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					                                  No Victory for Victoria’s Secret: On                             “Shock and Awe” Trademark: On March 21, 2003, one
                                  March 4, 2003, the U.S. Supreme Court issued in                  day after American-led forces commenced the war in Iraq, Sony
                                  Moseley v. V. Secret Catalogue, Inc. a landmark deci-            Computer Entertainment America filed an intent-to-use applica-
                                  sion on the proof required to obtain relief under                tion for U.S. trademark registration of SHOCK & AWE, for use with
                                  the Federal Trademark Dilution Act of 1995. The                  computer and video game software and as an electronic game to be
                                                            FTDA provides trademark                played real-time over the Internet and local computer networks. In
                                                            owners with a remedy for               response to criticism, Sony later announced that it had withdrawn
                                                            the dilution of “famous”               the application. Reportedly, the phrase SHOCK
                                                            and “distinctive” marks                AND AWE was coined in 1996 by Harlan Ull-
                                                            (which normally includes               man, a military strategist and former U.S. navy
                                                            an injunction against the              pilot. As of May 16, 2003, there were 28 applica-
                                                            defendant’s use of the                 tions pending in the U.S. Patent and Trademark
                                                            mark), even if there is no             Office for registration of trademarks including
                                                            likelihood that consum-                the phrase for a variety of products.1 Several
                                                            ers will be confused as to             applicants have applied to use SHOCK AND
                                                            the source of the goods                AWE for the same goods (e.g., five separate appli-
                                                            or services offered under              cations for fireworks). Consequently, there are
                                Actual dilution required    the mark.1 The Supreme                 likely to be legal conflicts among applicants.2
                                                            Court granted certiorari               —Diane Duhaime
                                  because of differing views among the circuits over
                                  whether the trademark owner must prove actual                    1
                                                                                                    Fireworks, t-shirts, caps, underwear, footwear, musical concert tours,
                                  dilution or only a likelihood of dilution, and held              books, pens, office supplies, eyeglasses, sunglasses, beer mugs, coffee
                                  that the FTDA requires a showing of actual dilu-                 cups, dolls, board games, building blocks, jigsaw puzzles, soccer balls,
                                  tion, rather than a mere likelihood. An in-depth                 beer, wine, vodka, rum, cigars, greeting cards, pesticides, herbicides,
                                  discussion of this landmark decision and how it                  hot and barbeque sauce, energy drinks, dietary supplements, coffee, tea,
                                                                                                   condoms, bumper stickers, golf clubs and golf balls.
                                  is likely to impact owners of famous and distinc-
                                  tive trademarks appears at http://www.jordenusa.                 2
                                                                                                     The shockandawe.com domain name is already taken. The registration
                                  com/PDFs/VictoriasSecret05-03.pdf. —Diane                        record was created on January 24, 2003, for a website that features the
                                                                                                   1996 publication, “Shock and Awe: Achieving Rapid Dominance,” by
                                  Duhaime                                                          Ullman and a co-author.
                                  1
                                      Dilution is defined as “the lessening of the capacity of a


                                  New Top-Level Domain Names                                                 it requires certification that the domain name registrant is
                                                                                                             licensed in the United States in his or her stated profession,
                                  It seems there are a million domain name options                           with, at minimum, annual verification by the registrar
                                  available — com, .net, .org, .biz, .info, and .us and all                  of that status.1 At the outset, eligibility will be limited to
                                  the other country codes. Add to that consideration                         medical doctors, lawyers and CPAs who can prove they
                                  of all of the permutations of the same mark, such as                       are properly licensed and in good standing in the United
                                  yourcompanyname.com, yourcompanynamecorp.                                  States.2 Once approved, registrants will be given an
                                  com, yourcompanynameproducts.com,                                                            appropriate .pro domain name: .med.pro
                                  yourcompanynameonline.com, and                                                               for physicians, .law.pro for lawyers, and
                                  even yourcompanynamesucks.com.                                                              .cpa.pro for CPAs.
                                  Determining how many domain names to
                                  register, either for a company’s own use or                                                 When considering whether to register for .tm
                                  defensively, can quickly snowball out of                                                     and/or .pro domain names, companies should
                                  control. Now, there are two more domains                                                     balance registration and administrative costs
                                  to consider:                                                                                 with the reality that these registrations are
                                                                                                                               available on a first-come, first-served basis.
                                  .tm: Turkmenistan’s country code top-level domain                                            It can often be more expensive to handle a
                                   (ccTLD), which also happens to be the common English                      problematic domain name owned by a third party than it would
LEGAL HORIZONS | 2003, VOL. I




