Does a Website Name Constitute A Trademark?
A domain name can qualify as a trademark when it is used in connection with a website that offers services to the public.
By Navid Soleymani, our Los Angeles trademark lawyer
A question that our Los Angeles intellectual property lawyers commonly address is whether a website name can be a trademark.
A domain name can qualify as a trademark when it is used in connection with a website that offers services to the public. However, only some types of commercial domain names qualify for trademark protection. For instance, while domain names that use common or descriptive terms, such as pets.com or stamps.com, may work very well to bring users to a website, they usually do not qualify for much trademark protection. This means that owners of such domain names generally won’t have much luck stopping the use of these words and phrases in other domain names based on trademark laws. In other words, by using common terms that are the generic name for the service (for example, “dictionary.com”) or by using words that merely describe the service or some aspect of it (for example, “returnbuy.com”), the owner of the name will have less trademark rights against the users of similar domain names than she would if her domain name was distinctive.
If the domain name is subject to trademark protection, the owner can stop others from using a domain name that is confusingly similar and thereby infringes on the owner’s trademark. In trying to stop the infringing use, the plaintiff may try to obtain a preliminary injunction – which is a court order to stop the infringing use, pending a trial.
A plaintiff is entitled to a preliminary injunction in a trademark dispute if it can demonstrate either “(1) a combination of probable success on the merits and the possibility of irreparable injury or (2) the existence of serious questions going to the merits and that the balance of hardships tips sharply in [its] favor.” Grocery Outlet, Inc. v. Albertson’s Inc., 497 F.3d 949, 951 (9th Cir. 2007) (citation and quotation omitted); Garden of Life, Inc. v. Letzer, 318 F.Supp.2d 946, 956 (C.D. Cal. 2004).
A. A Probable Success on the Merits
To prevail on its service mark infringement and unfair competition claims, the plaintiff’s trademark attorneys “must show that: (1) [it] ha[s] a valid, protectable trademark interest in [the ADL Marks]; and (2) the defendant is using a confusingly similar mark[s].” Nissan Motor Co., Ltd. v. Nissan Computer Corp., 89 F.Supp.2d 1154, 1162 (C.D. Cal. 2000). The trademark lawyers representing a plaintiff may obtain a preliminary injunction, if it demonstrates that it has a valid, protectable service mark, is the senior user of the mark, and the defendant is using confusingly similar marks in its domain name.
1. Do the marks belong to the Plaintiff?
The law firm representing a trademark plaintiff must show that it has a valid, protectable mark and is the senior user of the mark.
“It is axiomatic in trademark law that the standard test of ownership is priority of use. To acquire ownership of a trademark … the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.” Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). “Use in commerce” is defined as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. . . . ” 15 U.S.C. § 1127.
Federal registration of a trademark “constitutes prima facie evidence of the validity of the registered mark and of [the registrant’s] exclusive right to use the mark on the goods and services specified in the registration.’” Garden of Life, 318 F. Supp. 2d at 957 (citation omitted). The filing date of a federal trademark registration application is presumed to be the first use date of that trademark. Brookfield, 174 F.2d at 1051, n.13.
Federal registration, however, is not required to obtain trademark protection, because “common law rights are acquired … by adopting and using the mark[s] in connection with services rendered.” Chance v. Pac-Tel Teletrac Inc., 242 F.3d at 1156 (citations omitted); see also Garden of Life, 318 F. Supp. 2d at 957 (stating that registration does not affect any common law rights in the mark).
In addition to trademark protection, a business is entitled to protection for its “trade names” – the names used by the business to identify itself. The standards for trade name protection are similar to those of trademark protection. Accuride International, Inc. v. Accuride Corp., 871 F.2d 1531, 1535 (9th Cir. 1989) (“trade name infringement is based on considerations similar to trade-mark infringement, and … both preclude one from using another’s distinctive mark or name if it will cause a likelihood of confusion or deception as to the origin of the goods”) (quotations omitted). As with trademarks, ownership of trade names turns on priority of use. Stephen W. Boney, Inc. v. Boney Services, Inc., 127 F.3d 821, 828 (9th Cir. 1997).
