The Lanham Act was originally enacted as the Trademark Act of 1946. It has been amended
several times. It is codified at 15 U.S.C. §§ 1051-1127.
The Lanham Act provides remedies for both trademark infringement and trademark dilution.
There is now, in addition, the Anticybersquatting Consumer Protection Act of 1999. These are all
discussed below.
A. INFRINGEMENT Trademark infringement occurs when a non-owner uses another’s
trademark in a way that causes actual confusion or a likelihood of confusion between the marks.
Specifically, the Act prohibits the use of marks that are "likely to cause confusion, or to cause a
mistake, or to deceive."
In order to establish infringement, a plaintiff must first show its own actual trademark use.
Defendant Marc J. Randazza, as the Record Shows, goes by “Marco Randazza” and NOT Marc
Randazza, as his “mark”.
That is, it cannot simply register and then warehouse a trademark in hopes of someday bringing
an infringement suit. The plaintiff must also show that the trademark is distinctive. Finally, it must
show that the defendant’s use of a mark is non-functional. A mark is non-functional when it is not
inherent to the purpose or description of what it is representing. (For example, "bandage" is
functional; "Band-Aid" is non-functional.)
1. B. DILUTION
Trademark dilution is less concrete than infringement. In order to understand it, one must be
familiar with a number of terms of art. In a dilution case, there is a "senior user" and a "junior
user." The senior user is the entity that used the mark first, and is almost always the plaintiff in a
dilution case. The junior user is the entity that subsequently uses the mark. The junior user is
usually the defendant in a dilution case.
A dilution case involves use of a mark in a "commercial context." This means that the use in
question must actually be in the stream of commerce and could therefore make a profit for the
user.
Dilution deals with marks as a "source indicators." This term refers to the ability of a mark to
identify a user and/or its products and services. One of the most important aspects of using
marks as source indicators is the reputation of a user and how that affects the public’s
perception of the mark.
Dilution occurs when a junior user uses a senior trademark user’s mark in a commercial context
in a way that lessens the power of the senior user’s mark as a source indicator.4
There are two forms of dilution.
The first is dilution by tarnishment, which is the diminishing of the power of the senior user’s
mark because of its association with the negative aspects or connotations of the junior user’s
use of the mark.
The second is dilution by blurring, which is when the power of the senior user’s mark is
decreased because of the blurring of the mark’s distinctive quality caused by the existence of the
junior user’s mark.
In a dilution cause of action, the plaintiff must show that its mark is famous and that the junior
user is using its mark in a commercial context. In order to determine whether a mark is famous,
Congress set out eight nonexclusive factors that a court may consider.
There are three uses that Congress made non-actionable under the dilution section of the
Lanham Act. They are, briefly, fair use of a famous mark for comparative advertising or
promotion, noncommercial use, and all forms of news reporting and commentary.
1. C. CYBERPIRACY PREVENTION
The ACPA provides a cause of action similar to a dilution claim, but one with its own unique
elements.
The first difference is that the plaintiff’s mark need not be famous. It need only be protected.7
A plaintiff can establish liability by showing the following. The plaintiff must show that the
defendant has a bad faith intent to profit from the mark. Defendant Marc J. Randazza has NOT
proven and cannot prove intent to profit, as the motive of Pro Se Plaintiff Crystal L. Cox was to
provide a platform of media to parody, satire and report news regarding
Defendant Marc J. Randazza and his Clients, Co-Conspirators, Defendants.
Defendant Marc J. Randazza has NOT proven and cannot prove intent to profit, as the motive of
Eliot Bernstein, as he received domain names as assets in lieu of a debt that is well documented
in the courts, and had NOTHING to do with Content or prior use of Domain Names.
"SUCKS.COM" CASES UNDER THE LANHAM ACT
In Bally Total Fitness Holding Corp. v. Faber,14 Bally brought a trademark infringement and
dilution suit against Faber after Faber created and registered a website called
www.compupix.com/ballysucks. This site, which no longer exists, was dedicated to complaints
about Bally.
