Category Archives: Trademarks

ICANN Seeks Independent Proposals relating to WHOIS Data

by Christina Frangiosa

The Internet Corporation for Assigned Names and Numbers (ICANN) has issued public requests for proposals for the following studies relating to WHOIS data:

* WHOIS Misuse studies (deadline to respond – November 27, 2009 – has closed).
* WHOIS Registrant Identification studies (deadline to respond – December 22, 2009).

In both instances, the susbtantive study would begin in early 2010, with a completion goal of June 2010 or December 2010, to coincide with regularly-scheduled ICANN meetings.

There are apparently two other studies that ICANN will pursue, but requests for proposals have not yet been issued. See Generic Names Supporting Organization. These two are Proxy and Privacy Services and Implications of non-ASCII Registration Data in WHOIS records. See ICANN Policy Update ¶ 11 (Nov. 2009) (summary description of the first three study areas and related links).

The ICANN Staff is currently managing a fifth study area, which seeks to determine the feasibility of addressing public concerns of deficiencies in the WHOIS service, including with regard to “data accuracy and reliability, as well as in other technical areas noted in recent SSAC reports, such as accessibility and readability of WHOIS contact information in an IDN environment.” See Generic Names Supporting Organization.

Background of Concerns about WHOIS Data

WHOIS data can generally be defined as the full contact information for domain name registrants, including contacts for administrative and technical purposes. A WHOIS record relating to an individual domain name can also include the IP address of the associated web site, date of creation, renewal and expiration of the domain name, and the name of the registrar used to register and maintain the domain name.

Legitimate Uses of WHOIS Data

There are several legitimate uses of WHOIS data, among them the enforcement of intellectual property rights and criminal law enforcement. Accurate WHOIS information is necessary, for instance, to determine whom a trademark owner should contact if there are concerns about unfair competition or that the domain name may be infringing upon the holder’s existing rights. This information may also be used by law enforcement agencies to police instances of fraud, identity theft and other crimes. See e.g., Federal Trade Commission Press Release, FTC Calls for Openness, Accessibility in WHOIS Database System, Continues to Recommend Enactment of the US SAFE WEB ACT, Sept. 20, 2006 (prepared statement also available); Federal Trade Commission Press Release, Accuracy of “WHOIS” Internet Database Essential to Law Enforcement, FTC Tells Congress, May 22, 2002 (prepared statement also available). There may be other legitimate business reasons to use the WHOIS registration data to contact the owner of a particular domain.

Several years ago, the results of searches of the WHOIS database for domain name owners provided robust contact information. Recently, however, the amount of information that appears in WHOIS search results has been significantly limited, most likely due to public concern about the protection of private information and conformance with other jurisdictions’ privacy laws, including foreign privacy laws such as the EU Directive 95/46/EC (officially, the “Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data,” available in multiple languages and formats through the European Commission Justice and Home Affairs page).

The method of performing WHOIS searches also has changed recently, particularly to block automated search engines (i.e., crawlers and bots) from harvesting the data contained in the records. Specifically, each time you perform a search, you are prompted to manually enter the characters that appear within a graphic image – something the automated search tools apparently cannot do.

Related Legislation

In 2004, Congress enacted the Fraudulent Online Identity Sanctions Act, Pub. L. No. 108-482 (Dec. 23, 2004) (codified in scattered sections of Titles 15 and 18). The Act did not create an independent right of action, but it provided certain enhancements to existing civil and criminal causes of action: specifically, 1) it provided a rebuttable presumption of “willfulness” if a trademark infringement action is brought against a registrant who has supplied false registration information in connection with the domain name in question (15 U.S.C. § 1117); and 2) if the registrant had been convicted of a felony (“other than offense of which an element is the false registration of a domain name”) in which the domain name at issue was registered and used in the course of committing the crime, the maximum penalty for the offense shall either be doubled or increased by 7 years, whichever is less. 18 U.S.C. § 3559. While this Act has apparently not had any wide-reaching impact, the mere fact that it was enacted demonstrates the value placed on the accuracy of this database.

