Amidst public criticism and pressure from corporate sponsors, many well-known brands are taking a hard look at their trademarks and choosing to move in a new direction. These changes are impacting brands in various industries from sports teams, like the currently unnamed Washington NFL team, to retailers, like Trader Joe’s. While appeasing the call for change, an unfortunate consequence with which these brand owners must deal are trademark trolls.
The basic premise that a generic term is un-registrable is, at first glance, uncontroversial. If a key purpose of a trademark is to identify a particular source of goods or services, then it stands to reason that one cannot obtain a trademark registration for the name of that very category of goods or services. For example, it’s unlikely one could register the mark “Books” for a bookstore, or “Groceries” for a supermarket—doing so would effectively grant the owner a monopoly on the use of those very terms. But what if those ostensibly generic terms were part of a website domain?
When the Digital Millennium Copyright Act of 1998 (the “DMCA”) was enacted, the stated goal was to bring federal copyright law into the 21st century by providing certain immunities to internet service providers while preserving and even streamlining the ability of copyright holders to enforce their rights.
In the years immediately following the passage of the DMCA, things seemed to work smoothly. In particular, the notice-and-takedown procedure set forth in Section 512, which allows copyright owners to send written notices to parties who have allegedly used copyrighted content without authorization and which requires the recipients of such notices to promptly remove the content, was a useful tool that enabled parties to reach quick resolution of copyright disputes while avoiding costly litigation.