Feeds

US appeal court breaks trademark/domain name link

Avery trademark too 'diluted', apparently

  • alert
  • submit to reddit

Build a business case: developing custom apps

The US Court of Appeals has reversed a District Court decision to give domain-name protection to a well-established registered trademark. Avery Dennison, a manufacturer of office products and industrial fasteners with sales in excess of $3 billion, had registered trademarks for Avery in 1963 and Dennison in 1908. It also has the domain name avery.com. Jerry Sumpton of Mailbank, a service that offers vanity email addresses like bill@avery.net, had registered avery.net and dennison.net as part of its sfamily name archive. Avery Dennison sued Sumpton and registrar NSI in the District Court for the Central District of California, which gave summary judgement to NSI and Avery Dennison, and entered an injunction ordering Sumpton to transfer the domain names to Avery Dennison for $300 each. Sumpton appealed and won because of the Federal Trademark Dilution Act. Previously, federal law gave protection to the infringement of a registered trademark, while unregistered trademarks were protectable with the law of unfair competition. Trademark dilution had been recognised in many US states, and became federal law in 1995. It is not necessary to establish that there is competition between the parties in a dilution case, whereas previously "passing off" had to be proved. The appellate court unanimously held that Avery Dennison had failed to establish that its marks were "famous", in the sense required by law, because the proof required a greater showing than "mere distinctiveness". Avery Dennison faced the problem that there were several other trademark registrations for "Avery" and "Dennison" in other business sectors, so that the appellate court could not consider that Avery Dennison's trademarks were "famous" in the legal sense. The family name "Avery" is the 775th most common in the US, and Dennison the 1768th (and not at lot of people know that). There were no overlapping channels of trade, it was decided. The decision does not do much to help cybersquatters who register domain names in bad faith. In Mailbank's case, it has registered thousands of family names, and other names, and runs what appears to be a legitimate business licensing the aliases. Tomorrow, the Internet Corporation for Assigned Names and Numbers (ICANN) meeting in Santiago, Chile, will be debating what to do about cybersquatters. Denying registration of trademarks to other than the trademark holders would be one possibility, but there are too many complications with such an approach. Meanwhile, there is a bill before the US Senate which could result in fines of up to $100,000 for cybersquatters acting in bad faith. The problem of course will be that, despite some delusions, the US courts have no jurisdiction outside the US, so that some agreement will be necessary to resolve international disputes. Ironically, many an Avery label has been used on junk mail, so perhaps there is some justice that vanity mailers like bill@avery.net can get a measure of revenge. ® Daily Net finance news from The Register

Build a business case: developing custom apps

More from The Register

next story
iPad? More like iFAD: We reveal why Apple fell into IBM's arms
But never fear fanbois, you're still lapping up iPhones, Macs
Amazon says Hachette should lower ebook prices, pay authors more
Oh yeah ... and a 30% cut for Amazon to seal the deal
Philip K Dick 'Nazi alternate reality' story to be made into TV series
Amazon Studios, Ridley Scott firm to produce The Man in the High Castle
Nintend-OH NO! Sorry, Mario – your profits are in another castle
Red-hatted mascot, red-colored logo, red-stained finance books
Sonos AXES support for Apple's iOS4 and 5
Want to use your iThing? You can't - it's too old
Joe Average isn't worth $10 a year to Mark Zuckerberg
The Social Network deflates the PC resurgence with mobile-only usage prediction
Chips are down at Broadcom: Thousands of workers laid off
Cellphone baseband device biz shuttered
Feel free to BONK on the TUBE, says Transport for London
Plus: Almost NOBODY uses pay-by-bonk on buses - Visa
Twitch rich as Google flicks $1bn hitch switch, claims snitch
Gameplay streaming biz and search king refuse to deny fresh gobble rumors
Stick a 4K in them: Super high-res TVs are DONE
4,000 pixels is niche now... Don't say we didn't warn you
prev story

Whitepapers

Implementing global e-invoicing with guaranteed legal certainty
Explaining the role local tax compliance plays in successful supply chain management and e-business and how leading global brands are addressing this.
Boost IT visibility and business value
How building a great service catalog relieves pressure points and demonstrates the value of IT service management.
Why and how to choose the right cloud vendor
The benefits of cloud-based storage in your processes. Eliminate onsite, disk-based backup and archiving in favor of cloud-based data protection.
The Essential Guide to IT Transformation
ServiceNow discusses three IT transformations that can help CIO's automate IT services to transform IT and the enterprise.
Maximize storage efficiency across the enterprise
The HP StoreOnce backup solution offers highly flexible, centrally managed, and highly efficient data protection for any enterprise.