INTRODUCTION
A cultivar name is a taxonomical
identification of a plant variety and trademarks are used to
indicate the source of origin of plants sold in the marketplace.
Cultivar names may be freely used worldwide to identify a particular
variety. However, trademarks used on or in connection with plants
denote the source and origin of the plant and may not be used in
commerce without authorization of the trademark owner. Trademark
rights can be valuable commercial assets when used to protect
investment in marketing and promotion of a plant variety.
UNDERSTANDING
TRADEMARKS
Definition of Trademark
Before considering application of trademarks
to plants, it is important to understand what trademarks are all
about. A commonly accepted definition is that a trademark is a term
adopted and used by a manufacturer or merchant to identify goods and
distinguish them from those manufactured or sold by others. The term
selected for use as a trademark may be a word, name, symbol, or
device, or any combination of these. We are all familiar with
well-known trademarks to which all of us are exposed every day. Some
of us may even be aware of, or have read about, conflicts involving
trademarks which sometimes even appear in the public press. Forms of
marks other than trademarks also may be protected, such as service
marks, collective marks and certification marks; but except for
service marks, these other forms are generally not used in the plant
industry. A service mark is one applied to distinguish a service
offered to the public, such as marketing of plants by nurseries and
garden shops.
Function of Trademarks
The main function of a trademark is to
indicate the origin of goods with which the trademark is associated.
Trademarks also serve as an implicit identification of the quality
of goods bearing the mark. After satisfactory experience with a
trademarked product, purchasers often view the trademark as a
guarantee of an acceptable level quality. Actually, the rationale
for offering protection to owners of trademarks is to protect the
public by enabling purchasers of products bearing trademarks to
expect the quality previously experienced to be dependably
reproduced over time. In other words, if a consumer is satisfied
with a product identified by a particular trademark, that person
will expect to receive the same value and quality on subsequent
purchases of that product. Because of this reliance by purchasers,
the law in most countries gives the owner of the trademark the fight
to exclude others from applying that trademark on goods manufactured
and/or sold by others since the trademark owner does not have the
opportunity to control the quality of goods not manufactured by the
trademark owner. In some countries the owner of a trademark will
have rights to sole use of the mark even in the absence of formal
registration of the mark. In the United States such rights are
referred to as "common law" trademark rights. However, without
exception it is better to obtain governmental registration of the
mark when possible than to rely on common law rights.
Use of Trademark Required
Rights in a trademark are acquired only by
use and, generally, the use must continue if the trademark rights
are to be preserved. There can be no protectable trademark right if
the trademark is not actually used to identify goods in the
marketplace. In other words, one cannot acquire protectable
trademark rights for unused trademarks. Moreover, trademark rights
once acquired may be subsequently lost through nonuse, or
misuse.
In the United States, federal and state
trademark law protects a mark whether or not it is registered. As a
general rule in all countries recognizing trademark rights, it is an
infringement of these rights for someone else to use the same or a
confusingly similar term, on the same or closely related goods, in
the same geographical area, or in some cases, within a natural area
of expansion. Moreover, trademark infringement is a form of unfair
competition and, therefore, may be within the scope of unfair
competition laws. A trademark registration protects the owner and
the public against a likelihood of confusion, mistake or deception
about the source, affiliation, sponsorship or approval of goods or
services by commercial activities of another. In the United States,
federal registration also protects against the use of any false or
misleading statement of fact in commercial advertising or promotion
which contains a misrepresentation about the person's, or another's,
goods, services or commercial activities. Unauthorized use of
another's trademark is such a misrepresentation.
Some countries also have antidilution
statutes which protect the owner of a very strong trademark against
the loss of its distinctiveness or damage to its image even if there
is no likelihood of confusion, by use of a mark similar to the
famous trademark. A national antidilution law has been recently
enacted in the United States.
Protection of Trademarks
It is unfortunate that the word
"registration" is used in the context of conferring statutory
protection to trademarks and also in the context of registering the
plant name with an International Registrar because this often
results in confusion. Registration with an International Registrar
does not confer any legal rights whereas use of a term as a
trademark and governmental registration of a trademark does confer
significant legal rights to the trademark owner. For this reason,
those manufacturing and selling goods identified by a trademark
generally seek governmental registration of the mark, if possible.