The court immediately concluded that there was no likelihood of confusion between Bally and
Ballysucks.com because they are not "related goods" and dismissed the infringement claim.
Although the court dismissed the infringement claim, it still discussed how the case would come
out under the most common likelihood of confusion test, found in AMF Inc. v. Sleekcraft Boats.15
The court most likely did this because this was the first case of its kind and the court wanted to
establish some official position on the matter.
The Sleekcraft test uses eight factors to determine whether a defendant’s use of a plaintiff’s
trademark creates a likelihood of confusion. The factors are:
Strength of the mark
Proximity of the goods
Similarity of the marks
Evidence of confusion
Marketing channels used
Type of goods and the degree of care likely to be exercised by the purchaser
Defendant’s intent in selecting the mark
Likelihood of expansion of the product lines16
The court found that Bally has strong marks, as evidenced by the amount of money spent on
advertising and the fact that no other health club company uses the Bally mark. This factor came
out in favor of Bally.
The court found that the similarity of marks factor leaned in favor of Faber. Bally argued that the
marks are identical or that adding "sucks" on the end of "Bally" is a minor change. The court
found that "sucks" is such a loaded and negative word that the attachment of it to another word
cannot be considered a minor change.
Bally asserted that the goods were in close proximity because both used the Internet and
because it had a complaint section on its own website. The court found, however, that the sites
did not compete, even though they were both on the Internet. This is because Bally’s is a
commercial site while Faber’s site is for the purpose of consumer commentary. The factor
leaned in favor of Faber.
Bally presented no evidence of actual confusion. Just as Defendant Marc J. Randazza has no
Evidence of Actual Confusion. Bally argued that the confusion would be patently obvious due to
the similarity of the marks. The court, however, found that a reasonably prudent user would not
mistake Faber’s site and the official Bally’s site. This factor leaned in favor of Faber.
Bally argued that the marketing channels used, namely the Internet, were identical. The court
found that the overlap of marketing channels was irrelevant because Faber’s site was not a
commercial use of the mark. This factor was neutral or slightly in favor of Faber.
Bally argues that an Internet user may accidentally access Faber’s site when searching for
Bally’s site on the web. The court dismissed this because Faber does not actually use Bally’s
trademark. It further points out that an Internet user searching with a search engine may want all
the information available on Bally’s and is entitled to more than Bally’s own site. This factor
leaned in favor of Faber.
The court found, and Bally agreed to some extent, that in the context of consumer commentary,
Faber was entitled to use Bally’s mark. In fact, he had to use Bally’s mark in some way to
identify what he was criticizing. This factor was neutral.
Bally conceded that there was no likelihood of the two parties expanding into each other’s lines of
business. For this reason, the last factor leaned in favor of Faber.
In concluding its discussion of likelihood of confusion, the court stated that "applying Bally’s
argument would extend trademark protection to eclipse First Amendment rights. The courts,
however, have rejected this approach by holding that trademark rights may be limited by First
Amendment concerns."
Under the dilution claim, Bally argued that there was dilution by tarnishment because Faber also
had pornographic websites linked from the compupix.com site.
The court found that Faber had engaged in no commercial use of the Bally name due to the
nature of the website. The court also concluded that there was no tarnishment. In so deciding,
the court said that if tarnishment existed in this case, "it would be an impossible task to
determine dilution on the Internet."
The court went on to point out that to include "linked sites
as grounds for finding commercial use or dilution would extend the statute far beyond its
intended purpose of protecting trademark owners from use that have the effect of ‘lessening. . .
the capacity of a famous mark to identify and distinguish goods or services.’"
For these reasons, the court ruled in favor of Faber. In the other "sucks.com" Lanham Act,
Lucent Technologies, Inc. v. Lucentsucks.com,21 the court did not get beyond the jurisdictional
issues to reach the merits. However, the court acknowledged in dicta that had the case reached
the merits, the court probably would have reached a decision similar the one reached in Bally.
