Cybersquatting: The Distinctive Mark Requirement

The Anticybersquatting Consumer Protection Act (ACPA) makes it illegal to register, use, or traffic in a domain name that is identical or confusingly similar to a distinctive mark, or that is identical or confusingly similar to, or dilutive of, a famous mark, with a “bad faith intent to profit” from the mark.

As emphasized above, the plaintiff’s mark must be distinctive or famous to give rise to a claim under the ACPA, among other factors. However, a plaintiff need not have registered its mark with the United States Patent and Trademark Office to file a claim under the ACPA. Instead, the plaintiff must prove that she was the first to use the mark in commerce.

The ACPA adopted the distinctiveness requirement from trademark law. In a typical trademark infringement claim, a trademark must be sufficiently distinctive or have acquired distinctiveness to merit protection. Taking that principle a step further, the ACPA mandates that a trademark must have been distinctive at the time that the infringing domain name was registered in order for a claim to move forward.

To determine whether a mark is distinctive or famous, a court may consider many factors, which include, but are not limited to:

• the degree of inherent or acquired distinctiveness of the mark
• the duration and extent of its use
• the duration and extent of advertising and publicity
• the geographical area in which the mark is used
• the channels of trade
• the degree of recognition of these marks in the parties’ channels of trade
• the nature and extent of third-party use of the same or similar marks
• whether the mark is federally registered

It’s important to recognize that distinctiveness and fame are different concepts. A mark may be distinctive and yet not be famous, or a famous mark may be considered distinctive only because it’s famous. When evaluating a mark’s distinctiveness, courts evaluate whether the mark serves to identify in the minds of consumers the origin of the product or service sold under it. If so, then it’s likely a distinctive mark, provided the mark isn’t found to be descriptive or generic.

On the other hand, a mark’s “fame” is a measure of how widely known and recognized the mark is to consumers. Companies that heavily advertise their marks, such that the marks are known throughout the world, would likely qualify as “famous” marks. You can probably call several marks to mind that a court would deem famous.

If you’re considering registering your trademark as a domain name, or if you think someone has violated the ACPA by using your mark as a domain name, contact Revision Legal’s experienced Internet attorneys here or call 855-473-8474.