Moreover, registration on a national Principal Trademark Register is
evidence of the exclusive right to use the mark and entitlement to
the remedies for infringement under national law. For example, it is
possible for a trademark owner to recover the infringer's profits,
recover damages sustained by the trademark owner and, possibly,
recover costs of the action taken to enforce the trademark rights.
Furthermore, the owner of a trademark who prevails in an action for
infringement can obtain an injunction to prevent further use of the
mark by the infringer and require the infringer to destroy the
articles bearing the infringing mark. Another right granted to the
owner of a trademark is the right to prevent improper importation of
goods bearing infringing marks and the customs service can be asked
to assist.
Improper and Proper Usage of
Trademarks
Proper usage of the trademark is fundamental
to the ability to obtain and maintain proprietary rights to the
trademark and to obtain the remedies for trademark infringement.
Improper trademark usage is responsible for most of the confusion
about the role of trademarks and about what must be done to avoid
encroaching on the legitimate concerns of taxonomists.
In order to maintain the proprietary nature
of a mark, the trademark should not be used as a generic description
of goods. When a trademark becomes "generic" and is used to denote
the goods themselves and not the origin, then the exclusive tight to
use the mark may be lost. A classic example is the word "aspirin."
When first manufactured and sold, this chemical composition
(acetylsalicylic acid) was marketed under the trademark ASPIRIN by
the Bayer company. Over time, and absent an enforcement program by
the trademark owner to maintain the proprietary nature of this mark,
the term aspirin came into public usage as a generic description of
the chemical composition originally sold under the mark. As a
result, the Bayer Company was no longer able to assert exclusive
ownership of the term and prevent others from using it. This same
principle applies to plant trade designations. If a commercial trade
plant trade designation is or becomes the "generic" name for a plant
cultivar, it is not protectable and trademark rights may be
lost.
To avoid loss of trademark rights, trademarks
should, in general, either be capitalized completely, used with
initial caps with quotes, or at the very least with initial caps.
Other alternatives for distinguishing trademarks include italicizing
the mark or printing it in boldface or in a different color. Since
trademarks are proper adjectives, it is desirable to use them
followed by generic terms. Examples include SCOTT tissues and
SNICKERS candy. Additional emphasis can be given to trademarks by
using one or more acceptable symbols that indicate the trademark
status. This can be accomplished by employing the symbol TM with the
mark if it is not registered or the symbol R in a circle for
federally registered trademarks. However, the circle R symbol should
only be used if the mark is actually registered in the US Patent and
Trademark Office, or the equivalent national registration office in
other countries, and not merely the subject of a pending application
for registration, or not registered at all. There are generally
penalties for improper use of the circle R symbol.
If a trademark becomes generic, anyone can
use it because the word or symbol no longer indicates to the public
that the products on which the mark is used were made, sold or
supplied by the trademark owner. Once a trademark is lost, consumers
no longer have the opportunity to identify preferred brands and
products by the trademark and repeat satisfactory purchases. Loss of
trademark rights also destroys the owner's investment in this
asset.
PLANT TRADE DESIGNATIONS AS
TRADEMARKS
Varietal Designation vs.
Trademark
To relate the foregoing to plants, it is
first necessary to distinguish between trademarks and the scientific
denominations given to plants by breeders or discoverers of new
varieties. The Latin language was used by early scholars to identify
plants and, as a result, the scientific denomination of plants is
now in Latin. The Latin binomial naming is in general use today to
identify plants by genus and species. In general, the first word in
the binomial nomenclature is capitalized and identifies the plant
genus which is followed by a second term not capitalized, used to
identify the species. The specific rules for scientific naming of
cultivated plants are set forth in the International Code of
Nomenclature for cultivated plants (ICNCP, 1995) established by the
International Botanical Congress.
It is also important to understand that not
all commercial trade designations applied to plants are trademarks.
A term may be either a varietal designation, ie, cultivar name, or a
trademark, but not both. If the originator or introducer of a new
plant variety chooses to do so, a commercial trade designation may
be chosen and used as the varietal designation which then also
serves to identify the plant generically. In this case, the
commercial trade designation, as the generic name, may be freely
used by others and cannot be appropriated or regarded by the initial
user of the name as a proprietary trademark.