                                   abbreviation for “trademark.” When the registry for this                  have been to obtain registration of the domain name. —Diane
                                   ccTLD opened in 1997, .tm domain names were so popular                    Duhaime & Elizabeth Pasquine
                                   that the registry stopped taking new registrations in 1998.
                                   That has changed. Registration of new domain names
                                                                                                             1
                                                                                                               A verification process is intended to provide consumers
                                   (e.g., yourcompanyname.tm) is now available for ten-year                  with a level of certainty that the domain belongs to a
                                   periods on a first-come, first-served basis.                              licensed professional.
                                                                                                             2
                                                                                                               U.S. organizations that (1) provide medical, legal or
                                  .pro: Registerpro.pro, the official registrar for .pro, a new              accounting services, and (2) employ at least one person
                                   generic top-level domain (gTLD) for physicians, lawyers                   who would qualify for a .pro registration as an individual,
24                                 and accountants, announced plans to begin taking                          may also obtain a .pro registration.
                                   registrations on July 1, 2003. This gTLD is unique in that
Emerging Domain Name Disputes
Intellectual property disputes in                                                       preceded respondent’s domain name
cyberspace continue apace, with the                                                     registration. On the other hand, in
World Intellectual Property Organi-                                                     Jack Russell Terrier Club of America,
zation receiving an average of three                                                    Inc. v. Mckinney, a panel granted
domain cases a day. Familiarity with                                                    the transfer of the domain name
emerging trends is crucial for success-                                                “JRTCA.net” despite the fact that the
ful navigation of the Web:                                                              complainant had not registered the
                                                                                        JRTCA mark at the time the domain
Dodgy Domain Names:                                                                     name was registered, where exclusive
                                                                                        common law use for many years was
An amendment to the Child                                                               demonstrated and the respondent
Abduction Prevention Act imposes                                                        registered the domain name with
criminal sanctions on pornographers                                                     knowledge of the prior use.
who deliberately mask websites
behind innocuous-sounding domain                                                       Newly available Internationalized
names. These “typo squatters”                                                          Domain Names are represented by a
specialize in generating profits for              Cyberpirates sail the Seven Seas       native language script, such as Arabic
pornographic sites by registering                                                       or French. Prior to the introduction
domain names similar to or                                                              of IDNs, native language script users
containing typical misspellings of           renewal reminders to sell services         were responsible for translating
familiar trademarks.                         and domain names to registrants.           names before registration. Now
                                                                                        companies can register domain names
Cyber Snatchers:                             Post Dating Trademarks:                    with foreign characters, such as
                                                                                       “café.fr” or “noël.fr”. The use of IDNs
“Detagging” occurs when a                    This occurs when a party’s trademark       could have serious legal and economic
 registration service provider deletes a     comes into existence after the             effects on current trademark holders:
 name from the registry for failure to       registration of the domain name by         for example, the registration of
 pay renewal fees. “Cyber snatchers”         another. In Transpark LLC v. Network      “café.fr” may divert traffic from the
 quickly register the name in hopes of       Administrator, an arbitration panel        pre-existing domain name “cafe.fr”.
 blackmailing the original registrant.       ruled against a complainant for           —Enrique D. Arana & Andres F. Chagui
 In addition, direct mailers send bogus      failure to demonstrate a use that


Do You Know a Trademark When You See One?
First in a series of articles on trademark                                             have for the brand; and that value
law:                                                                                   increases as consumers come to trust
                                                                                       that the products sold under the
Each day the average U.S. consumer                                                     trademark will meet a certain level of
comes into contact with more than                                                      quality and reliability.1
200 trademarks. Think back to your
first moments after awakening this                                                     To maximize the investment and
morning. Did you hit the snooze                                                        return a company can realize from its
button on your Sony® alarm clock                                                       marks, it will want to choose a strong
radio and then lie back down on                                                        mark for its new products. The next
your soft Wamsutta® sheets? Did you                                                    article in this series will familiarize
brush your teeth with an Oral B®                                                       the reader with the continuum of
toothbrush and Crest® toothpaste,                                                      trademark categories, from weak to
shower with Dove® soap and wash                        Nurturing goodwill              strong, and will discuss how a “strong”
your hair with Prell® shampoo?                                                         mark affords its owner greater legal
                                                                                       rights in enforcing and defending
                                                                                                                                     WWW.JORDENUSA.COM