Dispute Resolution

In addition, under certain circumstances, a plaintiff filing a complaint against a domain name in U.S. federal court (an “in rem civil action”) may serve the complaint by: “sending a notice of the alleged violation and intent to proceed under [15 U.S.C. § 1125(d)(2)(A)] to the registrant at the postal and e-mail address provided by the registrant to the registrar” and by “publishing notice of the action as the court may direct promptly after filing the action.” 15 U.S.C. § 1125(d)(2)(A)(ii). In this instance, the “registrant” is the person or entity who registered the domain name.

A problem arises, however, when a plaintiff attempts to contact directly the domain name owner through the “postal and e-mail address provided by the registrant to the registrar” if no such valid addresses are displayed in the WHOIS results. Specifically, if plaintiffs or their counsel attempt to reach out to the domain name owner – short of instituting litigation – to investigate whether infringement or unfair competition claims would be legitimate, the lack of valid contact information can be a significant barrier to resolution. If domain name owners invoke the private WHOIS or proxy services to shield their contact information, then it may not be possible to resolve valid claims about the legitimacy and/or non-infringement of the domain name without the investment of substantial extra time and cost. See Ian J. Black, “Hidden Whois and Infringing Domain Names: Making the Case for Registrar Liability,” 2008 U Chi. Legal F. 431, 432 (2008); see also Network Solution’s explanation of its private registration services (which provides alternate contact information to prevent the delivery of spam e-mails and telemarketing phone calls to the registrant, but distinguishes itself from proxy services in that it allows the registrant to remain the domain name owner and be listed in the public WHOIS database).

Similar service problems occur when a plaintiff relies on the Uniform Dispute Resolution Policy adopted by ICANN to arbitrate a domain name dispute. The Rules for UDRP Proceedings provide for service of a domain name dispute complaint through the e-mail addresses for the administrative, technical and billing contacts, to the postmaster of the domain name, and any other e-mail address the defendant identifies in response. Although the domain name dispute resolution provider (and not the plaintiff) is responsible for this service (see Rules ¶ 2(a)), the absence of valid or readily-discernable e-mail addresses for the domain name holder can create problems in reaching a resolution of a dispute short of filing an arbitration complaint.

In both instances, pre-complaint discussions between the parties – or between counsel for the parties – is much more difficult when the contact information for the domain name holders is hidden. Certainly, parties can appeal to the registrars for permission to see the underlying contact information, but whether the registrar must disclose this information, and the timing of their disclosure, is not clear.

In some cases, proof of a valid dispute (e.g., service of a subpoena on the registrar) may be required before such information is released. See, e.g., Domains By Proxy’s explanation of legal issues associated with a private registration and its Proxy Agreement, ¶ 4 (providing that Domains by Proxy “has the absolute right and power, in its sole discretion and without any liability to You whatsoever, to . . . [among other remedies]: . . . ii. Reveal Your name and personal information that You provided to DBP when: A. Required by law, in the good faith belief that such action is necessary in order to conform to the edicts of the law; B. To comply with a legal process served upon DBP; or C. In order to comply with ICANN rules, policies or procedures.”) (emphasis added).

Invasive/Objectionable Uses of WHOIS Information

In its request for proposal, ICANN identified several inappropriate uses of WHOIS data that have spurred the investigation into the extent of Misuse: for example, “generation of spam, abuse of personal data, intellectual property theft, loss of reputation or identity theft, loss of data, phishing and other cybercrime related exploits, harassment, stalking or other activity with negative personal or economic consequences.” Terms of Reference for WHOIS Misuse Studies, Sept. 25, 2009, at 1; see also id. at 5 (providing definitions of e-mail spam, postal and telephone spam, phishing, abuse of personal data and identity theft).

