The
plaintiff also sued Juno Lighting for trademark misuse. After requesting that
Juno On-line relinquish its right to the juno.com domain name, Juno Lighting
registered the domain name juno-online.com. The court did not rule on
whether such behavior might constitute trademark misuse because it
determined that trademark misuse can only be raised as a defense to an
infringement suit and not as an affirmative claim. Because Juno Lighting
registered juno-online.com but did not actually use it, the court determined
that there was no use in commerce as required by the Lanham Act, section
1125(a).
Green Prods. Co. v. Independence Corn By-Prods. Co., 992 F.Supp.1070
(N.D. Iowa Sept. 25, 1997).
Both companies were direct competitors in the corncob by-product
industry. ICBP registered greenproducts.com, but had not yet posted a web
site when Green Products sued them. Even though no web site had been
posted, the court held that ICBP intended to use its confusing domain name
to lure potential customers to the site once it was created. While
customers might not be confused as to the affiliation once they got to the
site, they may simply purchase ICBP's products rather than searching for
Green Products' site and thus ICBP would benefit unfairly from the use of
Green Products' name. The court acknowledged that this is a different
interpretation of consumer confusion than is typically used to find
trademark infringement. Typically, courts examine whether a company
intended to confuse consumers into thinking that its own products were
made by a competitor company. Because ICBP could deceptively lure
potential customers to its own site where they would be told how ICBP is
better than Green Products, the court found such deceptive use of a
competitor's trademark to qualify as consumer confusion. On these facts
the court found that there was infringement.
Planned Parenthood Federation of America v. Bucci, 42 U.S.P.Q.2d 1430
(S.D. NY, 3/19/97)
This case sets out the analysis used by most courts in likelihood of confusion
cases. Although the court engages in a traditional trademark infringement
analysis under Section 1114 of the Lanham act, the analysis is similar for
unfair competition under Section 1125(a). In this case, the court sets out a
broad interpretation of "use in commerce" and "use in connection with
goods and services" that allows it to apply the Lanham Act. The court states
that because the defendant's actions affect plaintiff's ability to offer
plaintiff's services over the internet, the actions are "in commerce."
Additionally, the court states that the "nature of the Internet indicates that
establishing a typical home page on the Internet, for access to all users,
would satisfy the Lanham Act's "in commerce" requirement. The court
holds that the "defendant's use of plaintiff's mark is "commercial" for three
reasons: (1) defendant is engaged in the promotion of a book, (2)
defendant is, in essence, a non-profit political activist who solicits funds for
his activities, and (3) defendant's actions are designed to, and do, harm
plaintiff commercially." The court further finds that defendant's goal of
political activism did not confer immunity from the Lanham Act.
"Defendant's use of another entity's mark is entitled to First Amendment
protection when his use of that mark is part of a communicative message,
not when it is used to identify the source of a product." By using the mark
as a domain name, defendant identifies the web site as being the product of
the plaintiff, not merely a communicative message and thus his
infringement is not protected by the First Amendment.
While this is one of the older cases (1997) and its interpretations have been
questioned by scholars, it has frequently been relied on by courts
throughout the US in subsequent cases.
confusion caused by Toeppen's intermatic.com web page. The court
granted the motion for summary judgment for Intermatic as to dilution after
finding that the Intermatic mark was famous and that Toeppen's intent to
arbitrage the name constitutes commercial use. The court found that
Toeppen's use was likely to cause dilution by lessening the capacity of
Intermatic to identify its goods by means of the Internet. While this appears
to be a grant of a per se dilution rule, the court distinguishes cases where
there are legitimate competing uses of the same name.

Gateway 2000, Inc. v. Gateway.com, Inc., 1997 U.S. Dist. Lexis 2144
(W.D.NC February 6, 1997).

Gateway.com, Inc. reserved the domain name gateway.com years before

the mega computer maker Gateway 2000 attempted to register the name.
Gateway 2000 sued but lost because the court found that Gateway.com had
a legitimate reason for owning the domain name and had chosen it six years
earlier - long before domain names had the value that they do today and
before Gateway 2000 became a well-known trademark. One of the keys to
the decision was that the defendant was not opportunistically trying to get
value by using a well-known mark.

Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996).

Defendant Dennis Toeppen registered over 240 domain names

incorporating famous trademarks including intermatic.com. Intermatic, a
manufacturer of of electrical and electronic products sued alleging
trademark infringement and dilution. The court granted summary judgment
for Intermatic on the dilution causes of action but dismissed the motion for
summary judgment for trademark infringement and unfair competition
concluding that Intermatic had not established that there was a likelihood of