Distinguishing Between Cultivar Names
and Trademarks
One way to ensure and maintain the
distinction between cultivar names and trademarks is to employ the
practice of exclusively associating a cultivar name with a
particular cultivated variety of plant. A cultivar name can be
distinguished from properly used trademarks, whether registered or
unregistered, by always using cultivar names with single quotes, and
not using single quotes to identify trademarks. This practice will
permit and encourage the use of the cultivar name, i.e. varietal
designation, as the sole and exclusive common scientific designation
for the cultivar without confusing it with trademarks. Of course, a
commercial trade designation may be also a cultivar name, in which
case it may be used in single quotes and then will not be considered
a trademark.
It is important that trademarks are not
confused with, or equated to, the cultivar name. Commercial trade
designations for plants which are used and regarded as the cultivar
name cannot, and should not, be entitled to protection or exclusive
use. However, where the trademark is used in addition to the
cultivar name, the trademark should be properly protectable. This
distinction can be maintained if cultivar names in print are
enclosed in single quotes and trademarks are not used with single
quotes and are be followed by the appropriate trademark symbol,
either TM or R in a circle to indicate its designation as a
trademark.
Role of International
Registrars
International registration authorities make
an important contribution by maintaining a Register of plant names
and by exercising some influence in preventing use of improper names
or the duplication of plant names by the trade. However, since there
is no legal obligation to register a plant name with an
International Registrar, the effectiveness of the International
registration of the plant name with a Registrar is limited, both in
function and substance.
Unfortunately, an International Registrar may
also contribute to the confusion which arises in the use of plant
names if the Registrar is not careful. By failing to distinguish
between cultivar names and commercial trade designations used as
trademarks, a Registrar may improperly register as cultivar name a
commercial trade designation used as a trademark. If the Registrar
accepts or indicates in its publications registration of a
commercial trade designation name which is used as a trademark, the
registration could be evidence that the mark is generic and
therefore is not to be accorded trademark status, to the detriment
of the breeder or introducer of the new plant variety. If this is
done, deliberately or unintentionally, the horticultural industry
will be discouraged from submitting plant names to International
Registrars for registration. Furthermore, if trademarks are accepted
for registration as cultivar names when in fact they are not
cultivar names, there will be considerable confusion as to what is
the correct cultivar name, particularly since different trademarks
may be used in commerce in the same or different geographical areas
to commercially identify plants of the same cultivar.
PROPER USAGE OF
COMMERCIAL TRADE DESIGNATIONS AS TRADEMARKS
Plant
Labels
Since only commercial plant trade
designations which are not also cultivar names may be protected as
trademarks, it is incumbent on those wishing to employ a protectable
trademark to use trademarks for plants properly. In addition to the
trademark, a label, tag, or other descriptive information concerning
the plant must employ the generic plant name, i.e. the cultivar
name. It is also desirable for the trademark owner to promote the
trademark through advertising and marketing literature as the
trademark owner's product. A properly designated label will
prominently display the trademark but will also indicate the
cultivar name.
Suggestions for Proper Trademark Usage
As an illustration, let us suppose the ABC
Nursery has developed a new Nandina domestica plant variety for
which it applies the cultivar name 'Abcor.' ABC Nursery intends to
market 'Abcor' under the trademark PROTECTABLE. The nursery applies
for registration of 'Abcor" with the appropriate International
Registrar for that plant. When the plant is marketed however, it
applies its own trademark PROTECTABLE (note use of the TM symbol to
identify ABC Nursery as the source or origin of the plant). A label
or tag for the plant might read as follows: PROTECTABLE (Nandina
domestica 'Abcor'), and, preferably indicate ABC Nursery as the
source of the plant and owner of the trademark with the legend
"PROTECTABLE is a trademark of ABC Nursery." In registering the
generic or varietal designation of the plant 'Abcor,' ABC Nursery is
acknowledging that others may grow and sell plants identified as
'Abcor' unless the plant itself is subject to plant patent or
breeders' rights protection. Absent some protection against
unauthorized asexual or other propagation of 'Abcor,' others may use
the cultivar name 'Abcor' to identify their products but may not
also use the trademark PROTECTABLE which is the property of ABC
Nursery, whether govermentally registered or not. In fact, since
trademark rights are enhanced by usage, it would be in ABC Nursery's
best interest to promote PROTECTABLE as ABC Nursery's plants of
Nandina domestica 'Abcor.' In this way, both the separate generic
identification of the plant variety , i.e. the cultivar name, and
the protected trademark are part of the information disclosed to the
public. If and when others have the right to sell Nandina domestica
'Abcor,' purchasers satisfied with ABC Nursery's product PROTECTABLE
can continue to do so knowing that the plants will continue to be of
the quality established by ABC Nursery for its trademarked product.
