UnIntellectual Property (UnIP): Trademark Rights in the United States

The United States District Court for the Eastern District of Virginia had to determine the following issue: “whether Plaintiff fails to state a claim for direct trademark infringement and contributory trademark infringement when Plaintiff does not assert (1) trademark rights in the United States, and (2) effect on United States commerce.”  Does the way this issue was framed by the Court give away the answer? (YES).  The Court granted Defendants’ Motions to Dismiss Plaintiff’s Complaint for failure to state a claim because Plaintiff failed to plead facts to establish recognized trademark rights in the United States.

Plaintiff, the owner of a Canadian trademark for LANDCRUISE that rents motor homes in Canada and a pending USPTO application in the United States, operates from its website landcruise.com.  Plaintiff alleged that Defendant, a resident of the United Kingdom who uses the “Landcruise” mark in connection with her motor home rental business in the UK and registered landcruise.co.uk, has infringed his trademark.  The Court analyzed Plaintiff’s trademark rights.  In doing so, it found that the Plaintiff had not alleged sufficient facts to assert that he operates his business or uses his mark in the United States.  Moreover, “to the extent that his business operates exclusively in Canada, there can be no confusion among American consumers because Dunabin’s use of Landcruise is limited solely to the United Kingdom.”

Most tellingly, the Court went on to state:

 

Plaintiff erroneously relies on his use of the Landcruise mark in Canada and his registration of Landcruise.com domain name to confer trademark rights in the United States. Plaintiff alleges such conduct gives him worldwide rights to the Landcruise mark, as well as exclusive rights over all second-level domain names and subdomain names, including Dunabin’s Landcruise.uk.com. However, operating a website available on the Internet is not equivalent to use in United States commerce. See Specht v. Google Inc., 758 F.Supp.2d 570, 593 (N.D.Ill.2010)(finding a website that merely advertises products and fails to offer consumers any information regarding pricing and sales does not constitute a bona fide use in commerce under the Lanham Act.). “Courts have noted that anyone may register any unused domain name upon payment of a fee,” but this registration in no way trumps federal trademark law. Newborn v. Yahoo!, Inc., 391 F.Supp.2d 181, 190 (D.D.C.2005)(internal citations omitted). Therefore, the mere registration of Plaintiffs Landcruise.com domain name is insufficient to confer trademark protection under the Lanham Act.

 

Based upon the above, the Court granted dismissal finding that Plaintiff had not established trademark rights in the United States.  The decision raises several questions for me, and likely for trademark attorneys and domain name lawyers alike:

1. Once again, how much would a USPTO trademark registration have helped, especially given the Court’s strict interpretation of the geographic scope of trademark rights?

2. While the mere registration of a domain name is not enough to establish trademark rights, if Plaintiff had established actual trademark use on its website or in some other marketing material and could point to a US customer, would that have changed the ruling?

3. Was there not a cybersquatting claim under the ACPA?

4. Could all of this change if Plaintiff can successfully register its mark with the USPTO?

Schreiber v. Dunabin, 1:12-CV-852 GBL-JFA, 2013 WL 1457834 (E.D. Va. Mar. 29, 2013).

 

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