Other Organizations Concerned about CyberCrimes and Consumer Protection
(as identified in ICANN’s Terms of Reference for WHOIS Misuse Studies RFP)

Cybercrime Researchers:
* Anti Phishing Working Group
* Privacy Rights Clearing House
* Online Trust Alliance (AOTA)

Consumer Protection, Regulatory, and Law Enforcement Organizations:
* U.S. Federal Trade Commission
* FBI/NWCC Internet Crime Complaint Center (IC3)
* Identity Theft Assistance Center (ITAC)

Resources for Conducting WHOIS Searches

Most domain name registrars offer a WHOIS search tool that they use in connection with determining whether a domain name you wish to register is actually available. Sometimes, the link to the WHOIS tool is hidden on a particular page, so you may need to hunt to find it. A few examples of the over 500 domain name registrars currently authorized to register new US domain names are: GoDaddy.com, Network Solutions, Inc., PrivateDomains and Register.com. Registration fees vary wildly between registrars, so if you are conducting a WHOIS search with the expectation of registering a domain name, shop around for the best deal that provides you with all of the tools that you need (such as web site hosting, development of web pages, e-mail management, etc.) before making a decision about which registrar to search for availability and registration of a domain name.

If you conduct a WHOIS search and find that a particular domain was registered through a particular registrar, you may wish to view the registrar’s specific WHOIS report because they sometimes contain more information about the domain name owner than the report that you find from another WHOIS tool.

Note that if you conduct a WHOIS search for a domain name through certain registrars, they may put the domain on “hold” for a short period if the domain name is available. Network Solutions describes this as a customer service benefit, allowing a customer to come back up to four days later to register a domain name that they searched. See Network Solutions Adds Customer Protection Measure. During the four-day hold period, the domain name can only be registered through Network Solutions. Id. This “hold” service may not be what you intended when you performed the WHOIS search, so be aware that the possibility exists before you conduct your search.

In addition, here are some other available tools for WHOIS searching:

* Domain Tools – offers basic WHOIS searching, as well as some other custom tools that are available for a fee.

* DomainIt – also provides a WHOIS Privacy registration. Explanation of the service (which masks your contact information and randomizes your e-mail address) can be found here. Among the reasons identified for registering the domain using this privacy service is the prevention of spam and identity theft, as ICANN raised in its own reports, above.

* InterNic’s WHOIS tool can search for domain names with the following gTLDs: .aero, .arpa, .asia, .biz, .cat, .com, .coop, .edu, .info, .int, .jobs, .mobi, .museum, .name, .net, .org, .pro, and .travel. The most commonly used in the US for general purposes are .com, .org and .net. (Note that the .edu extension generally is restricted to educational institutions.)

* Ripe NCC – WHOIS database that covers European domains, as well as those in the Middle East, Central Asia and northern Africa.

* Universal Whois Searches – also provides links to country code TLDs registrars for purposes of country-specific WHOIS searches.

* WIPO’s summary of procedures for resolving domain name disputes re ccTLDs (country code Top Level Domains). Click on the relevant country code link and you will be brought to the appropriate site for registry, WHOIS and dispute resolution. You can also access various international trademark databases through WIPO to search for potentially competing applications/registrations before filing for registration of your own mark.

USPTO Trademark Public Advisory Committee Meeting Tomorrow

by Christina Frangiosa

On November 20, 2009, the U.S. Patent & Trademark Office’s Trademark Public Advisory Committee will be holding a public meeting to discuss, among other things, the impact that the Federal Circuit’s recent decision in the In re Bose Corp. case will have on the USPTO’s “Trademark Operation.” (More information on the In re Bose Corp. case and some of its predecessors in the Medinol line of cases can be found in my prior blog entries.)

The meeting will be webcast, and runs from 9:00am – 12:00pm Eastern Time. You can also dial in by phone to hear the audio only, if you prefer. (Instructions for participating and the proposed agenda can be found here.)

Based on the published agenda, the segments relevant to the In re Bose opinion will likely be the following:

* 10:15 a.m. (20 minutes) – Discussion with TTAB Judge Gerard Rogers regarding TTAB matters, including “What steps has the TTAB taken, and what steps (if any) does it plan to take, in the wake of the Federal Circuit decision in In re Bose Corp.”