Other Nandina domestica 'Abcor' which are not identified by the ABC
Nursery trademark, may or may not be of the same quality.
PLANT VARIETY
PROTECTION
Unlike trademark rights, patents and
breeders' rights do protect the owner of such rights against the
unauthorized propagation and sale of plants of the protected
varieties. In the United States, new varieties of plants may be
protected by plant patents, utility patents and, in the case of
sexually reproducible new varieties, by Certificates of Protection.
Applications for Certificates of Protection are filed with the U.S.
Department of Agriculture and the rights obtained by the certificate
of protection are similar to breeders' rights obtained in other
countries. Patent rights in the United States include the right to
exclude others from using or selling plants of the protected
variety, and in the case of plant patents, from asexually
reproducing the plant. Utility patent rights may be broader than
rights obtained from plant patents.
Applications for protection in the United
States must include the varietal name in the description. Such
varietal name will be treated as the cultivar or "generic" name of
the variety described. Thus, trademarks should not be identified in
applications for patents or Certificates of Protection as the
cultivar name or rights in the trademark may be lost.
CONCLUSION
It is possible to separately obtain plant
variety protection and enforceable trademark rights for commercial
identification of plants. However, to maintain trademark rights, the
mark must be used correctly and maximum trademark protection is
obtained by governmental registration.
by Vincent G. Gioia
Partner, Christie,
Parker & Hale, LLP, Irvine, California
The Congress shall have the power...to
promote the progress of science and useful arts, by securing for
limited times to authors and inventors the exclusive right to
their respect writings and discoveries.
U.S. Constitution, Article 1, Section 8, Clause
8.
By including this provision the framers of
the Constitution showed their awareness that promoting progress of
science benefits the country as a whole and that progress is best
promoted by rewarding those who are responsible for it. Congress
wasted little time to exercise this authority. The first law
granting rights to those that promote progress of science, i.e.
inventors, was enacted by Congress in 1790 under the power given to
Congress by the Constitution. But it was not until 1930 that
promoting development of new varieties of plants was recognized to
be just as important as inventing new machines and processes.
Through various amendments and revisions of the patent law (the last
major recodification of the patent law took place in 1952), the law
now indicates the subject matter for which a patent may be obtained
and the conditions for patentability.
The well known plant breeder, Luther Burbank,
who introduced us to Winter Rhubarb, the Shasta Daisy, and the
Burbank Potato, as well as over 800 new plant varieties, expressed
his disappointment as a plant breeder when he wrote in the early
20th century:
"I have been for years in correspondence
with leading breeders, nurserymen, and Federal officials and I
despair of anything being done at present to secure to the plant
breeder any adequate returns for his enormous outlays of energy
and money. A man can patent a mousetrap or copyright a nasty song,
but if he gives to the world a new fruit that will add millions to
the value of the earth's annual harvests he will be fortunate if
he is rewarded by so much as having his name connected with the
result. Though the surface of plant experimentation has thus far
only been scratched and there is so much immeasurably important
work waiting to be done in this line, i would hesitate to advise a
young man, no matter how gifted or devoted, to adopt plant
breeding as a life work until [Congress] takes some action to
protect this unquestioned rights to some benefit from his
achievements."
In the 1920's, a patent attorney, John
Diener, raised the problem with then Secretary of Agriculture,
Arthur A. Hyde, and suggested introducing legislation to grant broad
patent-like protection to originators of plants and products
thereof, such as flowers, fruit, roots, leaves, seeds, etc.
