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.
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