USING AND REGISTERING PLANT TRADE 
DESIGNATIONS AS TRADEMARKS

INTRODUCTION

A cultivar name is a taxonomical identification of a plant variety and trademarks are used to indicate the source of origin of plants sold in the marketplace. Cultivar names may be freely used worldwide to identify a particular variety. However, trademarks used on or in connection with plants denote the source and origin of the plant and may not be used in commerce without authorization of the trademark owner. Trademark rights can be valuable commercial assets when used to protect investment in marketing and promotion of a plant variety.

UNDERSTANDING TRADEMARKS
Definition of Trademark

Before considering application of trademarks to plants, it is important to understand what trademarks are all about. A commonly accepted definition is that a trademark is a term adopted and used by a manufacturer or merchant to identify goods and distinguish them from those manufactured or sold by others. The term selected for use as a trademark may be a word, name, symbol, or device, or any combination of these. We are all familiar with well-known trademarks to which all of us are exposed every day. Some of us may even be aware of, or have read about, conflicts involving trademarks which sometimes even appear in the public press. Forms of marks other than trademarks also may be protected, such as service marks, collective marks and certification marks; but except for service marks, these other forms are generally not used in the plant industry. A service mark is one applied to distinguish a service offered to the public, such as marketing of plants by nurseries and garden shops.

Function of Trademarks

The main function of a trademark is to indicate the origin of goods with which the trademark is associated. Trademarks also serve as an implicit identification of the quality of goods bearing the mark. After satisfactory experience with a trademarked product, purchasers often view the trademark as a guarantee of an acceptable level quality. Actually, the rationale for offering protection to owners of trademarks is to protect the public by enabling purchasers of products bearing trademarks to expect the quality previously experienced to be dependably reproduced over time. In other words, if a consumer is satisfied with a product identified by a particular trademark, that person will expect to receive the same value and quality on subsequent purchases of that product. Because of this reliance by purchasers, the law in most countries gives the owner of the trademark the fight to exclude others from applying that trademark on goods manufactured and/or sold by others since the trademark owner does not have the opportunity to control the quality of goods not manufactured by the trademark owner. In some countries the owner of a trademark will have rights to sole use of the mark even in the absence of formal registration of the mark. In the United States such rights are referred to as "common law" trademark rights. However, without exception it is better to obtain governmental registration of the mark when possible than to rely on common law rights.

Use of Trademark Required

Rights in a trademark are acquired only by use and, generally, the use must continue if the trademark rights are to be preserved. There can be no protectable trademark right if the trademark is not actually used to identify goods in the marketplace. In other words, one cannot acquire protectable trademark rights for unused trademarks. Moreover, trademark rights once acquired may be subsequently lost through nonuse, or misuse.

In the United States, federal and state trademark law protects a mark whether or not it is registered. As a general rule in all countries recognizing trademark rights, it is an infringement of these rights for someone else to use the same or a confusingly similar term, on the same or closely related goods, in the same geographical area, or in some cases, within a natural area of expansion. Moreover, trademark infringement is a form of unfair competition and, therefore, may be within the scope of unfair competition laws. A trademark registration protects the owner and the public against a likelihood of confusion, mistake or deception about the source, affiliation, sponsorship or approval of goods or services by commercial activities of another. In the United States, federal registration also protects against the use of any false or misleading statement of fact in commercial advertising or promotion which contains a misrepresentation about the person's, or another's, goods, services or commercial activities. Unauthorized use of another's trademark is such a misrepresentation.

Some countries also have antidilution statutes which protect the owner of a very strong trademark against the loss of its distinctiveness or damage to its image even if there is no likelihood of confusion, by use of a mark similar to the famous trademark. A national antidilution law has been recently enacted in the United States.

Protection of Trademarks

It is unfortunate that the word "registration" is used in the context of conferring statutory protection to trademarks and also in the context of registering the plant name with an International Registrar because this often results in confusion. Registration with an International Registrar does not confer any legal rights whereas use of a term as a trademark and governmental registration of a trademark does confer significant legal rights to the trademark owner. For this reason, those manufacturing and selling goods identified by a trademark generally seek governmental registration of the mark, if possible. Moreover, registration on a national Principal Trademark Register is evidence of the exclusive right to use the mark and entitlement to the remedies for infringement under national law. For example, it is possible for a trademark owner to recover the infringer's profits, recover damages sustained by the trademark owner and, possibly, recover costs of the action taken to enforce the trademark rights. Furthermore, the owner of a trademark who prevails in an action for infringement can obtain an injunction to prevent further use of the mark by the infringer and require the infringer to destroy the articles bearing the infringing mark. Another right granted to the owner of a trademark is the right to prevent improper importation of goods bearing infringing marks and the customs service can be asked to assist.

Improper and Proper Usage of Trademarks

Proper usage of the trademark is fundamental to the ability to obtain and maintain proprietary rights to the trademark and to obtain the remedies for trademark infringement. Improper trademark usage is responsible for most of the confusion about the role of trademarks and about what must be done to avoid encroaching on the legitimate concerns of taxonomists.