* 10:35 a.m. (60 minutes) – Discussion with Trademarks Commissioner Lynne Beresford about “what steps the Trademark Operation should take, if any, in the wake of the [In re Bose Corp. decision] to minimize the amount of ‘deadwood’ on the trademark registers.” Some of the suggested subtopics in this category are:

“* Should any special action be taken regarding applications claiming a large
number of goods/services?
* Should proof of mark usage be required on each
item of goods/services?
* Should there be a procedure by which a third party
can require an interim proof of use of a mark by a mark registrant on some or
all goods/services covered in a registration?”

Also of interest in this section is the discussion of a proposal to update TMEP (the USPTO’s Trademark Manual of Examining Procedure) on a continuous basis.

If you cannot participate in the meeting, but are interested in reading about it afterward, the transcript will likely be posted on TPAC’s main page at some point after the meeting concludes. Transcripts from prior meetings can also be found there.

Basic Questions – Differences between Copyrights and Trademarks

by Christina Frangiosa

While it seems that this topic may be rather basic, the differences between types of protection under the broader heading of “intellectual property law,” are commonly confused. Not only have I been asked this question directly, but also I have heard folks frequently using the words “copyright,” “trademark” and “patents” interchangeably. These terms have very separate meanings, however, and the doctrines and black letter assumptions applicable to each are very different.

(Note that because I do not practice in the area of patent law, I am omitting patents from this discussion. Recognize, however, that patent law is a pivotal component of the larger intellectual property law environment and should not be ignored when considering what protections to pursue for various intellectual property assets.)

Copyrights (17 U.S.C. § 101 et seq.)

In a nutshell, U.S. copyright law protects an “original work of authorship fixed in a tangible medium of expression” from being copied and/or used by others. The phrase “works of authorship” generally refers to creative works such as books, movies, scripts, computer software, sculptures, paintings, music, and lyrics, although myriad other works are also covered.
What is protected is the expression itself, not the idea underlying the expression. As a result, if you wrote a book that describes a conflict between two family members, you could not prevent another author from writing a book that also describes such a conflict. If the new book copied your precise language (in whole or in significant part), you might have some remedies against infringement under the Copyright Act – but note that what is protected is the way that you expressed the idea, not the underlying idea itself.

Trademarks (15 U.S.C. § 1051 et seq.)

Generally, trademark law protects words, symbols, logos, sounds and other mechanisms of identifying brand names. The key to determining whether a particular mark has trademark value is whether or not consumers recognize it as identifying a single source of goods or services in the market. As a result, “use” of (or a bona fide “intent to use”) the mark in connection with particular goods or services governs the scope of the mark’s protection.

If a term is generic, it cannot act as a trademark or achieve federal registration, lacking any value as an indicator of source of goods or services. Beyond generic terms, various types of marks can be registered if certain circumstances exist, requiring an analysis of the underlying facts. A sliding scale describes the strength of these types of marks, ranging from merely descriptive on the one side (moderately strong source indicators) to arbitrary or fanciful on the other (very strong source indicators), with descriptive and suggestive marks falling in the middle.

How do Domain Names Fit into these Definitions?

Domain names are simply addresses at which a user of the Internet can locate a particular web site. They can be equated to mailing addresses or even 1-800 phone numbers and typically appear in a www.name.com or www.name.net (etc.) format. The domain names may contain trademarks or they may contain more generic or descriptive terms.

When a domain name contains a trademark owned by another, the trademark owner has several options to enforce his or her rights, including negotiations with the domain name owner, other pre-litigation strategies or ultimately, filing claims in either federal court (pursuant to the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125) or through a domain name dispute resolution provider (pursuant to the Uniform Dispute Resolution Policy). Which forum is appropriate in a particular case depends on an analysis of the specific circumstances, but each option has specific benefits and detriments to proceeding within its boundaries.

Future blog entries will be based on new developments in these areas. Please let me know if you have comments or questions.

