• Registration Process for .US Country Code Domain Names Announced
  • May 7, 2003
  • Law Firm: Thompson Hine LLP - Cleveland Office
  • The formerly restricted official United States country code top-level domain (ccTLD), . US, is now being made available for use by the general public. Described as providing the ability to "establish an American identity on the internet," .US domain names will provide companies and individuals with a bona fide presence in the United States yet another option for establishing a desired internet presence.

    Who can register a .US domain name?

    Any U.S. citizen or resident, as well as any business or organization, including federal, state and local governments with a bona fide presence in the United States meeting one of the following three eligibility requirements may apply to register a .US domain name:

    1. A natural person
      1. who is a citizen or permanent resident of the United States of America or any of its possessions or territories or
      2. whose primary place of domicile is in the United States of America or any of its possessions; or
    2. Any entity or organization that is
      1. incorporated within one of the 50 U.S. states, the District of Columbia, or any of the United States possessions or territories or
      2. organized or otherwise constituted under the laws of a state of the United States of America, the District of Columbia, or any of its possessions or territories; or
    3. An entity or organization (including federal, state or local governments of the United States or a political subdivision thereof) that has a bona fide presence in the United States.

    .US Registration Schedule

    As with the recently released .INFO and .BIZ generic top-level domains (gTLDs), the .US registration schedule begins with a Sunrise Period (March 4, 2002, through April 9, 2002). During the Sunrise Period, owners of trademarks that are registered or were pending with the U.S. Patent and Trademark Office as of July 27, 2001, may apply for .US domain names that exactly match their registered or pending marks. Multiple applications for the same domain names will be handled on a lottery basis.

    Following completion of the registrations during the Sunrise Period (on or around April 24, 2002), .US-accredited registrars will begin accepting applications for the remaining .US domain names on a first-come, first-served basis.

    Accordingly, if there is a .US domain name that your company may want to use (or prevent others from using), there is a narrow window of opportunity during which to act. If you have any questions with respect to the entire process or if you are unsure as to whether or not your company's trademark rights are sufficient to apply for a particular domain name during the ongoing Sunrise Period, please contact us.

    Trademarks and Dilution: Do You Own A Dupont, Buick or Kodak?

    As is generally well-known, trademarks can be any indicia (generally distinctive words, symbols and combinations thereof) that are used by trademark owners to distinguish and identify the origin of their goods or services. The primary purpose of a trademark is to help consumers quickly and easily identify goods or services that have known qualities and characteristics.

    Accordingly, contrary to a popular misconception, most trademark laws are designed to protect the consumer's ability to identify a product or service that the consumer would like to purchase and not to protect the trademark owner. For this reason, the cornerstone for determining whether or not a third party's use of a certain mark violates the trademark owner's rights in its trademark has always been the "likelihood of confusion" standard - namely, whether or not the third party's mark (when used in connection with the third party's goods or services) is sufficiently similar to the trademark owner's mark (when used in connection with the trademark owner's goods or services) as to be likely to confuse a consumer into believing that the goods or services of the third party actually emanate from, are sponsored by or are associated with the trademark owner.

    While trademark owners generally have found the "likelihood of confusion" standard to be acceptable for preventing competitors from using infringing marks on directly competitive goods or services, owners of particularly famous and valuable marks have long complained about the perceived damage to their trademarks caused by third parties who attempt to "free ride" on the coattails of their famous trademarks by using the same or highly similar marks on unrelated and non-competitive goods or services. To combat this "whittling away," or dilution, of the distinctive character of famous marks, many states have long recognized common law or statutory remedies to dilution. In 1996, with the enactment of The Federal Trademark Dilution Act and the amendment of the Lanham Act, owners of famous trademarks were finally granted a weapon against the whittling away of the distinctive quality of their marks in the form of the dilution cause of action. "Dilution" is defined under the Lanham Act as "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of --

    1. competition between the owner of the famous mark and other parties, or
    2. likelihood of confusion, mistake, or deception." This definition includes dilution by blurring, tarnishment and disparagement. In other words, dilution was designed to protect against the whittling away of a famous mark's selling power and value through the unauthorized use of the mark by others on non-competitive products, the association of the famous mark with products or services of inferior quality and the portrayal of the mark in a distasteful manner.

