Deck 7: New Developments in Trademark Law

Question 1

XYZ Corp., an Oregon corporation with a "brick and mortar" location only in Oregon, has a website by which viewers simply view pictures of cars that XYZ sells only in Oregon. May XYZ be sued in Texas? Discuss.​

Answer 1

No. The website in this case is passive; there is no interaction with residents of Texas. XYZ has merely posted information on its website and Texas residents look at this information. They do not enter into contracts with XYZ. Thus, XYZ's contacts with the State of Texas are minimal; thus, it should not be subject to the jurisdiction of Texas courts.​

Question 2

A trademark owner may bring an action under the Anticybersquatting Consumer Protection Act even if it has no registration for its mark.

Answer 2

True

Question 3

​ To communicate on the Internet, users are assigned "addresses," called ______ .

Answer 3

domain names

Question 4

U.S. courts require that trademark owners continually scour and search the Internet to locate infringing uses of their marks.  

Question 5

You have received an email purporting to be from Wells Fargo Bank (your bank), but that is actually from an individual in Europe. The email displays Wells Fargo's trademarks and advises you that your account has been compromised and asks you to provide your account information so that the matter can be resolved. This practice is called ______.​

Question 6

​It is not possible for two individuals or companies to have the same web address.

Question 7

The nonprofit public benefit corporation that oversees the domain name system in the United States is called ______.

Question 8

List two approaches/avenues a trademark owner could take to obtain redress if it is a victim of cyber squatting.​

Question 9

​ The practice of a third party registering a domain name such as www.ford.net to divert Ford's customers to that site or to perhaps ransom back the domain name to Ford is called ______.

Question 10

​ Why would a company such as Disney pay to register a domain name such as "Disney.porn" or "Disney.xxx"?

Question 11

Why is it often the case that a traditional action for trademark infringement cannot be brought against a party who wrongfully registers www.ibm.org?

Question 12

Domain name registrars are not liable for registering an infringing domain name unless there is a showing of bad faith.

Question 13

Diversion of consumers' initial interest can be actionable under the Lanham Act.

Question 14

If IBM provides a hyperlink on its website (such as www.microsoft.com) by which users can link to Microsoft's home page, such is trademark infringement.

Question 15

ACPA allows recovery against a domain name registrant if the defendant wrongfully used or registered another's trademark.

Question 16

​Generally, the standards and tests used to determine trademark infringement in cyberspace are the same as those used in conventional settings.

Question 17

Identify an advantage and a disadvantage of bringing a procedure under the Uniform Domain Name Dispute Resolution Policy to recover one's domain name.

Question 18

A domain name registrant's bad faith intent to profit must be shown for a plaintiff to prevail under the Anticybersquatting Consumer Protection Act.

Question 19

ABC Inc., an Ohio company with a "brick and mortar" location only in Ohio, allows consumers all over the United States to purchase housewares through its website and then ships those goods to the purchasers. May ABC be sued in Texas? Discuss.

Question 20

What new process is available to an owner of a registration under ICANN's new gTLD expansion program? For example, what new procedure is available to Kraft if it discovers someone has registered www.kraft.porn?​

Question 21

Ruby Tuesday's has set up a website called www.ILoveOliveGarden.com. When visitors attempt to access the site, they are immediately directed to Ruby Tuesday's site, where it advertises its restaurants and services. Discuss whether this constitutes infringement of the OLIVE GARDEN mark.​

Question 22

Tyler has set up a website called www.IhateStarbucks.com on which he encourages users to post comments about their bad experiences at Starbucks and on which he vents about his bad experiences at Starbucks. Discuss whether this constitutes infringement of the STARBUCKS mark.​