White House appoints IP Enforcement Coordinator

by Christina Frangiosa

On September 25, 2009, President Obama appointed Victoria A. Espinel as IP Enforcement Coordinator (“IPEC”). This position was mandated by the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO-IP Act”) S. 3325, Public Law No. 110-403, signed into law by President George W. Bush on October 13, 2008. See Current Status of the House Bill and of the Senate Bill.

The Act governs enforcement of IP infringement matters, particularly counterfeiting of copyrighted works and trademarks. With respect to trademarks, the Act increases civil penalties for trademark counterfeiting, including for direct as well as for certain types of contributory infringement and enhances criminal penalties for trafficking in counterfeit goods bearing others’ trademarks.

The IPEC is a cabinet-level position in the Executive Office focused on combating counterfeiting and IP infringement.

Under the Act, the IPEC will be an advisor only, not a prosecutor or other law enforcement officer. Specifically, the IPEC is charged with chairing an “interagency intellectual property enforcement advisory committee”, coordinating a Joint Strategic Plan (defined with more specificity in the Act) against counterfeiting and infringement, assist (when requested) in the implementation of the Plan, facilitate the issuance of policy guidance on “basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law,” report to the President and to Congress about IP enforcement programs, report to Congress about the implementation of the Plan, and “carry out such other functions as the President may direct.” Public Law No. 110-403 § 301(b)(1).

Note that the Act was signed into law nearly a year ago. Under the precise terms of the PRO-IP Act, the Joint Strategic Plan described in the Act was due to be completed and submitted to various House and Senate committees no later than October 13, 2009 – in other words, two days ago!

However, given that the appointment has just been made for the IPEC, the various deadlines set forth in the act must be modified in some manner. It will be interesting to see how much the deadlines change.

For more information, see the following:

* White House Press Release, “President Obama Announces More Key Administration Posts,” September 25, 2009. The press release describes Ms. Espinel’s background and qualifications for the position.

* Official Summary of the Senate version of the bill (which ultimately was signed by Pres. Bush in 2008)

* Wikipedia’s description of the PRO-IP Act

* “FAQ: What to expect from a new IP cabinet position,” CNET News, Sept. 30, 2008 (just before the Act was signed into law).

Ms. Espinel’s nomination was received in the Senate on September 29, and the matter has been referred to the Senate Committee on the Judiciary. Nomination PN1027-111. It does not appear that a confirmation hearing has yet been scheduled.

Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations

by Christina Frangiosa

On August 31, 2009, the U.S. Court of Appeals for the Federal Circuit reversed the Trademark Trial and Appeal Board’s (“the Board”) 2007 decision cancelling Bose’s federal Trademark Registration for its mark WAVE in connection with “radios, clock radios, audio tape recorders and players, portable radio and cassette recorder combinations, compact stereo systems and portable compact disc players.” See In re Bose Corporation, Appeal No. 2008-1448, slip op. (Fed. Cir. Aug. 31, 2009). More importantly, however, the Court removed the threat of cancellation of a registered trademark if a registrant mistakenly included goods or services in its application (or requests for renewal) on which the mark was never used, or which the registrant had stopped using. The key to this analysis was the Court’s return to the “knowing” requirement in fraud pleadings, instead of the current “knowing or should have known” standard.

In the underlying case, the Board found that Bose had submitted a false sworn affidavit of continued use in support of the renewal of its Registration. Having found falsity, the Board further held that cancellation of this registration was appropriate because Bose “should have known” that the affidavit was false with respect to “audio tape recorders and players,” and was thereby attempting to defraud the Trademark Office by submitting it. (The Board recognized that the mark continued to be used in connection with the remaining goods covered by the Registration and only focused on the affidavit with respect to these few goods.) See Bose Corp. v. Hexawave, Inc., Opposition No. 91/157,315, 88 USPQ2d 1332 (TTAB Nov. 6, 2007). More information about the underlying case and the Medinol line of cases can be found at these prior posts.

