Take Action: Defend Your Name

Defend your Name -- Trademark your organization. Establishing a trademark provides legal aid organizations with key tools that they can use to combat cyber piracy. Trademarks can be registered online at the US Patent and Trademark Office’s Trademark Electronic Application System for a fee of $335. Having a federally registered trademark gives legal aid groups several remedies to curtail domain parking or cyber squatting, and offers leverage in dealing with deceptive advertisers and search engines companies. Even if it has not registered a federal trademark, however, a legal aid organization may be entitled to common-law protection.

 

Read More: Primer in Trademarking (login required). Find out how to receive pro bono assistance with your trademark application: Pro Bono Counsel Offers Trademark Assistance.

Take Action: Remedies for Domain Name Disputes

Remedies for Domain Name Disputes

 

a. Request Voluntary Transfer -- The first line of defense in domain parking or cyber squatting disputes is to request voluntary transfer of the offending domain name from its owners. Voluntary transfer, or even buying the owner out, may be the easiest and cheapest solution.

 

b. ICANN Arbitration -- If direct contact with the owner of the site does not resolve the problem, legal aid groups have two potential avenues for recourse: they may initiate a Uniform Dispute Resolution Proceeding with the Internet Corporation for Assigned Names and Numbers (ICANN) or file suit in Federal Court under the Anti-Cyber Squatting Consumer Protection Act.

 

c. Uniform Dispute Resolution Proceedings -- Over the last several years, the Uniform Dispute Resolution Proceeding (UDRP) has become a fast and relatively inexpensive remedy for disputes over domain names. Fees typically range from $1,000 to $5000 depending on the number of domain names being challenged and number of panelists presiding over the judgment.

Under this process, the legal aid group files a complaint with a UDRP provider. The provider forwards it to the relevant domain name registrar and the owner of the domain name, and establishes a panel to render a decision about the proceeding within 14 days. The owner has 20 days from the beginning of the proceeding to file a response to the complaint. Special circumstances may extend the proceeding, but disputes are typically resolved by 60 days after the initial complaint.

The panel will order transfer of the offending domain name if it is confusingly similar to a trademark or service mark in which the complainant has rights, if the owner has no rights or legitimate interests with respect to the domain name, and if the domain name has been registered in bad faith. Evidence of bad faith includes circumstances indicating that:

• the owner has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name, or

• the owner has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

A more in-depth discussion of the UDRP process and evidence of bad faith may be found in Using ICANN’s UDRP, a seminar taught at Harvard Law School’s Berkman Center for Internet and Society between April 21 and April 28, 2000.)

 

d. Litigation: The Anti-Cyber Squatting Consumer Protection Act
Filing suit under the ACPA is much more expensive and potentially more time consuming than resolving a dispute through ICANN’s UDRP. A legal aid organization should pursue action under the ACPA if it wants to seek remedies over and above the cancellation or transfer of a domain name or it anticipates that a cyber squatter will challenge a UDRP ruling in court.

If found in favor of the plaintiff, an ACPA suit can result in

• the cancellation of a domain name or the transfer of that name to the owner of the trademark

• transfer of the defendant’s profits and payment of actual damages, costs and attorney’s fees, or
• the payment of treble damages.

In lieu of actual damages, the plaintiffs may elect for statutory damages of between $1,000 and $100,000 per domain name (15 U.S.C. § 1117(d)).

 

Plaintiffs may bring ACPA suit even if the defendant cannot be found, by filing an “in rem” suit against the domain name. This kind of suit can result in the cancellation or transfer of the domain, but monetary damages are not available in the absence of a defendant. Because an “in rem” suit provides the same remedies as a UDRP action, it may be easier and less expensive to pursue the latter.

 

e. Pursue Disciplinary Action through a Bar Association.

In cases where an entity has inappropriately used your domain name to lead users to an individual lawyer or a law firm, your organization may be able to pursue disciplinary action against that lawyer or firm through their state bar. Bar associations have ethical rules that forbid lawyers from benefiting when third parties engage in activity on their behalf that the lawyer could not engage in directly. For example:

• FL Rule 4-7.10(b) a lawyer who accepts referrals from a lawyer referral service is responsible for ensuring that any advertisements used by the service comply with the requirements of the Rules.