Unfortunately, the effort met with only limited success but Congress
did pass the Plant Patent Act in 1930 which provided some, but not
all, of the protection proposed to the Secretary of Agriculture.
Even now, though providing more protection than was available to
Luther Burbank, the patent law still does not apply explicitly to
"parts of plants" and, as a result, cut flowers, fruit and other
plant parts or products produced by plants grown outside the U.S.
may be imported without violating U.S. patent rights. However,
legislation is now pending in Congress to correct this larger than a
"747" cargo bay loop hole and plant breeders everywhere should let
Congress know how they feel about it.
The special nature of "plant inventions" did
raise some inherent problems to drafting a patent-like law to
protect plants. For example, before enactment of the Plant Patent
Act, it was considered that two factors prevented plants from being
patentable. One was the belief that plants were products of nature,
even those bred by man, and, therefore, should not be able to be
protected. The other factor was that it was not possible for a plant
to be able to be described in writing in a way required by other
sections of the patent law for other forms of inventions. Patent
applications for other inventions are required to contain a written
description of the invention and the manner of making it sufficient
to enable another person to make and use it. Obviously, a plant
cannot be made by others from a mere written description.
These "problems" were handled very nicely.
The first factor was overcome by requiring some intervention by
"man" (and women) as a prerequisite for patentability. The second
concern about the ability to reproduce the plant invention from a
written description was removed by the practical solution of making
an exception for plants.
The intervention by man was accomplished by
requiring the act of asexual reproduction as a step in making a
patentable plant invention. This was quite reasonable since unless
preserved in some way, new varieties are lost. The legislative
history acknowledged the importance of preservation:
"Whether the new variety is a hybrid,
mutant or sport, there is never more than one specimen of it
produced except through asexual reproduction. For example, without
asexual reproduction there would have been but one true McIntosh
or Greening apple tree. These varieties of apple could not have
been preserved had it not been through human effort in the asexual
reproduction of the two original trees. They could not have been
reproduced true to type by nature through seedlings. The bill,
therefore, proposes to afford through patent protection an
incentive to asexually reproduce new varieties. Many varieties of
apples equally as valuable as the McIntosh or Greening have
undoubtedly been created and disappeared beyond human power of
recovery because no attempt was made to asexually reproduce the
new varieties. The present bill by its patent protection proposes
to give the necessary incentive to preserve new
varieties.
(emphasis added)
Back in 1892 legislation was proposed to
grant patent rights for plant inventions. This legislation was
supported by many prominent individuals, even Thomas Edison who
stated that "nothing that Congress could do to help farming would be
of greater value and permanence than to give to the plant breeder
the same status as the mechanical and chemical inventors now have
through the law". The Plant Patent Act was passed by Congress on May
13, 1930 and was signed by President Hoover on May 23, 1930. It was
the first legislation anywhere in the world to grant patent rights
to plant breeders and was enacted to "afford agriculture, so far as
practicable, the same opportunity to participate in the benefits of
the patent system as has been given to industry, and thus assist in
placing agriculture on a basis of economic equality with
industry."
The original law for plant patent protection
was made as amendments to the general patent law. Specifically, one
section of the existing law was amended to recite:
"Every patent shall contain...a grant to
the patentee...of the exclusive right to make, use, and vend the
invention or discovery (including in the case of a plant
patent the exclusive right to asexually reproduce the
plant).
Another section of the patent law was
amended to recite:
"Any person who has invented or
discovered any new and useful art, machine...or who has invented
or discovered and asexually reproduced any distinct and new
variety of plant other than a tuber propagated
plant,...may...obtain a patent therefor.
This form of the law offering protection to
plants continued until the passage of the 1952 Patent Act when the
plant patent provisions were written as a separate chapter of the
statute. Also, as was done for utility patents in the general patent
law, the plant patent grant was changed from the "exclusive right"
to the "right to exclude others". This change attempted to codify
various court decisions explaining the nature of the right conferred
by a patent which was not a positive right to produce the patented
invention but actually a right to exclude others from doing so.
