Eric Goldman’s Helpful Hints

To Knowing Your Trademark Terms!

Likelihood of Confusion

Seventh Circuit “digits” of confusion (Forum, Schwinn, AHP):

• mark similarity
• product similarity
• area and manner of mark’s use
• consumer care
• mark strength
• actual confusion
• intent to palm-off

Dilution

(1) mark is “famous”

- degree of distinctiveness

- duration/extent of mark use

- duration/extent of advertising and publicity

- geography of mark’s trading area

- trade channels for goods and services associated with mark

- degree of mark recognition

- nature and extent of similar marks

- mark registered?

(2) defendant used in commerce

(3) defendant’s use began after the mark became famous

(4) dilution (lessening of a famous mark’s capacity to identify/distinguish goods or services)

Uniform Dispute Resolution Procedure

(1) the domain name is confusing similar (or identical) to a third party’s mark

(2) the registrant has no legitimate interests in the name

But registrant can show legitimate rights by:

- actual or planned bona fide offering of goods/services;

- it is commonly known by the domain name; or

- making a legitimate noncommercial or fair use without intent for commercial gain, misleading diversion of traffic, or dilution.

(3) the name is being used in bad faith:

- acquired the name for profitable resale;

- registered the name to block the legitimate TM owner if a pattern can be shown;

- acquired name to disrupt a competitor; or

- name is intended to attract attention to site by creating a likelihood of confusion.

Anticybersquatting Consumer Protection Act

(1) Domain name registrant registers a domain name containing a third party trademark

(2) has a bad faith intent to profit from the domain name

- the registrant’s IP rights in the domain name

- if the domain name contains the registrant’s real name

- the use of the domain name in a bona fide offering of goods/services

- a bona fide noncommercial or fair use of the domain name

- an intent to divert consumers in a way that harms the trademark owner’s goodwill

- an offer to sell the domain name without having used it for a bona fide offering of goods/services

- providing false contact info

- multiple bogus registrations

- distinctiveness/famousness of the mark

(3) registers, traffics in or uses a domain name that is identical or confusingly similar to the mark or, in the case of a famous mark, dilutes it.