2. Can the Plaintiff Demonstrate Likely Or Actual Confusion?
Likelihood of confusion is the “core element” of trademark infringement. Perfumebay.com Inc. v. ebay Inc., 2007 U.S. App. LEXIS 25726, at *15-16 (9th Cir. Nov. 5, 2007). In order to obtain preliminary injunctive relief, a lawyer representing the plaintiff in a trademark case must show a reasonable likelihood of proving that the defendant is “using a mark confusingly similar to [plaintiff’s] valid, protectable trademark.” Brookfield, 174 F.3d at 1046; see also GoTo.com, Inc. v. The Walt Disney Co., 202 F.3d 1199, 1205 n.5 (9th Cir. 2000) (noting that “a plaintiff is . . . entitled to a preliminary injunction . . . simply when it shows a likelihood of confusion”).
Likelihood of confusion can be demonstrated merely by showing “initial interest confusion,” Nissan, 89 F.Supp.2d at 1163, which “occurs when the defendant uses the plaintiff’s trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.” Interstellar Starship Servs. v. Epix, Inc., 304 F.3d 936, 941 (9th Cir. 2002) (citation and quotation omitted). The initial interest confusion is heightened when the marks are used on the internet. See Brookfield, 174 F.3d at 1062, 1064; See Tellem Decl., ¶19, Ex. S. As the court explained in Fairbanks Capital Corp. v. Kenney, 303 F.Supp.2d 583, 590 (D.Md. 2003):
[I]t is highly likely that large numbers of reasonably alert users of the World Wide Web who are searching for Fairbanks’ website, using commonly-available search engines, will land on defendants’ website instead of on Fairbanks’ site, and that for several moments . . ., such users will experience genuine confusion over the source of the information being provided at the site. (Defendants’ website’s homepage announced, ‘ Welcome TO THE FAIRBANKS RESOURCE SITE,’ indicating that the website is owned, sponsored, or otherwise controlled by Fairbanks).
Courts in the Ninth Circuit (which cover Los Angeles trademark cases) assess the likelihood of confusion by examining the following factors (hereafter, “Sleekcraft factors”): (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) the likelihood of expansion of the product lines. Garden of Life, 318 F. Supp. 2d at 963-964 citing Sleekcraft, 599 F.2d at 348-349. “The test is a fluid one and the plaintiff need not satisfy every factor, provided that strong showings are made with respect to some of them.” Perfumebay.com, 2007 U.S. App. LEXIS 25726, at *16 (citation and quotation omitted).
In the context of the Internet, “the three most important Sleekcraft factors in evaluating a likelihood of confusion are (1) the similarity of the marks, (2) the relatedness of the goods and services, and (3) the parties’ simultaneous use of the Web as a marketing channel.” Perfumebay.com, 2007 U.S. App. LEXIS 25276 at *16 (citation and quotation omitted). “When this . . . internet trinity suggests confusion is likely, the other factors must weigh strongly against a likelihood of confusion to avoid the finding of infringement.” Id. at *17.
(a) How Similar Are The Marks?
“The greater the similarity between two marks, the greater the likelihood of confusion.” Garden of Life, 318 F. Supp. 2d at 964. “Similarity of the marks is tested on three levels: sight, sound, and meaning.” Sleekcraft, 599 F.2d at 351. The marks are to be considered not in the abstract, but rather “‘in light of the way the marks are encountered in the marketplace.’” Perfumebay.com, 2007 U.S. App. LEXIS 25276, at *18 (citation omitted).
The trademark plaintiff will want to show that its marks in its domain name are functionally identical to the defendant’s domain name addresses. See, e.g., Nissan, 89 F. Supp. 2d at 1163 (“[t]he marks at issue in this case are the plaintiffs’ ‘Nissan’ mark and the defendant’s ‘nissan.com’ and ‘nissan.net’ Internet domain names. The only differences between these marks are the domain name suffixes, which merely signify the domain level. The marks are thus, ‘for all intents and purposes, identical in terms of sight, sound, and meaning.’”) (emphasis added) (citation omitted).
