A decision from the WIPO Arbitration and Mediation Center reiterates our previous advice to broadcasters to file for federal service mark protection for their call signs. The case is Gray Television Group, Inc. v. Manila Industries, Inc.
Manila Industries registered 32 Internet domain names which incorporated several call signs of Gray Television stations. Some of these domain names simply involved the call sign itself; others appended a descriptive term to the call sign such as "news", "weather", "sports" or the channel number of the station. Gray had procured federal service mark registrations for some, but not all, of these call signs.
Gray utilized the "Uniform Dispute Resolution Policy" ("UDRP") applicable to cyber-squatting conflicts to begin an arbitration proceeding against Manila Industries. The arbitration proceeding exists as a streamlined, paper-only alternative to filing a federal court action against a cyber-squatter under the Anti-Cybersquatting Consumer Protection Act. Though the arbitration proceeding does not allow for the punitive remedy of statutory damages that exist if one goes to federal court, it is significantly less expensive and resolution can occur within weeks, as happened in this case. Both a federal court action under the Anti-Cybersquatting Consumer Protection Act and arbitration under the Uniform Dispute Resolution Policy require the plaintiff/claimant to show similar evidence in making its case. In UDRP case, the claimant must specifically demonstrate:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The person registering the domain name has no legitimate right to that name; and
- The domain name has been registered and used in bad faith.
Manila Industries did not file a response in this case, which made it pretty easy for Gray Television to make its case, especially on the issues that Manila had no legitimate right to these domain names and that Manila Industries had registered these domain names in bad faith — the two areas that require the most lawyering and must be supported by documentary evidence in the bulk of contested cases.
In fact, it is the first issue, that the domain names that Manila Industries registered were identical or confusingly similar to a trademark or service mark in which Gray Television has rights that should capture the interest of broadcasters.
We previously discussed for you, in the January 2007 Memorandum to Clients, the need for obtaining federal service mark protection for broadcast call signs. Our advice was based on two differing decisions in URDP cases, one in which the claimant had obtained federal service mark protection (and won) and one in which the claimant had not filed its call signs as federal service marks (and lost).
This decision does not change our views on the matter. While the arbitrator gave significant weight to the fact that a call sign is a federally issued identifier for a television or radio station and, thus, adds credence to the argument that the call sign is the sole identifier for that station, it must be remembered that this is just one piece of evidence that will be used to show that the call sign has common law trademark or service mark protection. Gray Television still had to provide evidence that it had established a common law service mark in each of the disputed call signs by their continued and exclusive use over time. The arbitrator explicitly wondered whether one of these call signs, WCAV, had acquired the required level of distinctiveness in its three year existence. This might all have been called into question had Manila Industries filed a responsive pleading.
But things are so much easier when the call sign has been registered with the United States Patent and Trademark Office as a federally protected service mark. The claimant need only provide the one page registration to fully satisfy the existence of a service mark. No fuss, no muss, as they say.
This protection was given new breadth in this decision. The arbitrator clearly said that, in addition to protection for the call sign itself as the domain name, Gray Television is protected against cybersquatters that add descriptive terms to the call sign in an attempt to end run the service marked call sign. Thus, federal service mark registration is so much stronger than the term it protects. Obviously, the benefits of registering a call sign reach into all areas of commerce, not just the universe of domain names.
These benefits all come at a very low cost because the registration process is extremely simply and relatively inexpensive. The filing fee for a USPTO application is $275.00 and it likely requires only about 1 hour to complete the application, which means that you’re not paying much in legal fees. A federal service mark registration is a property right that adds value to the station and can be transferred when the station is sold. So registering that call sign as a federal service mark gets you more bang for your buck nowadays.
We once again urge you to consider obtaining federal service mark protection for your call signs.