• TX 7. 4 (p) a lawyer who advertises in the public media as part of an advertising cooperative or venture shall be individually responsible for: (1) ensuring that each advertisement does not violate this Rule...
• ABA Model Rule 8.4 (a) it is professional misconduct to violate the Rules through the acts of another.

State ethics opinions have clarified that these rules apply to Internet advertising even when the Internet is not specifically mentioned in the rule.

Potential breaches to pursue include:

• ABA Model Rule 7.5 (a): A trade name may be used by a lawyer in private practice if it does not imply a connection with a public or charitable legal services organization.

• ABA Model Rule 7.1: A lawyer shall not make a false or misleading communication about the lawyer or the lawyer’s services… (Most states prohibit the creation of “unjustified expectations” and “unsubstantiated comparisons”)

• ABA Model Rule 7.2 (b): A lawyer shall not give anything of value for the recommendation of the lawyer’s services, except for the reasonable costs of advertising or the usual changes of a state-qualified or non-profit lawyer referral service or legal service plan. (Other 7.2 limitations may also apply. Look at the cumulative effect for multi-state entities - disclaimers, limits on dramatizations, limits on stock photos, retention/filing/ screening requirements.)
• ABA Model Rules 8.4 (c) and (d) prohibit deception or misrepresentation and conduct detrimental to the legal profession.

Possible outcomes from filing a complaint may include a cease and desist letter or "Ask Gary" style sanctions, in which lawyers may face disciplinary action because they acquired clients through advertising that is prohibited.

 

[Material in section e has been extracted from Will Hornsby's presentation, "Who's Got Your Name?" which was delivered at the NLADA Annual Meeting on November 8, 2007. The PowerPoint may be found here.]

 

 

 

 

 

 

 

 

 

 

Take Action: Dealing with Search Engine Results

Dealing with Search Engine Results

a. Defensive measures: Trademarks are also useful in the effort to deal with deceptive advertising in search engine “sponsored links.” Search engines often use broad or expanded matching to bundle related keywords and optimize the appearance of sponsored results for a variety of related searches. As a result, a search for Pepsi may return sponsored ads for Coca Cola, and similarly, a search for legal aid (or a specific legal aid organization) may return ads for for-profit sites.

Case law is unclear about whether search engines are liable for competitive or deceptive keywords in sponsored results, but some courts have held that diverting consumers through keyword searches may result in liability under the doctrine of Initial Interest Confusion (IIC).

In Brookfield Communications, Inc. v. West Coast Entertainment Corp., the Ninth Circuit defined IIC as “the use of another’s trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.” A recent district court criticized Brookfield’s analysis, agreeing that keyword advertising is a “use in commerce,” but suggesting that use of keyword-triggered ads and metatags cannot confuse consumers if the ultimate search results do not display plaintiff’s trademarks.

In recent years, Yahoo! and Google have responded to controversy about the use of trademarks in ads by establishing trademark complaint procedures. Each promises to remove or modify the advertiser’s listing to resolve the dispute.

 

b. Affirmative Steps: Search Engine Optimization. If clients know about your website and know how to distinguish it from other sites, these problems can be overcome. By developing techniques that market your website name and logo to your client community, you establish a mental mark with your site that will prevent confusion. Additionally, you can take on optimizing your web site's ability to be appropriately placed when clients search for your site or for legal help. If your website is at the top of the page, a sponsored link, and clearly identified, confusion is mitigated. Read more about Search Engine Optimization strategies.

Common Law Trademarks (and its Case Law)

A legal aid organization may be entitled to common-law protection even if it has not registered a federal trademark. Common-law trademark claims apply similar principles and case law to the Lanham Act, so that state and federal courts often rely upon each other’s cases, providing a “common reservoir” of trademark precedent.

Common law protection, however, is often limited to the geographic area in which the mark is used, and the plaintiff in a common law protection suit must prove it is entitled to exclusive use of its trademark. Unregistered common-law marks are protected locally even if someone later federally registers the mark.