The trademark defendant’s addition of qualifying words such as USA, online, news, and info in its domain names may be insufficient to prevent confusion with the trademark of a plaintiff. See Anti-Defamation League of B’Nai B’Rith v. Nat’l Mexican Am. Anti-Defamation Comm., Inc., 510 F.2d at 1247 (qualifying geographical terms “National Mexican American” in Defendant’s name (“National Mexican American Anti-Defamation Committee”) were insufficient to avoid likelihood of confusion with Plaintiff Anti-Defamation League).
Indeed, “[t]he presence of a generic term can make little difference in comparing otherwise similar marks.” McCarthy on Trademarks and Unfair Competition, 4th ed. (2007) Vol. 4, § 23:49; see also, Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019 (C.C.P.A. 1977) (finding that descriptive element – the term, “California” – in defendant’s mark that incorporated plaintiff’s entire mark, was insufficient to avoid confusion); Miss Universe, Inc. v. Flesher, 433 F. Supp. 271 (C.D. Cal. 1977) (finding that addition of qualifying term “nude” was insufficient to avoid confusion with plaintiff’s “Miss USA” mark; granting preliminary injunction).
The similarity of the marks is particularly significant, if the trademark plaintiff has a “strong” mark. See Perfumebay.com, 2007 U.S. App. LEXIS 25726 at *18 (“The fact that the similarity involves the use of a much stronger mark would make the similarity weigh more heavily in the analysis of this factor”) (citation omitted).
A mark is strong if the words are suggestive in that “‘imagination’ or a ‘mental leap’ is required in order to reach a conclusion as to the nature of the product [or service] being referenced,” and are therefore inherently distinctive and strong. Filipino Yellow Pages, Inc. v. Asian Journal Publs., Inc., 198 F.3d 1143, 1147 (9th Cir. 1999) (citations omitted); see, e.g., Anti-Defamation League of B’Nai B’Rith v. Arab Anti-Defamation League, 340 N.Y.S.2d at 544 (N.Y. Sup. Ct. 1972) (finding that the term Anti-Defamation League is associated by the public with ADL and the term “ADL is not only an abbreviated symbol, but it, too, has a synonymous link with B’nai B’rith and plaintiff.”). Such popularity and recognition establish the strength of the plaintiff’s marks. See Garden of Life, 318 F. Supp. 2d at 967 (finding for plaintiff on this factor due to popularity of the mark and plaintiff’s marketing efforts).
(b) Are The Services Are Related?
The lawyers representing a trademark plaintiff have a stronger case if it is unclear what goods, services or information the defendant is offering to the public that are distinctive from those of the plaintiff. See Garden of Life, 318 F. Supp. 2d at 964.
The services provided by a defendant need not “be identical or directly competitive [to plaintiff’s]. . . .They need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchaser under circumstances that could give rise to the mistaken belief that the goods come from a common source.” Id. “‘[E]ven services that are not identical are capable of confusing the public.’” Perfumebay.com, 2007 U.S. App. LEXIS 25726, at *19 (citation omitted).
(c) Is the Defendant Using The Same Marketing Channels?
The lawyers or law firm representing a trademark plaintiff can also rely on the fact that both parties are utilizing the Internet as a “marketing and advertising facility, a factor that courts have consistently recognized as exacerbating the likelihood of confusion. The Web, ‘as a marketing channel, is particularly susceptible to a likelihood of confusion’ ‘since . . . it allows for competing marks to be encountered at the same time, on the same screen.’” Perfumebay.com, 2007 U.S. App. LEXIS 25726, at *19-*20 (citations omitted) (finding in favor of plaintiff on marketing channel factor solely on basis of simultaneous use of the Internet).
