Federal Trademark Infringement- Likelihood of Consumer Confusion (Lanham Act ?43(a))
a)Section 4 (a) provides that the plaintiff must prove the following: 1) that the defendant?s domain name is identical or confusingly similar to a trademark or service mark in which the plaintiff has rights; and 2) the defendant has no rights or legitimate interests in respect of the domain name; and 3) the domain name has been registered and is being used in bad faith.
Under this section of the act, the court must first evaluate whether or not the defendant’s domain name is identical or confusingly similar to a trademark or service mark in which the plaintiff has rights. In evaluating the likelihood of confusion, the court may look at a variety of factors. Some of these may include: similarity of sight, sound or meaning between marks, the strength of the plaintiff’s mark, the defendant’s intent or bad faith in adopting a similar mark, the proximity or relatedness of goods, instances of consumers’ actual confusion, marketing channels, the sophistication of goods, and the likelihood of expansion.
The marks in question are identical in sound, meaning and spelling. The plaintiff is the registered owner of the US service mark “48 Hours” and device in Class 41 for “television news program services.” The defendant is the registered owner of “www.48Hours.com.” They differ only in sight for the defendant?s logo is featured in differing font and color from that of Plaintiff?s.
The strength of Plaintiff?s mark is unquestionable. They have asserted 12 years of use of the 48 hours mark. Throughout the United States they have vast notoriety as a television news program. ?The more likely a mark is to be remembered and associated in the public mind with the mark?s owner, the greater protection the mark is accorded by trademark laws.? (Kenner Parker Toys Inc. v. Rose Art Indus., Inc.,)
In terms of the defendant?s intent or bad faith, they were aware of the existence of the television news show prior to the conception of their 48 Hours.com business plans. (This was declared by the admissions of the principals of VanityMail to having watched the plaintiff?s news program.) With this information, they proceeded to register the mark. It is unclear as to what the defendant?s intent was in choosing this domain name. None of their services relate to any 48-hour theme of any sort. There is no evidence of Defendant?s bad faith in using the name.
The two parties do share the same marketing channels. In GoTo.com, Inc., v. The Walt Disney Company, the plaintiff sought a preliminary injunction because Defendant?s commercially used logo on the World Wide Web was remarkably similar to Plaintiff?s. The court found that, ?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.?
As for sophistication, any competent computer user may be able to access a web site. The GoTo case also found that ?Navigating amongst web sites involves practically no effort whatsoever, and arguments that Web users exercise a great deal of care before clicking hyperlinks is unconvincing.?
The final issue of the likelihood of expansion may be addressed by the defendant?s presently poster logo, which reads ?Coming Soon: A Unique Experience for Discerning Tastes.? Additionally, at the bottom of the screen, there is a notation stating ?Please direct any inquiries about our upcoming service to?? Obviously, the defendant does have plans for expansion of some sort.
b)For the above-stated reasons, the plaintiff should not be granted preliminary injunction on the basis of this claim. GoTo.com, Inc., v. The Walt Disney Company, found that ??use of remarkably similar trademarks on different web sites creates a likelihood of confusion amongst Web users.? Federal trademark infringement guidelines state that the plaintiff must establish all 3 requirements listed above. The plaintiff is able to prove that 1) the mark is identical and 2) that the defendant has no rights or legitimate interests in the name but fails to meet the third requirement. Though the name is registered, there is no proof that it is being used in bad faith. Thus preliminary injunction should not be granted under the Lanham Act ?43(a).
Federal Trademark Dilution Act of 1995 (Lanham Act ?43 (c))
a)This section of the Lanham Act differs from section 43 (a) in that it made the notion of dilution a federal-law concern. Section 43 (c) does not require competition between parties and a likelihood of confusion to present a claim for relief. The standards for measuring dilution are quite different from those of likelihood of confusion.
In Panavision Int?l, L.P. v. Toeppen, the question was whether the defendant violated federal or state law by intentionally registering the plaintiff?s trademarks as his Internet domain names for the purpose of exacting payment from the plaintiff in exchange for the names. The court found that, ?injunctive relief is available under the Federal Trademark Dilution Act if a plaintiff can establish that 1) its mark is famous; 2) the defendant is making commercial use of the mark in commerce; 3) the defendant?s use began after the plaintiff?s mark became famous; and 4) the defendant?s use presents a likelihood of dilution of the distinctive value of the mark.?
b)The court must first look at whether or not Plaintiff?s mark is in fact famous. The requirements of whether or not a mark is famous must meet the following criteria: 1) the degree of inherent or acquired distinctiveness of the mark; 2) the duration and extent of use of the mark in connection with the goods or services with which the mark is used 3) the duration and extent of advertising and publicity of the mark; 4) the geographical extent of the trading area in which the mark is used; 5) the channels of trade for the goods or service with which the mark is used; 6) the degree of recognition of the mark in the trading areas and channels of trade used by the mark?s owner and the person against whom the injunction is sought; 7) the nature and extent of use of the same or similar marks by third parties; and 8) whether the mark was registered? on the principal register.
In Panavision Int?l, L.P. v. Toeppen, the court found Panavision marks to be famous marks. Panavision owned the federal registration for the marks and it developed a strong secondary meaning because of Panavision?s long period of exclusive use of the mark and its status as a major supplier of photographic equipment. In the instant case, the plaintiff has used the 48 Hours logo for over 12 years. The plaintiff owns the federal registration of the 48 Hours mark. All of the requirements for famousness are met as discussed above in section 43 (a).
The defendant is using the domain name as a means of commercial use in commerce. They provide yacht charters and management services to individuals and corporations in the Caribbean area. The website contains an image of a harbor filled with boats. There is also an e-mail address provided at the bottom to direct customer inquiries to. This proves that the site is being used as an advertisement to solicit business. There are multiple banners from sponsors on the page as well. This verifies that the defendant is making money from the use of this site and therefore, the domain name.
The plaintiff has used its 49 Hours marks since at least January 1988. Throughout the 12 years, the mark has gained recognition throughout the United States as a television news show. The defendant registered the domain name in May of 1997. Therefore, plaintiff?s mark had already become famous.