A trademark is any word, name,               sake of simplicity, the terms trademark   the mark. —Diane Duhaime &
symbol, design, device, logo, slogan,        and mark are commonly used to refer       Elizabeth Pasquine
or any combination thereof, used by          to both trademarks and service marks.
a business to identify and distinguish                                                 1
                                                                                        According to a recent survey, the top five
its goods from the goods of others,          A company’s trademarks are among          global brands, Coca-Cola®, Microsoft®,
                                             its most valuable assets. Their value     IBM®, GE® and Nokia®, are collectively
while a service mark is used to identify                                               estimated to be worth over $264 billion.
and distinguish its services. For the        reflects the goodwill consumers                                                           25
                                UCITA Redux II – “Bomb Shelter” Legislation —Diane Duhaime
                                     In our last issue, we reported that                                               provisions that would apply UCITA
                                the National Conference of Commis-                                                     from another state. The legislation
                                sioners on Uniform State Laws adopted                                                  generally provides that a computer
                                amendments to the Uniform Computer                                                     information agreement shall be voidable
                                Information Transactions Act in the                                                    if a party is attempting to enforce
                                hopes that more states would adopt                                                     UCITA as passed in another state
                                it. Currently, Virginia and Maryland                                                   against a person in the subject state.
                                remain the only two states that have
                                adopted this uniform law to govern                                                    The most recent blow to UCITA
                                contracts for the acquisition of com-               The UCITA Monument             landed on February 10, 2003, at
                                puter information (e.g., clickwrap and                                             the ABA mid-year meeting, when a
                                shrinkwrap software license agreements).                        resolution recommending the approval of UCITA to the
                                                                                                ABA House of Delegates was withdrawn by NCCUSL.
                                     UCITA has been the subject of much controversy and         Just before the ABA meeting, seven of the nine members
                                criticism. It has been characterized by some as harmful to      of the ABA UCITA Working Group advised the House
                                consumers, and has been actively opposed by a variety of        of Delegates not to support the resolution. In addition,
                                groups, including the American Library Association and          the President of the American Law Institute advised the
                                over 30 state attorneys general. Three states (Iowa, North      House of Delegates that he would not vote to approve
                                Carolina and West Virginia) have gone so far as to pass         UCITA. Based on these recent events, passage of UCITA
                                anti-UCITA laws, commonly known as “bomb-shelter”               in another state does not seem likely in the foreseeable
                                legislation, to protect in-state consumers from contract        future.

                                Spam, Rehashed —Diane Duhaime & Elizabeth Pasquine
                                     Spam, or unsolicited, bulk, commercial e-mail, is
                                an ever-increasing problem for companies and individu-             In May 2003, Earthlink won a $16.4 million judgment and
                                                                                                  a permanent injunction against the “Buffalo Spammer”
                                als alike. New legislative and business developments are          after spending more than a year tracking him down. In that
                                                                       reported almost daily.     time, he is estimated to have sent 825 million unsolicited e-
                                                                       Internet service pro-      mails, using 340 stolen identities. The Buffalo Spammer was
                                                                       viders estimate that       subsequently charged in New York with four felony and two
                                                                      40%- 70% of their           misdemeanor charges, and has the dubious distinction of being
                                                                                                  the first person charged under the state’s new identity theft
                                                                       daily e-mail traffic       law. He faces up to seven years in jail.
                                                                       consists of spam: two
                                                                       ISPs each claim to
                                                                       block more than 2          At least 27 states have passed anti-spam laws of varying strength.
                                                                       billion spam e-mails       Virginia, home of AOL and Verizon, passed the strongest
                                                                       per day, and the FTC       anti-spam law in the country at the end of April 2003. Also,
                                     Covering all in its path          reports that nearly        Federal proposals are being debated. The Senate CAN-SPAM
                                                                                                  Act would allow Internet users to opt out of receiving spam,
                                                                       two-thirds of all spam     require a valid return e-mail address and impose up to one
                                e-mails are sent with a false return address or a misleading      year in jail and a $10 fine per spam e-mail, up to $500,000, and
                                subject line. The FTC recently held a conference to bring         would allow ISPs and state attorneys general to sue spammers.1
                                together spammers and anti-spammers to discuss solu-              The House Reduce Spam Act would require that advertising
                                tions to the problem. In the end, the participants couldn’t       e-mails be labeled ADV in the subject line, prohibit false return
                                                                                                  e-mail addresses and subject lines, allow consumers to sue for
                                even agree on a definition of spam. The cost to U.S. busi-        up to $10 per spam e-mail, and provide for penalties of up to
                                nesses is rising and companies are banding together to find       one year in jail and fines to be established by the FTC. It also
                                ways to fight. Several have filed lawsuits against alleged        includes a provision for a bounty to be paid to consumers who
                                spammers (see inset).                                             catch illegal spammers violating the Act. Forty-four states and
                                                                                                  the District of Columbia have announced that they would not
LEGAL HORIZONS | 2003, VOL. I




                                                                                                  support either proposal because both would weaken consumer
                                    If a federal anti-spam law is enacted, it will have to        protection currently provided in the states that have anti-spam
                                clear the First Amendment hurdle that has defeated so             legislation.2
                                many well-intentioned bills in the past. Furthermore, state
                                and federal laws have a limited ability to stop spammers          1
                                                                                                   The latest Senate proposal, introduced on May 13, 2003, would ban
                                operating outside the United States, so international             false headers, subject lines and return e-mail addresses, provide an
                                                                                                  opt-out option for consumers, and prohibit the practice of scanning
                                co-operation will ultimately be necessary to control the          websites for new e-mail addresses to spam.
                                problem. The issue is far from resolved, so you’ll probably       2
                                                                                                    The ACLI reportedly has no official position on the CAN-SPAM
                                have ample opportunity to keep hitting that delete key.           proposal, but has suggested that a private right of action for ISPs and
                                                                                                  a right for state attorneys general to file class action lawsuits are not
                                                                                                  needed.
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