In reversing the Board’s decision, the Court held that the Board erred when it relied on a lower standard to prove fraud in obtaining or maintaining a trademark registration as set forth in the Board’s 2003 decision in the Medinol case and when it cancelled the Registration for this mark in its entirety. The Court remanded the case for further proceedings to narrow Bose’s registration to “reflect commercial reality,” presumably to remove the goods on which the mark is no longer used in interstate commerce (specifically “audio tape recorders and players”). Bose, slip op. at 11.

Through this single opinion, the Court has accomplished that which practitioners have sought in various fora since 2003. See Medinol Ltd. v. Neuro Vasx, Inc., Cancellation No. 92040535, 67 USPQ2d 1205 (TTAB May 13, 2003). Specifically, while practitioners may generally agree that the Principal Register (cataloging active trademark registrations) should be culled periodically of those marks that are no longer in use in commerce, it has been argued that cancelling an entire registration – even longstanding and valuable registrations – as punishment for the registrant’s carelessness rather than permitting the registrant to amend the registration to remove outdated items was Draconian. See U.S. Patent and Trademark Office, Public Advisory Committee Meeting, Transcript at 137-42 (Feb. 20, 2009) (one panelist suggested that using cancellation for fraud as a punishment for these types of mistakes was akin to imposing the “death penalty” for a traffic violation).

Now, apparently, such amendments may be permitted.

Standard to Find Fraud on the Trademark Office

In order to support the cancellation of a registration based on the claim that the “registration was obtained [or maintained] fraudulently” (15 U.S.C. § 1064(3)), a court must find that the applicant “knowingly [made] false, material misrepresentations of fact in connection with his application.” Bose, slip op. at 3 (quoting Torres v. Cantine Torresella, S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986)). The Court confirmed that a “heavy burden of proof” is required and that the party seeking cancellation has to prove the allegation of fraud “to the hilt” through clear and convincing evidence. Id. (“There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.”).

The Court focused on the Board’s conclusion that Bose “should have known” that its renewal affidavit was false and held that the Board’s prior opinion in the Medinol case changing the standard from “knew” to “should have known” (on which the Board relied in the Bose case) improperly reduced the standard to that of ordinary negligence. Id. at 5-6. In addition, finding that an applicant’s conduct constituted “mere negligence” or even “gross negligence” would be insufficient to meet the proof requirement for fraud. Instead, a subjective “intent to deceive” is an indispensible element of the claim. Id. at 6-8.

In sum, “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.” Id. at 7 (emphasis added). Fraud does not exist when false statements are “occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive.” Id. at 10 (citations omitted).

Applying the Proper Standard to the Bose Registration

Applying the rule to the case at bar, the Court determined that this “intent to deceive” was absent and credited the testimony of Bose’s general counsel that he believed that repairing previously-sold tape players and shipping them back to consumers constituted “use in commerce” sufficient to support the renewal when he signed the affidavit in 2001. Id. at 9. While the Court declined to reach the issue of whether this belief was “reasonable,” the Court noted that no prior decision had been issued that found the repair/return activity to be insufficient to prove use of the mark in commerce. Id. at 9 n.2. As a result, Bose’s general counsel had not ignored prior legal precedent in submitting his affidavit.

Applying the Proper Standard to Prior “Fraud on the PTO” Cases

Not only did the Court confirm that a “knowing” misrepresentation and intent to deceive are required to support a fraud allegation, but it also clarified that “honest misunderstandings” or “inadvertence” in sworn statements made in connection with trademark applications or renewals do not constitute fraud in the absence of proof of a willful intent to deceive the Trademark Office.

This clarification is significant, particularly in light of the many decisions by the Board to cancel a registration or affirm the refusal of registration in reliance on the “should have known” standard articulated in its opinion in Medinol. One could argue that the Federal Circuit’s opinion in Bose effectively overturns many of these decisions.

Certainly, applicants could rely on the Bose opinion to seek to amend their registrations to reflect commercial reality where they can demonstrate that mistakes in their sworn statements about whether a mark is or continues to be used in commerce were inadvertent or the result of honest misunderstandings, a result which Medinol would have precluded.