Another interesting thing that was done after
separating the plant patent sections from other sections dealing
with utility patents, was to explicitly provide that the provisions
of the law relating to patents for inventions "shall apply to
patents for plants, except as otherwise provided." This means that
the sections of the law regarding remedies for infringement of
patents and the requirement for a full disclosure of the invention
also apply to plant patents. Therefore, like applications for
utility patents, plant patent applications must contain as full and
complete a disclosure as reasonably possible of the plant and its
characteristics to distinguish it from related known varieties and
must particularly point out where and in what manner the variety of
plant has been asexually reproduced. However, unlike utility patent
applications, plant patents are expressly excluded from complying
with the requirement that the description enable someone to make the
invention (as set forth in 35 U.S. C. 112). Also unlike utility
patent applications, only a single claim is permitted in a plant
patent and it refers to the plant "shown and described" in the
patent.
In one amendment to the Plant Patent Act, the
law was amended in 1954 to preclude patent protection for plants
found in an uncultivated state. By indicating what was excluded, the
amendment had the effect of broadening the statute to include plants
found in a cultivated state and subsequently asexually reproduced.
At the present time the Plant Patent Act includes the following
provisions:
35 U.S.C. 161:
Whoever invents or discovers and asexually
reproduces any distinct and new variety of plant, including
cultivated spores, mutants, hybrids, and newly found seedlings,
other than a tuber propagated plant or a plant found in an
uncultivated state, may obtain a patent therefor.
The provisions of this title [the general
patent law] relating to patents for inventions shall apply to
patents for plants, except as otherwise provided.
35 U.S.C. 162:
No plant patent shall be declared invalid
for noncompliance with section 112 of this title if the
description is as complete as is reasonably possible.
The claim in the specification shall be in
formal terms to the plant shown and described.
35 U.S.C. 163:
In the case of a plant patent the grant
shall be of the right to exclude others from asexually reproducing
the plant or selling or using the plant so
reproduced.
The owner of a plant patent has a right to
exclude others from asexually reproducing the plant or selling or
using the plant so reproduced. Thus, a plant patent is infringed by
the unauthorized asexual reproduction of the new variety as well as
by the sale or use of such asexually reproduced plants. Any one of
these acts constitutes infringement of the plant patent but use or
sale of lawfully obtained plants does not constitute infringement.
However, unauthorized asexual reproduction of the lawfully purchased
plants of a patented variety would be infringement of the plant
patent. Since those selling or using plants which have been
unlawfully asexually reproduced are separately liable for plant
patent infringement, infringement damages may be significantly
greater for those using infringing plants, such as to produce
commercial products or crops.
Sexual reproduction of the patented variety
would not constitute infringement of the plant patent since the
plant patent rights are limited to the exclusion of others from
asexual reproduction of the plant and not from sexual reproduction,
but sexual reproduction of such plants are not likely to duplicate
the characteristics of the new variety. Query, should asexual
reproduction of sexually reproduced plants that have the same
essential characteristics of the patented variety be regarded as
infringement, or should this be another large loophole that deprives
the original breeders and their inventions of the economic benefit
of their "invention"?
Under amendments to the patent law enacted by
Congress in 1994 following U.S. adherence to GATT, but effective
June 1995, the term of plant patent protection begins when the
patent issues and continues for a period of 20-years from the
application filing date. However, unlike for patents granted under
the general patent law, no maintenance fees are required to maintain
the plant patent in full force and effect; therefore once the plant
patent is granted it is not necessary to pay any additional fees
during the term of the patent.
Since the U.S. was largely an agrarian
society when the Constitution was written and the country was
formed, it is quite remarkable that it took so many years for
Congress to provide an opportunity to protect new varieties of
plants. Unfortunately, even when Congress got around to facing up to
the task they didn't do as good a job as they could. The issue of
lack of protection for "parts of plants" still remains and the
question of what constitutes a "plant variety" capable of protection
was not made clear in the patent law itself. Nonetheless, it is the
"only game in town" and the consequence of not obtaining plant
patent protection for asexually reproducible plant varieties can be
costly both in terms of lost market share and profitability.
Obtaining a plant patent for new varieties provides the possibility
of exclusively enjoying a market for that variety and a chance to
earn additional benefit by licensing others to grow and sell plants
of the protected variety. It's certainly worth considering.
