Posted on 06/20/2011 7:04:50 PM PDT by unseen1
In 2005, actor Morgan Freeman won the rights to use the domain name www.morganfreeman.com, which was being illegally used by the company Mighty LLC. Freeman applied for a trademark from the US Patent and Trademark Office when he found out that Mighty LLC was using his domain name "in bad faith to divert Internet traffic to a commercial search engine." Ultimately, the arbitrators for the World Intellectual Property Organization (WIPO), the intellectual property arm of the United Nations, agreed with Freeman and determined that Freeman's illustrious career made his name sufficiently recognizable in the entertainment and movie spheres.
In the always-evolving electronic age, many famous personalities use trademark law to protect the use of their names over the Internet. Trademark law, which prevents confusion between certain goods or services by indicating the source of the trademark, also allows someone to recover a domain name containing their trademark.
A trademark is a word, phrase, symbol or design, or a combination of them, that identifies and distinguishes the source of a trademark. Names of people and companies, business logos and symbols, and particular sounds can all be trademarked. Everything from Julia Roberts' name, the Nike "swoosh," and the NBC chimes are registered with the US Patent and Trademark Office. Trademarks identify a product, service, person, or thing from others in the same field, and trademark infringement has, and always will be, a serious offense.
What's in a Name
Anyone can register a domain name for a few dollars, which has led to the abundance of "cybersquatters." Cybersquatters are people who register domain names that are identical or similar to well-known marks, and then try to sell the domain to the mark owner for an inflated sum of money. This has been done to everyone from Julia Roberts and Bruce Springsteen to the organization PETA and the financial institution Paine Webber.
To protect trademark owners from cybersquatting, Congress passed and President Clinton signed into law the Anti-Cybersquatting Consumer Protection Act in November, 1999. Under the Act, a trademark owner can sue to collect damages and recover a domain name from a person who, with a bad faith intent to profit, registered a domain name that is identical or similar to a distinctive or famous trademark.
The Internet Corporation for Assigned Names and Numbers (ICANN) was also established around this time, which authorized a supervisor of domain name registrations, and adopted an on-line arbitration system for resolving domain name disputes.
Proving Cybersquatter Infringement
In order to have a domain name canceled or transferred to the trademark owner under law, the owner must prove that:
(1) the domain name is identical or confusingly similar to the trademark;
(2) the registrant has no right or legitimate interest in the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Several celebrities have been successful in getting their domain names from cybersquatters under ICANN, including Nicole Kidman, Julia Roberts, and Venus and Serena Williams. Others have not been as successful, like Sting and Bruce Springsteen. However, registering a trademark to a name will provide added protection against cybersquatters trying to benefit financially from an already well-known domain name.
Should I Trademark My Name?
Trademark infringement existed before the Internet, but the ease of registering domain names has increased the challenges of trademark rights. Because anyone from high school students to multi-million dollar corporations can register domain names at little expense, it may be a good idea to register your name if you feel it could be threatened by a cybersquatter.
This is especially true for people whose names are also their profession, like actors, car dealers, even fashion designers. Designer Ralph Lauren has had his name trademarked since 1972 for added protection. Fashion designer Donna Karan found her trademark useful when she fell victim to a dispute over her name. A man unknown to her, Richard Wilson, had registered the domain name www.dkny.biz. Karan had already owned www.dkny.com and www.donnakaran.com, and filed suit with the WIPO stating Wilson registered the domain name in bad faith. The WIPO panel agreed with Karan, requiring the domain name to be transferred from Wilson to The Donna Karan Company.
How to Trademark a Name
Anyone whose name also identifies a business or profession should consider trademarking their actual name. If you are considering establishing a trademark for your name, you should first perform a trademark search with LegalZoom or by going to the US Patent and Trademark Office's (USPTO) website at www.uspto.gov, to determine if it is claimed as a mark by someone else. The USPTO reviews trademark applications and determines whether an applicant meets the requirements for federal registration.
Even if you do not register your name you can still use a mark you have adopted to identify your goods and/or services. Anytime you claim rights to a mark, you may use the "TM" (trademark) or "SM" (service mark) symbol, regardless of whether you filed an application with the USPTO. But registering your mark will offer you added protection under trademark law, including giving you the ability to bring action in court concerning the mark and obtaining registration in foreign countries. The mark ¨ can only be used after the mark is actually registered with the USPTO. .
Think of Palin2012.com The domain is taken by a cybersquatter hoping to cash in on a Palin run. By trademarking her name Palin now has an easy way to kick the cybersquatter to the curb and use the domain name for her run. Notice also in the application it says for politcal reasons among others.....
The tradmarking of Gov Palin's name is a big sign that Gov Palin is going to run for office.
How can you trademark your name if your name is already trademarked? Say for example your name is James Bond. Can you trademark it?
I am curious whether there have been battles by people who happen to be named the same as a celebrity.
If some guy was named “Martin Sheen” and got to ICAN before the nutcase (but very funny) famous one, would said Celebrity have a case?
I really don’t know...
I know words can’t be copyrighted — that is why drugs.com was such a big $$$ cybersquatting war. Until the bubble popped and after big $$$ it eventually went for small $ (IIRC).
GMTA (LOL)
If you aren't a member of the government/corporate-complex, you don't.
Yep.....it’s to protect her mark from cybersquatters and it saves her money instead of just paying these guys absorbent amount of money just to own her own domain name......a while back when this broke last year, some FReepers were mocking Sarah for trying to get her trademark, claiming it was being too celebrity-like, when they were just idiots that didn’t know any better
sorry for your lose. I’ll try to snap too it next time....:)
yeap. there are good reason for someone like Palin to do this esp if she is planning on running a low cost unconvential campaign. she doesn’t have the millions to get people off her domain names. Plus it gives her more power to stop crap like larry Flynt’s nailin palin porn crap movie....and other nasty stuff.
Same goes for Bristol. If the left tries to use Bristol agains against gov Palin they will not be so lucky.
I have no idea. I would say no. I think it’s first come first get.
Unless the guy could prove some distant relative had the name first before, I’m thinking.
maybe like I said I really don’t know.
This trademark will help where the left can’t redirect people to fake Palin sites from her official sites that citizens might want to learn about - so bye-bye other Palin facebooks....etc
Some company that makes allergy medicine already trademarked mine. ;-)
Well, I know Freep dot com has been taken.
Sadly, JimThompson.com has also been taken.
Sure you can. As long your James Bond the famous real estate agent and not James Bond the famous um, agent.
EX: Donna Karan is trademarked for certain purposes. If your name is also Donna Karan but you are a plumber you can go ahead and use the the name in promoting your plumbing business.
It’s really much more complicated and I’m no expert. But yes there are ways of overcoming the same or similar name in TM cases.
uhg
your=you’re
someone should sign up THATWOMAN2012.com
It is actually very difficult to trademark a name, just for the reason you posted above. Only people associated with names that have gotten lots of specific recognition have even a chance to get the trademark. Now if you incorporated your middle name, it would be easier since it would be more distinctive. But a three word name does not have the same marketability. And the owner of the James Bond trademark would challenge someone who just got the James Ray Bond trademark. The courts would determine the winner.
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