- Non-Famous and Non-Distinctive Trademarks Not Protected under the Federal Cybersquatting Act
- April 6, 2009
- Law Firm: Winston & Strawn LLP - Chicago Office
A court ruled that a plaintiff, Philbrick's Sports, could not assert a claim under the Anticybersquatting Consumer Protection Act against eNom, Inc. for holding domain names similar to Philbrick's trademark, because the ACPA only protects famous and distinctive trademarks. A mark is famous or distinctive if it is widely recognized by the general consuming public as the source of the goods and services of the mark's owner. The court found that the Philbrick's Sports mark, philbrickssports.com, was descriptive and had not achieved secondary meaning in that the public did not associate the mark specifically with Philbrick's, and therefore it was not distinctive. Without meeting the famous or distinctive mark criteria, the court found that Philbrick's Sports could not maintain an action against eNom for the use of similar domain names.
TIP: The ACPA may not provide a remedy to all trademark holders against entities using domain names similar to the trademark holder's mark, but rather only to those that hold distinctive or famous trademarks.