Transcript and Webcast of House hearing on Trademark Dilution Revision Act available here.

Excerpt from testimony of Anne Gundelfinger (of Intel), president of INTA, discussing dilution by blurring:

Let us take Intel¡¯s PENTIUM mark as an example. (I use PENTIUM as an example not to promote it here as a famous mark, but rather because I do not presume to borrow another company¡¯s mark for this example.) Assume that PENTIUM, one of Intel¡¯s premium brands for microprocessors, is a mark that is ¡°widely recognized by the general consuming public of the United States.¡± Intel is in the computer industry, and the PENTIUM brand has brand attributes that include cutting-edge technology, premium performance, and integrity. If a third party were to adopt the PENTIUM mark for real estate brokerage services or sportswear, not only would the singular association between Intel and its PENTIUM brand be lost over time, but its brand attributes would be blurred and dampened by the brand attributes of the decidedly un-high-tech brokerage services and/or sportswear þu consumers would learn over time to distinguish between the different PETNIUM brands, their sources, and their brand attributes. In short, dilution would be highly likely, even if the impairment to the PENTIUM mark takes years to manifest. As noted earlier, the point is to stop the impairment before the damage is done. 

Trademark Dilution Revision Act (H.R. 683)

AMENDMENT IN THE NATURE OF A SUBSTITUTE TO H.R. 683, AS REPORTED BY THE SUBCOMMITTEE ON COURTS, THE INTERNET, AND INTELLECTUAL PROPERTY

Strike all after the enacting clause and insert the following:

SECTION 1. SHORT TITLE.

(a) SHORT TITLE.–This Act may be cited as the “Trademark Dilution Revision Act of 2005”.

(b) REFERENCES.–Any reference in this Act to the Trademark Act of 1946 shall be a reference to the Act entitled “An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes”, approved July 5, 1946 (15 U.S.C. 1051 et seq.).

SEC. 2. DILUTION BY BLURRING; DILUTION BY TARNISHMENT.

Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended–

    (1) by striking subsection (c) and inserting the following:

“(c) DILUTION BY BLURRING; DILUTION BY TARNISHMENT.–

    “(1) INJUNCTIVE RELIEF.–Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

    “(2) DEFINITIONS.–(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

      “(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

      “(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

      “(iii) The extent of actual recognition of the mark.

    “(B) For purposes of paragraph (1), ‘dilution by blurring’ is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

      “(i) The degree of similarity between the mark or trade name and the famous mark.

      “(ii) The degree of inherent or acquired distinctiveness of the famous mark.

      “(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

      “(iv) The degree of recognition of the famous mark.

      “(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

      “(vi) Any actual association between the mark or trade name and the famous mark.

    “(C) For purposes of paragraph (1), ‘dilution by tarnishment’ is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

    “(3) EXCLUSIONS.–The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

      “(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.

      “(B) Fair use of a famous mark by another person, other than as a designation of source for the person’s goods or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

      “(C) All forms of news reporting and news commentary.

    “(4) ADDITIONAL REMEDIES.–In an action brought under this subsection, the owner of the famous mark shall be entitled only to injunctive relief as set forth in section 34, except that, if–

      “(A) the person against whom the injunction is sought did not use in commerce, prior to the date of the enactment of the Trademark Dilution Revision Act of 2005, the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment, and

      “(B) in a claim arising under this subsection–

      “(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark, or

      “(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark,

      the owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity.

    “(5) OWNERSHIP OF VALID REGISTRATION A COMPLETE BAR TO ACTION.–The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this Act shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State and that seeks to prevent dilution by blurring or dilution by tarnishment, or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.”; and

    (2) in subsection (d)(1)(B)(i)(IX), by striking “(c)(1) of section 43” and inserting “(e)”.

SEC. 3. CONFORMING AMENDMENTS.

(a) MARKS REGISTRABLE ON THE PRINCIPAL REGISTER.–Section 2(f) of the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended–

    (1) by striking the last two sentences; and

    (2) adding at the end the following: “A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be canceled pursuant to a proceeding brought under either section 14 or section 24.”

(b) OPPOSITION.–Section 13(a) of the Trademark Act of 1946 (15 U.S.C. 1063(a)) is amended in the first sentence by striking “as a result of dilution” and inserting “the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment”.

(c) CANCELLATION. Section 14 of the Trademark Act of 1946 (15 U.S.C. 1064) is amended, in the matter preceding paragraph (1)–

    (1) by striking “, including as a result of dilution under section 43(c),”; and

    (2) inserting “(A) for which the constructive use date is after the date on which the petitioner’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), or (B) on grounds other than dilution by blurring or dilution by tarnishment” after “February 20, 1905”.

(d) MARKS FOR THE SUPPLEMENTAL REGISTER.–The second sentence of section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) is amended to read as follows: “Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register–

    “(1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), or

    “(2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.”.

