CAFC Corrects SLANTS Opinion Regarding Cybersquatting Protection
On February 11, 2016, the CAFC issued an errata sheet (here) in connection with its opinion in In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2016). [corrected opinion here]. The court had listed as one of the added benefits enjoyed by a federal trademark registrant is the ability to prevent cybersquatters from misappropriating the mark owner's domain name under Section 43(d) of the Lanham Act. That was not correct, since a federal registration is not a prerequisite to a cybersquatting action under 43(d).
The CAFC's errata sheet states:
Please make the following changes:
Page 6, lines 18–19, delete "prevent 'cybersquatters' from misappropriating his domain name, 15 U.S.C. § 1125(d)".
Page 34, line 37 to page 35, line 2, delete “It cannot prevent 'cybersquatters' from misappropriating the mark in a domain name. Id. § 1125(d)."
Perhaps the court should also correct its error (at page 39 of the corrected opinion) where it states that one of the benefits of copyright registration is use of the C-in-a-circle symbol. In fact, any copyright owner may use the C symbol, regardless of whether the copyright has been registered.
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Text Copyright John L. Welch 2016.
posted by John L. Welch @ 2/16/2016
5 comments
5 Comments:
If only they could correct the true error of the decision and reverse themselves.
Radical proposal to the CAFC: at the very least, someone should hire a law clerk who knows something about trademark law, and copyright law for that matter.
I think that the court should also correct its discussion in footnote 11 suggesting that only registrable marks are valid and enforceable under Section 43(a). That conclusion is just incorrect.
The errors in the Tam opinion make me hope that the Federal Circuit doesn't become the only venue for appealing trademark decisions.
It would have also been nice if they corrected their statement that only registered marks may qualify for enhanced (up to treble) damages and attorneys' fees.
It would also be nice if they corrected their multiple statements about in re Squaw Valley Dev. Co.; the mark in question was not SQUAW VALLEY, a recognizable place name. Rather, it was SQUAW.
Sort of like the difference between kid's T-shirts emblazoned with "Gen. Joe Hooker" (the Union general) and just plain "Hooker."
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