Ruling says trademark not famous enough for internet

A US federal appeals court has ruled that the Avery and Dennison trademarks of the office products company Avery Dennison Corp are not famous enough to prevent another company from registering them with the .net domain.

The case involves Mailbank.com, an online service that sells personalised e-mail and Web addresses to individuals. Free View Listings, which operates Mailbank.com, registered avery.net and dennison.net domain names for use by people with those as first or last names.

Avery Dennison, which has trademarks for both names, sued claiming Mailbank was diluting its trademarks. The US District Court for the Central District of California ruled in Avery Dennison's favour and ordered the president of Free View, Jerry Sumpton, to transfer the domain name registrations to the company in exchange for $US300 each.

Sumpton appealed to the US Court of Appeals and a three-judge panel issued its ruling in his favour yesterday. The appeals court reversed the earlier ruling and ordered the case back to the lower court with instructions to enter summary judgement for Sumpton and to consider his request that Avery Dennison pay his attorney fees.

To successfully claim trademark dilution, a company must prove that its trademark is famous, that the defendant is making a commercial use of the mark and that the use is likely to dilute the distinctive value of the trademark, among other things, the opinion said.

However, although Avery Dennison's trademarks meet the criteria for being distinctive, they do not meet the threshold of fame, Judge Stephen Trott wrote in the opinion. "Therefore, to meet the 'famousness' element of protection under the dilution statutes, 'a mark (must) be truly prominent and renowned'," he wrote, citing a prior ruling.

In addition, Sumpton was not making a commercial use of the mark, but using names, that happen to be trademarks, for domain purposes, Trott said.

The judge also pointed out that both Avery and Dennison are common surnames and other companies have used one or the other surname in various other trademarks. He added that Avery Dennison would have had a stronger case if the lawsuit involved the .com domain, which Avery Dennison already owns, rather than the .net domain.

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