(e) DEFINITIONS.–Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended by striking the definition relating to “dilution”.End of article graphic

A domain name homograph spoof involves the use of a domain name that visually resembles another, presumably well-trafficked, domain name, such as paypa1.com for paypal.com.

The vulnerability exists with the use of only one alphabet but the potential for misuse multiplies with the use of Internationalzied Domain Names (IDNs).

As this VNUNet article reports:

Steve Dyer, director of UKIF told Compueractive there were real concerns about misuse of this by criminals. “The Russian ‘A’ looks just the same as the English ‘A’ although it means something different. A criminal could register a domain name using a mixture of ASCII and Unicode that is indistinguishable to the ordinary surfer from the genuine site.

“To prove a point, the website PayPal was created using a mixture of the European and Russian alphabet. People were directed to a fake site and phishers can steal personal details. This site was handed over to PayPal but shows how dangerous this could become”, he said.

The proof of concept attack was well-publicized, leading some to suggest that software such as browsers should reduce their support for IDNs until these issues are resolved.

CENTR, the Council for European TLDs, has characterized such calls as over-reactions.

Additionally, ICANN has released a “Statement on IDN Homograph Attacks.”  It points out that (1) the problem existed before ICANN existed;, (2) that the ‘global Internet community’ is working on the problem, and (3) that ICANN was opening a ‘global comment forum’ on the issue.

Both CENTR and ICANN emphasize the point that homographing spoofing existed before IDNs.  However there is a new facet with cross-character set IDNs of the type discussed in the VNU article that didn’t exist prior to IDNs. 

I will phrase this as a question because I don’t have the tech background to make this an assertion:

If I’m dealing with one character set, there is a finite number of domain names such as paypa1 that look like paypal, which means I can probably track down the whois info.

If there are N character sets that contains a character that looks like a ‘p’ and N2 character sets that contain a character that looks like an ‘a’, and so on, then wouldn’t there be N x N2 . . . . . x N6 permutations that create a name that look like paypal?

Doesn’t that make the name virtually untraceable through whois?

Is that how these IDNs work?

A list of links with plenty of background and discussion via LexText here.

 

 

 

Today, the Brian Leher show on WNYC began podcasting.  The subject of the first show was, uh, podcasting.  The guest, Paul Boutin, of Wired, gave an introduction to RSS and Podcasting (and there was some discussion as to how Apple might feel about the name PODCAST).

Speaking of which, look at this:

Word Mark PODCAST
Goods and Services IC 038. US 100 101 104. G & S: online prerecorded radio program over the internet
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78564869
Filing Date February 10, 2005
Current Filing Basis 1B
Original Filing Basis 1B
Owner (APPLICANT) Shae Spencer Management, LLC William R. Heitz LTD LIAB CO FLORIDA 1st Floor 345 Woodcliff Drive Fairport NEW YORK 14450
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

According to this release, the judge in the CITY OF HEROES litigation (background here) has dismissed certained trademark claims brought by Marvel against the provider of a multi-player online role-playing game that allowed users to create superhero ‘avatars.’  He also took Marvel to task for certain ‘false and sham’ exhibits and allegations (see here).  Hat tip to Kurt.

Bonus free-association: prior Blog post on ownership of the term SUPERHERO.

John Berryhill on Domain Name Valuation (originally posted to the INTA list):

There is no shortage of self-styled “domain name appraisers” which use formulas relating to length, common word frequency, etc., but if “lawyer.com” is worth $4M, is “goodlawyer.com” worth more or less than that?

Sedo.com and Afternic.com are probably the top two domain marketplace sites, which also provide appraisal services.

There is a somewhat widespread scam currently going around in which a domain registrant receives a random purchase inquiry.  When the domain registrant responds to the inquiry, the putative purchaser states that they will pay the amount provided by an objective appraisal, and the “purchaser” states that they only trust any of three or four services.  One of those services, coincidentally, is priced well below the other ones.  So, the domain registrant obtains the appraisal, sends it to the “purchaser”, and the “purchaser” is never heard from again.  The point of the scam is to induce domain registrants into buying useless appraisals.

One objective measure of domain name value is in terms of the traffic it generates, so long as the traffic is not attributable to a proprietary context (e.g. traffic for “shell” seeking shells is good; traffic for “shell” seeking an oil company is bad).

The clearest measure of domain name value is in terms of the traffic it generates.  In a recently reported transaction, a portfolio of domain names generating 17 million unique visitors/month was purchased for $164M.  Based on click-through revenue, that transaction reportedly valued each domain name on average at about 8X current annual revenue.

Apparently the blogosphere woke up yesterday about the bankruptcy bill.

The last ditch effort to derail the bill has begun.

Instapundit quotes one bankruptcy attorney:

“For instance, if a client lies to me about assets and they are later discovered by the trustee or a creditor, I am personally on the hook. There are many other provisions in the bill designed to either keep people from filing or make it so that bankruptcy attorneys look for other avenues. Something is wrong when the majority of bankruptcy attorneys and trustees think it is a bad idea . . .