FREE ESSAY ON INJUNCTION

INJUNCTION

CBS Broadcasting, Inc. v. VanityMail Services, Inc.
Federal Trademark Infringement- Likelihood of Consumer Confusion (Lanham Act ?43(a))
a) Section 4 (a) provides that the plaintiff must prove the following: 1) that the
defendant's domain name is identical or confusingly similar to a trademark or service
mark in which the plaintiff has rights; and 2) the defendant has no rights or legitimate
interests in respect of the domain name; and 3) the domain name has been registered and
is being used in bad faith.
Under this section of the act, the court must first evaluate whether or not the
defendant's domain name is identical or confusingly similar to a trademark or service
mark in which the plaintiff has rights. In evaluating the likelihood of confusion, the
court may look at a variety of factors. Some of these may include: similarity of sight,
sound or meaning between marks, the strength of the plaintiff's mark, the defendant's
intent or bad faith in adopting a similar mark, the proximity or relatedness of goods,
instances of consumers' actual confusion, marketing channels, the sophistication of
goods, and the likelihood of expansion.
The marks in question are identical in sound, meaning and spelling. The plaintiff is the
registered owner of the US service mark 48 Hours and device in Class 41 for television
news program services. The defendant is the registered owner of www.48Hours.com. They
differ only in sight for the defendant's logo is featured in differing font and color
from that of Plaintiff's. 
The strength of Plaintiff's mark is unquestionable. They have asserted 12 years of use of
the 48 hours mark. Throughout the United States they have vast notoriety as a television
news program. "The more likely a mark is to be remembered and associated in the public
mind with the mark's owner, the greater protection the mark is accorded by trademark
laws." (Kenner Parker Toys Inc. v. Rose Art Indus., Inc.,)
In terms of the defendant's intent or bad faith, they were aware of the existence of the
television news show prior to the conception of their 48 Hours.com business plans. (This
was declared by the admissions of the principals of VanityMail to having watched the
plaintiff's news program.) With this information, they proceeded to register the mark. It
is unclear as to what the defendant's intent was in choosing this domain name. None of
their services relate to any 48-hour theme of any sort. There is no evidence of
Defendant's bad faith in using the name.
The proximity of the goods supplied by the two parties in question are worlds apart. The
plaintiff supplies broadcasting services and promotional merchandise. The defendant
provides yacht services. 
There are no reported instances of any actual consumer confusion. The plaintiff has not
suffered any known damage due to Defendant's use of the mark.
The two parties do share the same marketing channels. In GoTo.com, Inc., v. The Walt
Disney Company, the plaintiff sought a preliminary injunction because Defendant's
commercially used logo on the World Wide Web was remarkably similar to Plaintiff's. The
court found that, "the Web, as a marketing channel, is particularly susceptible to a
likelihood of confusion since, ...it allows for competing marks to be encountered at the
same time, on the same screen." 
As for sophistication, any competent computer user may be able to access a web site. The
GoTo case also found that "Navigating amongst web sites involves practically no effort
whatsoever, and arguments that Web users exercise a great deal of care before clicking
hyperlinks is unconvincing."
The final issue of the likelihood of expansion may be addressed by the defendant's
presently poster logo, which reads "Coming Soon: A Unique Experience for Discerning
Tastes." Additionally, at the bottom of the screen, there is a notation stating "Please
direct any inquiries about our upcoming service to..." Obviously, the defendant does have
plans for expansion of some sort. 
b) For the above-stated reasons, the plaintiff should not be granted preliminary
injunction on the basis of this claim. GoTo.com, Inc., v. The Walt Disney Company, found
that "...use of remarkably similar trademarks on different web sites creates a likelihood
of confusion amongst Web users." Federal trademark infringement guidelines state that the
plaintiff must establish all 3 requirements listed above. The plaintiff is able to prove
that 1) the mark is identical and 2) that the defendant has no rights or legitimate
interests in the name but fails to meet the third requirement. Though the name is
registered, there is no proof that it is being used in bad faith. Thus preliminary
injunction should not be granted under the Lanham Act ?43(a).
Federal Trademark Dilution Act of 1995 (Lanham Act ?43 (c))
a) This section of the Lanham Act differs from section 43 (a) in that it made the notion
of dilution a federal-law concern. Section 43 (c) does not require competition between
parties and a likelihood of confusion to present a claim for relief. The standards for
measuring dilution are quite different from those of likelihood of confusion.
In Panavision Int'l, L.P. v. Toeppen, the question was whether the defendant violated
federal or state law by intentionally registering the plaintiff's trademarks as his
Internet domain names for the purpose of exacting payment from the plaintiff in exchange
for the names. The court found that, "injunctive relief is available under the Federal
Trademark Dilution Act if a plaintiff can establish that 1) its mark is famous; 2) the
defendant is making commercial use of the mark in commerce; 3) the defendant's use began
after the plaintiff's mark became famous; and 4) the defendant's use presents a
likelihood of dilution of the distinctive value of the mark." 
b) The court must first look at whether or not Plaintiff's mark is in fact famous. The
requirements of whether or not a mark is famous must meet the following criteria: 1) the
degree of inherent or acquired distinctiveness of the mark; 2) the duration and extent of
use of the mark in connection with the goods or services with which the mark is used 3)
the duration and extent of advertising and publicity of the mark; 4) the geographical
extent of the trading area in which the mark is used; 5) the channels of trade for the
goods or service with which the mark is used; 6) the degree of recognition of the mark in
the trading areas and channels of trade used by the mark's owner and the person against
whom the injunction is sought; 7) the nature and extent of use of the same or similar
marks by third parties; and 8) whether the mark was registered... on the principal
register. 
In Panavision Int'l, L.P. v. Toeppen, the court found Panavision marks to be famous
marks. Panavision owned the federal registration for the marks and it developed a strong
secondary meaning because of Panavision's long period of exclusive use of the mark and
its status as a major supplier of photographic equipment. In the instant case, the
plaintiff has used the 48 Hours logo for over 12 years. The plaintiff owns the federal
registration of the 48 Hours mark. All of the requirements for famousness are met as
discussed above in section 43 (a).
The defendant is using the domain name as a means of commercial use in commerce. They
provide yacht charters and management services to individuals and corporations in the
Caribbean area. The website contains an image of a harbor filled with boats. There is
also an e-mail address provided at the bottom to direct customer inquiries to. This
proves that the site is being used as an advertisement to solicit business. There are
multiple banners from sponsors on the page as well. This verifies that the defendant is
making money from the use of this site and therefore, the domain name.
The plaintiff has used its 49 Hours marks since at least January 1988. Throughout the 12
years, the mark has gained recognition throughout the United States as a television news
show. The defendant registered the domain name in May of 1997. Therefore, plaintiff's
mark had already become famous.