 

According to case law:

• A party may obtain a common-law trademark or service mark on any terms it uses in commerce, though absent federal registration, common-law status generally limits its protection the geographic area in which the term was used. Accordingly, to bring a claim under the Lanham Act, federal registration is not required, “but the scope of any common law rights vindicated would be limited to areas where the mark is in use.”

  Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 336 n.7 (1st Cir. 2004) (citing United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97-98 (1918), which clarifies that trademark rights are confined to territories of use).

• Trademark rights may arise under either the Lanham Act or under common law, but in either circumstance, the right is conditioned upon use in commerce.

  Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 335 (1st Cir. 2004) (citing United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918), which establishes that “the right to a particular mark grows out of its use, not its mere adoption”)

• Establishing use in commerce for common-law marks is similar to that of registered marks.

  Gen. Healthcare, 364 F.3d at 336 n.6 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992), which asserts that “[T]he general principles qualifying a mark for registration under the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection.”)

• Justice Stevens has noted that the congressional purpose of the Lanham Act was to bring consistency to the myriad of common-law trademark decisions.

  Two Pesos v. Taco Cabana, 505 U.S. 763, 782 (1992) (Stevens, J., concurring in result) (citing H. R. Rep. No. 944, 76th Cong., 1st Sess., 4 (1939))

• Absent federal registration, a party seeking to establish a common-law trademark or service mark protection bears the burden of proving that it is entitled to exclusive use of the mark.

  Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 376 (1st Cir. 1980).

• It must prove that “the primary significance of the term in the minds of the consuming public is not the product but the producer.”

  Keebler Co., 624 F.2d at 376 (quoting Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938)).

• To prevail under section 43(a) of the Lanham Act, a plaintiff must establish that the mark it seeks to protect has become “so associated with its goods that the use of the (mark) by another company constitutes a representation that its goods come from the same source.”

  Keebler Co., 624 F.2d at 376 (quoting Joshua Meier Co. v. Albany Novelty Mfg. Co., 236 F.2d 144 (2d Cir. 1956)).

• A common-law mark is only effective in geographic areas where it has a presence. As Professor McCarthy stated in his treatise, “under common law, absent appropriate federal legislation, the national senior user of a mark cannot oust a geographically remote good-faith user who has used the mark first in a remote trade area.”

  McCarthy on Trademarks § 26:4 at 26-9; see Ammon & Person v. Narragansett Dairy Co., 262 F. 880 (1st Cir. 1919); Raxton Corp. v. Anania Assoc., Inc., 635 F.2d 924 (1st Cir. 1980)).

 

The PTLA Experience & LegalMatch Settlement

In 2005, Pine Tree Legal Assistance received a phone call from a client who asked why they were selling divorce forms on their website. Through this conversation PTLA learned the client had gone to www.pinetreelegal.com not the actual Pine Tree site, www.ptla.org. PTLA staff also discovered that not only did the website use the organization’s name, but that the site also had reviewed the content on PTLA’s site. The “fake site” contained links with the same topics as PTLA’s site. However, these links took users to websites that sell interactive divorce forms, eviction packets as well as lawyer referral services, and child support collection services.

 

In March 2006, Pine Tree Legal Assistance (PTLA) sued the San Francisco business in federal court in Portland, Maine alleging trademark infringement, unfair and deceptive trade practices, and false advertisement. PTLA is represented pro bono by two firms: Bernstein Shur, Sawyer and Nelson in Portland Maine and Robins, Kaplan, Miller & Ciresi, a Minneapolis-based firm. On April 3, 2006, PTLA and LegalMatch settled the lawsuit amicably. LegalMatch agreed, as part of this settlement, to work with major search engines to exclude the term “legal aid” in any advertising, as well as the specific names of any nonprofit legal services program names.

 

The LegalMatch settlement was a critical step in beginning to resolve deceptive ad-words. Unfortunately there are other companies utilizing the term “legal aid” and legal aid organization names in online advertising. Often these are national companies and therefore a nationally organized strategy is needed to address this issue in an effective way that benefits legal aid programs across the country.

 

For details of the LegalMatch settlement see the full press release on the PTLA website. PDF copies of the complaint and settlement are attached below.

 

Robert Ambrogi's covered the LegalMatch case in his LawSites blog: March 4, 2006, April 3, 2006, April 4, 2006.