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  1. Start point • Company has a website registered in its trademarked name: Peterbuilttrucks.com. It has concern about the risk of sites attacking its products as being below standard and about the various sites of dealers around the country that sell used Peter Built trucks misdirecting customers away from its site. What steps, if any, can it take to protect itself. • Sam hates GM motors because of the defective truck he bought. Can he publicize his problems on Internet?

  2. Basic TM tools • Issue: protecting area around a name • TM infringement: • likelihood of confusion • Multi-factor test • First Amendment and descriptive defenses • ACPA • Domain name focus • BF intent to profit • Dilution • Least broad and most uncertain • “Famous” marks entitled to injunction and damages if dilution is intentional

  3. Dilution expanded • Dilution: "lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence of‑‑ (1) competition between the owner of the mark and other parties, or (2) likelihood of confusion, mistake, or deception.” Section 1127 • Tarnish or blurring – of the mark, not the products • Others: free riding • Famous: see factors

  4. Used and resale • Issue • Ty case: bargainbeanies.com • Beanie Babies • No confusion – except minor issue • Disclaimer of affiliation • Not competing producer • Dilution? • Famous • Note the issue about whether must be national or can be local.

  5. Dilution and beanies • Three concerns • Tiffany illustration • Restaurant • “There is little danger that the consuming public will think it's dealing with a branch of the Tiffany jewelry store if it patronizes this restaurant. But when consumers next see the name "Tiffany" they may think about both the restaurant and the jewelry store” • Blurring • Striptease joint? • “Consumers will not think the striptease joint under common ownership with the jewelry store. But because of the inveterate tendency of the human mind to proceed by association, every time they think of the word "Tiffany" their image of the fancy jewelry store will be tarnished by the association of the word with the strip joint.” • Prevent free-riding. Not articulated in case law – e.g., not the law!

  6. This case • Not producing a distinct , different product • Selling the same product – “fair use” • Marketing strategy depends on after market • Seeks to prevent name from becoming generic – e.g., thermos – will not permit this. Why? • Social cost and social benefit from losing a mark in this manner. • Extensive litigation

  7. Harmful use • PETA case: “peta.org”: Eat animals information • TM infringe? • Use in commerce • Links to over 30 commercial sites • In connection with goods • Prevented others obtaining • Links to sites • Parody issue? Its confusing, but it’s a parody • No simultaneous use – first message vs second message • That it is the original and that it is not the original

  8. ACPA Issue? Bad Faith • (I) no intellectual property right in peta.org; • (II) peta.org is not Doughney's name; • (III) no prior use of peta.org in the bona fide offering of goods or services; • (IV) used the PETA Mark in a commercial manner; • (V) "clearly intended to confuse, mislead and divert internet users into accessing his web site which contained information antithetical and therefore harmful to the goodwill represented by the PETA Mark"; • (VI) made statements on his web site and in the press recommending that PETA attempt to "settle" with him and "make him an offer"; • (VII) made false statements when registering the domain name; nd • (VIII) registered other domain names that are identical or similar to the marks or names of other famous people and organizations.

  9. Taubman • Mishkof sites about new mall • Fan base originally? Shift to critique and .sucks site • Shopsatwillowbend.com • 1) taubmansucks.com; 2) shopsatwillowbendsucks.com; 3) theshopsatwillowbendsucks.com; etc. • Defense? • Is it a commercial use? • 1st amend? If Mishkoff's use is commercial, then, and only then, do we analyze his use for a likelihood of confusion. If Mishkoff's use is also confusing, then it is misleading commercial speech, and outside the First Amendment. • Not issue of intent • Minimal links • Accepted offer to sell

  10. Even if • Under Lanham Act jurisprudence, it is irrelevant whether customers would be confused as to the origin of the websites, unless there is confusion as to the origin of the respective products. • Disclaimer and link to correct site • Use of Taubman's mark in "taubmansucks.com" is purely an exhibition of Free Speech, and the Lanham Act is not invoked. • Even if commercial, its not confusing • And although economic damage might be an intended effect of Mishkoff's expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business…. In fact, Taubman concedes that Mishkoff is "free to shout 'Taubman Sucks!' from the rooftops...." We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit …

  11. TMI case • Maxwell complains about Trendmaker • www.trendmakerhome.com‑‑ resembled TMI's TrendMaker Homes mark. • Expires, new register – trendmakerhome.info • ACPA claim and dilution claim • Commercial Use Requirement – both statutes? • Is Maxwell’s use commercial? • Mixed use argument • Admittedly, Maxwell added the Treasure Chest to draw more people to his site so that they would see his story. This intent does not make his site commercial, however. Maxwell never accepted payment for a listing on the Treasure Chest, and he charged no money for viewing it. Further, TMI presented no evidence that Maxwell had any intent to ever charge money for using the site. • Here, the paradigmatic type of harm ACPA addresses is not present.

  12. End Issue • Company has a website registered in its trademarked name: Peterbuilttrucks.com. It has concern about the risk of sites attacking its products as being below standard. What steps, if any, can it take to protect itself? • Sam hates GM motors because of the defective truck he bought. How can he publicize his problems on Internet?

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