By Vincent Gioia
Commercial designations of plants, that are
not cultivar names, can be protected as trademarks. Many plant
industry businesses have also registered firm names as trademarks
and firms have also obtained registrations for service marks. It has
become increasingly useful to obtain corresponding domain names to
support online marketing and sales. However, increasing attention to
Internet business potential also raises possibilities of
encountering infringement of trademark and service mark rights on
the Internet. It is useful to be aware that trademark rights help in
domain name disputes.
A virtual explosion of domain name
registrations has resulted in numerous conflicts. To resolve these
conflicts, a uniform domain name resolution policy has been created
and implemented through an agreement with the Internet Corporation
for Assigned Names and Numbers (ICANN) and domain main registrars,
including Network Solutions. This policy establishes the rules for
resolving disputes between domain name registrants and owners of
trademarks and service marks that may be the subject of "bad faith"
registration and use of Internet domain names by others. The rules
provide that a complaint may be filed with an ICANN-approved dispute
resolution provider which then appoints one or more panelists having
the power to transfer ownership of the domain name to someone with
trademark or service mark rights to that name. Cost of initiating
this dispute resolution generally starts at about
$1,000.
Only alleged abuse of registration of a domain name
that meets the following requirements may be the subject of a
complaint resolved by the new ICANN dispute resolution procedure.
The requirements for supporting a complaint are:
-
The domain name registered is identical or
confusingly similar to a trademark or service mark in which the
person or entity bringing the complaint has rights; and
-
The domain name registrant has no rights or
legitimate interests in the domain name in question; and
-
The domain name has been registered and is
being used in bad faith.
Theoretically, all of the foregoing are
required to support a complaint.
It is obvious that the need to establish
abusive registration is the most difficult of the three
requirements. However, a review of recent proceedings for domain
name disputes indicates that panelists generally have no problem in
finding "use in bad faith". Some of the situations that are
considered relevant by panelists resolving dispute resolutions
include: (1) the appearance that the domain name was registered
primarily for purpose of selling, renting, or otherwise transferring
the domain name registration to the owner of a trademark or service
mark or to a competitor; or (2) registration of the domain name was
to prevent the owner of a mark from using the mark as a domain name;
or (3) the registration was primarily for the purpose of disrupting
the business of a competitor; or (4) the domain name registrant is
using the domain name to intentionally attempt to attract Internet
users for financial gain.
Those registering domain names should also be
aware that in the event of a conflict with someone that owns
trademark or service mark rights, the dispute resolution process
favors the owners of a trademark or service mark. For example, even
with respect to the issue of whether or not the domain name
registrant has "used" the domain name in bad faith, panels
designated to decide such issues typically employ the slimmest of
reasons to support a holding of bad faith. In many cases, bad faith
may be found even if the domain name registrant has only attempted
to offer the domain name for sale. In such cases, the offer for sale
is considered to establish that the name had been registered and was
being used in bad faith. This also may be the result even if the
domain name registrant has not actually used the domain name but has
merely obtained registration. In similar cases, the panels deciding
the disputes found that a general offer to sell made it "possible to
infer that the domain name was registered and used" and that the
failure to use the domain name provided an inference that it was
registered without a bona fide intent to make a good faith use. In
still another case, a panel held that even where there was no
evidence that there was a website or other online presence using the
domain name, the "passive holding of a domain name" constituted bad
faith based upon the strength of the complaining party's
trademark.
Under the ICANN rules, a panel has the
authority to either direct transfer of the domain name ownership or
to have the domain name canceled. It should also be noted that the
ICANN procedure resolves domain name disputes regardless of where
the registrar, the domain name holder or the complainant is located.
It has been reported that a decision can generally be expected
within sixty (60) days of filing of a complaint. Appearance by an
attorney is not necessary because the required papers can be filed
and the correspondence conducted either by mail or
electronically.
It seems by far the safest approach is to
register a trademark or service mark and acquire rights in the mark.
Once rights in the trademark or service mark are acquired, such as
by national registration, the ability to deal with conflicting
domain names registered by others is considerably enhanced. | 