The Ninth Circuit (the federal courts with jurisdiction over California trademark matters) analyzed the dangers of consumer confusion in a similar Internet context in Brookfield, 174 F.3d at 1057 (citations omitted):
Given the virtual identity of ‘moviebuff.com’ and ‘MovieBuff,’ the relatedness of the products and services accompanied by those marks, and the companies’ simultaneous use of the Web as a marketing and advertising tool, many forms of consumer confusion are likely to result. . . . In the Internet context, in particular, entering a web site takes little effort-usually one click from a linked site or a search engine’s list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership. Alternatively, they may incorrectly believe that West Coast licensed ‘MovieBuff’ from Brookfield, or that Brookfield otherwise sponsored West Coast’s database. Other consumers may simply believe that West Coast bought out Brookfield or that they are related companies.
3. Other Factors That Plaintiff May Rely Upon
If the three factors above support the plaintiff, the court may grant a preliminary injunction, unless “the remaining Sleekcraft factors. . .‘weigh strongly against a likelihood of confusion . . . .’” Perfumebay.com, 2007 U.S. App. LEXIS 25726 at *20 (citation omitted); Garden of Life, 318 F. Supp. 2d at 964.
(a) Is There Strong Evidence of Actual Confusion?
“‘[E]vidence that the use of the two marks has already led to confusion is persuasive proof that future confusion is likely.’” GoTo.com, 202 F.3d at 1209 (citation omitted). This is the rare case where there is evidence of actual confusion. For example, the plaintiff may have received correspondence and phone calls from members of the public that have been diverted from its website by the defendant’s infringing websites. .
(b) Are Users Unlikely to Exercise a High Degree of Care?
“‘Likelihood of confusion is determined on the basis of a “reasonably prudent consumer.” Brookfield, 174 F.3d at 1060 (citation and quotation omitted). In general, “[w]eb surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership.” GoTo.com, 202 F.3d at 1209 (citation and quotation omitted). “Internet users do not undergo a highly sophisticated analysis when searching for domain names.” Audi AG v. D’Amato, 469 F.3d 534, 544 (6th Cir. 2006) (citation and quotation omitted). Further, “[w]hen goods are expensive, buyers can be expected to exercise greater care in their purchases, and therefore confusion as to the source of the goods is less likely to occur.” Garden of Life , 318 F. Supp. 2d at 967 (citing Sleekcraft, 599 F.2d at 353).
(c) Did The Defendant Knowingly and Intentionally Adopt Marks Similar to the Plaintiff’s Marks?
“When the alleged infringer knowingly adopts a mark similar to another’s, reviewing courts presume that the defendant can accomplish his purpose: that is, that the public will be deceived.” Garden of Life, 318 F. Supp. 2d at 966 (citation and quotation omitted).
Thus, if the trademark plaintiff can show that the defendant was aware of its marks, courts often presume that the defendant’s purpose in registering his domain names was to deceive and misdirect internet users searching for the plaintiff’s website.
(d) Will Defendant Continue to Compete with Plaintiff?
The plaintiff’s case is enhanced if it can demonstrate a strong likelihood that the trademark defendant will continue to operate websites that compete with plaintiff’s services. Sleekcraft, 599 F.2d at 354 (“a ‘strong possibility’ that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing.”).
B. Plaintiff’s Showing of Irreparable Harm If the Injunction Is Not Granted
In addition to demonstrating a likelihood of success on the merits of its trademark infringement claims, the lawyers representing a trademark plaintiff may also obtain a preliminary injunction by demonstrating irreparable harm.
“In trademark infringement cases, if the plaintiff demonstrates a likelihood of success on the merits (by showing likelihood of confusion), the Court will presume irreparable injury because trademark damages are, by their very nature, irreparable. This presumption effectively conflates the dual inquiries of this prong into the single question of whether the plaintiff has shown a likelihood of success on the merits.” Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F. Supp. 2d 1214, 1221 (C.D. Cal. 2004) (citation and quotation omitted).
Thus, the plaintiff should try to gather and submit evidence that consumers have been actually confused and have been diverted to defendant’s infringing sites.
The area of law relating to trademarks and trade names is a complicated area requiting expertise. Our Los Angeles lawyers focus on trademark and other forms of intellectual property. Please call our trademark lawyers for more information.