A review of the Patent and Trademark office trademark registration database reveals no trademarks for "autotroll" and one active trademark for "autotrol" owned by the Autotrol Corporation of Wisconsin. "Auto-trol" is trademarked by the Wagstaff Battery Mfg. Co. of Oregon and AVL List GmbH of Austria. While Auto-trol Technology Corporation has registered the mark "Auto-trol Technology" in both text and graphic form, it has no federal trademark claim on the individual word "auto-trol." (Auto-trol Technology Corporation, under its previous name of Auto-trol Corporation, seems to have had a registered trademark for the mark Auto-trol which it allowed to expire in 1999.)
Mr. Lode has not violated either the Lanham Act (aka the Trademark Act of 1946), or the amendments to the Lanham Act known as the Federal Trademark Dilution Act (FTDA) of 1995 and the Anticybersquatting Consumer Protection Act (ACPA) of 1999, by his possession and use of the domain "autotroll.com.
Mr. Lode's use of autotroll.com cannot be considered "unfair competition" when the website is not competing with anyone, unless the humor business is far more competitive than Mr. Lode thought. Perhaps he should give serious thought to whether he is draining chuckles away from other websites.
Section 43(a)(1)(A) of the Lanham Act provides relief only when another person's use of a mark "is likely to cause confusion, or to cause mistake, or to deceive . . . as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person". Bliss Salon Day Spa, v. Bliss World, LLC. 268 F. 3d 494 (2001) Mr. Lode's use of autotroll.com is unlikely to cause confusion as to the source of a product or service because the pages found at that address are not offering any product or service. There is no list of services or products and the pages have no contact information. While it seems at first glance to be the pages of a website design service (for which service your company does not hold any trademark) it should not take the reader long realize that the webpage is written entirely tongue-in-check and that no commercial transaction is being proposed.
The legal prohibitions of "dilution" of a trademark are intended for the "preservation of the uniqueness of a trademark" Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 831 (1927) quoted by Justice Stevens in Moseley v. V Secret Catalogue, Inc., ___ U. S. ___ (2003) No. 01-1015. Decided March 4, 2003. Senator Orrin Hatch stated that the intent of the FTDA (15 USC 1125(c)) was "to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it," and referred to examples like Dupont Shoes, Buick aspirin, and Kodak pianos. To meet the "famousness" element of protection under the dilution statutes a mark must be truly prominent and renowned. Avery Dennison v Sumpton, 189 F. 3d 868 (1999).
Auto-trol Technology Corporation does not even own the federal trademark Auto-trol, nor may it claim that Auto-trol has the famousness or distinctiveness required for protection under the FTDA when there are so many other companies already using Auto-trol or similar names and marks. In addition autotroll.com is not identical to the Auto-trol Technology mark or sufficiently similar to meet the requirements of dilution. The U.S. Supreme Court recently ruled that Victor's Secret did not dilute the mark Victoria's Secret and stated that the mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution . [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA. Moseley v. V Secret Catalogue, Inc., ___ U. S. ___ (2003) No. 01-1015. Decided March 4, 2003
Even if Auto-trol Technology Corporation could claim that Auto-trol was a famous mark as required under FTDA, and that Auto-trol Technology Corporation owned that mark, the FTDA requires commercial use for a violation of the Act and specifically states that non-commercial use is not actionable (15 USC 1125 (c)(4)(B)). Mr. Lode is not using autotroll.com for any commercial use and thus is protected under the First Amendment and excluded from actions under the FTDA.
The Anticybersquatting Consumer Protection Act (ACPA) (15 USC 1125 (d)) requires a bad faith intent to profit from that mark. That Act lists several factors to be considered in determining whether that intent exists, including the person's bona fide noncommercial or fair use of the mark on a site accessible under the domain name, whether the person made an offer to sell the domain name, and the extent to which the mark incorporated in the person's domain name registration is or is not distinctive or famous within the meaning of 15 USC 1125 (c)(1).
Mr. Lode had no bad faith intent to profit from the autotroll.com domain at anyone's expense. His use of the domain is non-commercial and well within his right to free speech protected under the First Amendment to the U.S. Constitution. In addition, Mr. Lode has never offered to sell the domain to Auto-trol Technology Corporation, any of the other companies of similar names, or anyone else. He has never sold any domain name to anyone or ever offered to sell a domain name.
Auto-trol Technology Corporation could not claim that Auto-trol is sufficiently famous or distinctive for protection under either the FTDA or the ACPA even if Auto-trol Technology owned the mark. Auto-trol Technology Corporation certainly has no basis on which to prevent others from using the word autotroll in domain names or corporate names.
Auto-trol Technology Corporation's claims and threats are without legal or factual basis, and your letter merely represents an attempt to intimidate Mr. Lode into giving up his property rights in the domain and his rights under the First Amendment to use that domain to display his humor. Mr. Lode has no intention of ceasing his present use of autotroll.com, or of transferring the autotroll.com domain to your company, merely upon your demand. If Auto-trol Technology had indeed wanted to discuss Mr. Lode's ownership of this domain "amicably" then it should not have started the conversation with these poorly researched legal threats.
While your letter states that you are the "manager of the legal department of Auto-trol Technology Corporation," which might suggest to a layman that you were an attorney, you are not listed on the Colorado Supreme Court's list of attorneys registered to practice law in this state. That being the case, I recommend that you consult with corporate counsel and reconsider your threats against my client. In fact, I believe you owe him an apology.
|Darlene A. Cypser|