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Web trademarks: It's not the words, it's the action

Mark Sableman July 1, 2015

In the old days, you obtained nationwide priority for your trademark only through federal registration. But does the Internet now give you an easier path to nationwide priority, just by posting your mark on a nationally accessible website? It's not that simple, as the case of a recent failed trademark application shows.

David Couture applied in 2008 to register the mark PLAYDOM. He alleged that he was already using the mark, and provided the Patent and Trademark Office, as a specimen of that use, a screen capture of a website page. Interestingly, while the page briefly described his company’s services, it also recited: “Website under construction.” The USPTO registered the mark, and later used that registration as the basis for denying a different company’s later application for the same mark.

At first blush, Couture’s position seemed firm — he clearly was using the trademark in 2008, as the website screen capture showed. And use of a trademark on the web is a powerful use indeed, since websites reach the entire country.

But the second applicant, noticing the “website under construction” legend, moved to cancel Couture’s registration. Evidence eventually showed that Couture put up the website in 2008, but PLAYDOM never actually began offering its services until 2010. Accordingly, the website use wasn’t real trademark use. The Trademark Trial and Appeal Board cancelled the mark. Affirming that decision earlier this year, the U.S. Court of Appeals for the Federal Circuit noted that a mark “must actually be used in conjunction with the services described in the application” in order to establish real “use in commerce,” a prerequisite for registration.

The PLAYDOM case involves a federal trademark registration but it provides lessons for those seeking common law protection as well. You might think that the Internet makes it immeasurably easier for a seller to acquire common law trademark rights nationwide. Common law trademark rights, after all, arise automatically out of use of a mark in commerce, and use of a mark on a website usually qualifies as use in commerce.

Before the Internet you had to conduct operations, or at least pay for costly media or direct mail advertising, in a particular city, state or region before you could acquire common law trademark rights there. But with the Internet, isn't the simple posting of a website using your trademark a use of the mark in every place that the Internet reaches?

The PLAYDOM case certainly cautions against any such easy path to nationwide trademark protection. It shows that a website that isn't backed up with an active sales operation provides inadequate support for a claim of trademark use.

And by the same token, a slick website supposedly aimed at nationwide sales may prove inadequate to establish trademark rights if sales were actually directed to a smaller region. For example, even the slickest website on the World Wide Web for the trendiest pizza parlor in Key West won't create national trademark rights if you can't buy the pizza anywhere but on Duval Street.

Websites are amazing marketing tools, and use of a trademark on a site that is backed by active sales throughout the country can indeed establish nationwide trademark rights, akin in some (but not all) ways to the rights that accompany a federal trademark registration. (Common law marks, for example, never become "incontestable" like registered marks.)

But as the PLAYDOM case shows, most trademark owners are well advised to take care to dot their trademark i’s and cross their trademark t’s. Federal trademark registrations are the gold standard for trademark protection, but Internet companies have to meet the same hurdles to get them as do their brick-and-mortar counterparts.

If, like Couture, you are one of those Internet entrepreneurs who posts first, and implements a business model later, you are probably best advised to utilize the intent-to-use trademark application procedure.

Mark Sableman is a partner in Thompson Coburn’s Intellectual Property group. He is the editorial director of Internet Law Twists & Turns. You can find Mark on Twitter, and reach him at (314) 552-6103 or msableman@thompsoncoburn.com.