    A recent decision by the Trademark Trial and Appeal Board (the Board) in Toro Co. v. ToroHead, Inc. may, however, make it considerably more difficult for trademark owners to bring successful dilution claims against third parties in proceedings where trademark owners are attempting to oppose applications for or cancel registrations for marks that are believed to dilute the trademark owners' famous marks. In Toro, the Board concluded that because dilution is an "extraordinary remedy," a trademark must not only be famous but also highly distinctive in order to obtain dilution protection. According to the Board, an analysis of distinctiveness revolves around the uniqueness of the mark and not whether the mark has acquired distinctiveness or secondary meaning. Consequently, unlike in likelihood of confusion cases, the Board decided that it would not resolve doubts in favor of the party claiming dilution. Rather, the burden of persuasion would be on the trademark owner claiming dilution.

    The facts of Toro are quite typical of opposition proceedings. ToroHead Inc. applied to register the mark ToroMR with a design of a bull's head for magnetic reading and writing heads sold to manufacturers of high performance computer disk drives. The Toro Company (Toro) opposed ToroHead's application on the basis of a likelihood of confusion with 26 of its registrations for the TORO mark for various goods and services including lawn and landscaping equipment and on the basis of dilution. To prove the distinctiveness and fame of its TORO mark, Toro provided extensive evidence of its continuous use of the TORO mark since 1914, its national and international advertising and promotional efforts and its sales of products sold under the TORO mark in excess of $1.3 billion a year. The Board, however, did not find such evidence persuasive.

    In particular, the Board found that the TORO mark was not distinctive for dilution purposes because Toro did not provide any direct evidence that consumers recognize the mark as pointing uniquely to Toro. According to the Board, in order for a mark to be distinctive, the trademark owner must prove that its mark is so unique that the public associates the mark as pointing exclusively to its owner, even when the mark is encountered apart from the owner's goods or services. The Board also noted that since the term "toro" is not a coined word ("toro" means "bull" in Spanish), this further diminishes the ability of the mark to establish a "direct and immediate connection" between it and its owner in the minds of the public. These findings raise the question of whether or not the Board will view only coined or arbitrary words as distinctive or whether marks that have acquired distinctiveness could ever be considered distinctive for dilution purposes.

    With respect to the determination of fame, the Board distinguished between fame for likelihood of confusion purposes ("public recognition and renown") and fame for dilution purposes, finding that a mark is truly famous for dilution purposes only when the public recognizes the mark as "signifying something unique, singular or particular." In order to achieve the high level of fame and distinctiveness necessary to obtain dilution protection, a trademark owner must demonstrate that the English language has changed such that "the mark has become the principal meaning of the word." Based upon these rigorous standards, it is no surprise that the Board rejected Toro's evidence of fame. The Board found that general sales and advertising figures are insufficient to demonstrate that the term TORO has been transformed into a famous mark. Rather, evidence of fame should take the form of recognition of the mark by the other party, intense media attention and consumer surveys.

    It is yet to be seen how far the ruling in this case will extend and whether federal and state courts will follow the lead of the Board in deciding dilution cases. What is known at this time is that a trademark owner seeking to bring an opposition or cancellation proceeding on the basis of dilution will need strong, direct evidence that its mark is so truly distinctive and famous that when the public encounters the mark on unrelated and non-competitive goods, the trademark owner's mark is immediately brought to mind. In other words, a trademark owner must be able to show that the public's perception of the mark has changed such that the term is now associated with the owner of the mark in nearly every context.

    Accordingly, one very well may need to be the owner of a Dupont, Buick or Kodak to rely upon dilution protection when involved in an opposition or cancellation proceeding.