In order to maintain the proprietary nature of a mark, the trademark should not be used as a generic description of goods. When a trademark becomes "generic" and is used to denote the goods themselves and not the origin, then the exclusive tight to use the mark may be lost. A classic example is the word "aspirin." When first manufactured and sold, this chemical composition (acetylsalicylic acid) was marketed under the trademark ASPIRIN by the Bayer company. Over time, and absent an enforcement program by the trademark owner to maintain the proprietary nature of this mark, the term aspirin came into public usage as a generic description of the chemical composition originally sold under the mark. As a result, the Bayer Company was no longer able to assert exclusive ownership of the term and prevent others from using it. This same principle applies to plant trade designations. If a commercial trade plant trade designation is or becomes the "generic" name for a plant cultivar, it is not protectable and trademark rights may be lost.

To avoid loss of trademark rights, trademarks should, in general, either be capitalized completely, used with initial caps with quotes, or at the very least with initial caps. Other alternatives for distinguishing trademarks include italicizing the mark or printing it in boldface or in a different color. Since trademarks are proper adjectives, it is desirable to use them followed by generic terms. Examples include SCOTT tissues and SNICKERS candy. Additional emphasis can be given to trademarks by using one or more acceptable symbols that indicate the trademark status. This can be accomplished by employing the symbol TM with the mark if it is not registered or the symbol R in a circle for federally registered trademarks. However, the circle R symbol should only be used if the mark is actually registered in the US Patent and Trademark Office, or the equivalent national registration office in other countries, and not merely the subject of a pending application for registration, or not registered at all. There are generally penalties for improper use of the circle R symbol.

If a trademark becomes generic, anyone can use it because the word or symbol no longer indicates to the public that the products on which the mark is used were made, sold or supplied by the trademark owner. Once a trademark is lost, consumers no longer have the opportunity to identify preferred brands and products by the trademark and repeat satisfactory purchases. Loss of trademark rights also destroys the owner's investment in this asset.

PLANT TRADE DESIGNATIONS AS TRADEMARKS
Varietal Designation vs. Trademark

To relate the foregoing to plants, it is first necessary to distinguish between trademarks and the scientific denominations given to plants by breeders or discoverers of new varieties. The Latin language was used by early scholars to identify plants and, as a result, the scientific denomination of plants is now in Latin. The Latin binomial naming is in general use today to identify plants by genus and species. In general, the first word in the binomial nomenclature is capitalized and identifies the plant genus which is followed by a second term not capitalized, used to identify the species. The specific rules for scientific naming of cultivated plants are set forth in the International Code of Nomenclature for cultivated plants (ICNCP, 1995) established by the International Botanical Congress.

It is also important to understand that not all commercial trade designations applied to plants are trademarks. A term may be either a varietal designation, ie, cultivar name, or a trademark, but not both. If the originator or introducer of a new plant variety chooses to do so, a commercial trade designation may be chosen and used as the varietal designation which then also serves to identify the plant generically. In this case, the commercial trade designation, as the generic name, may be freely used by others and cannot be appropriated or regarded by the initial user of the name as a proprietary trademark.

Distinguishing Between Cultivar Names and Trademarks

One way to ensure and maintain the distinction between cultivar names and trademarks is to employ the practice of exclusively associating a cultivar name with a particular cultivated variety of plant. A cultivar name can be distinguished from properly used trademarks, whether registered or unregistered, by always using cultivar names with single quotes, and not using single quotes to identify trademarks. This practice will permit and encourage the use of the cultivar name, i.e. varietal designation, as the sole and exclusive common scientific designation for the cultivar without confusing it with trademarks. Of course, a commercial trade designation may be also a cultivar name, in which case it may be used in single quotes and then will not be considered a trademark.

It is important that trademarks are not confused with, or equated to, the cultivar name. Commercial trade designations for plants which are used and regarded as the cultivar name cannot, and should not, be entitled to protection or exclusive use. However, where the trademark is used in addition to the cultivar name, the trademark should be properly protectable. This distinction can be maintained if cultivar names in print are enclosed in single quotes and trademarks are not used with single quotes and are be followed by the appropriate trademark symbol, either TM or R in a circle to indicate its designation as a trademark.

Role of International Registrars

International registration authorities make an important contribution by maintaining a Register of plant names and by exercising some influence in preventing use of improper names or the duplication of plant names by the trade. However, since there is no legal obligation to register a plant name with an International Registrar, the effectiveness of the International registration of the plant name with a Registrar is limited, both in function and substance.

Unfortunately, an International Registrar may also contribute to the confusion which arises in the use of plant names if the Registrar is not careful. By failing to distinguish between cultivar names and commercial trade designations used as trademarks, a Registrar may improperly register as cultivar name a commercial trade designation used as a trademark. If the Registrar accepts or indicates in its publications registration of a commercial trade designation name which is used as a trademark, the registration could be evidence that the mark is generic and therefore is not to be accorded trademark status, to the detriment of the breeder or introducer of the new plant variety. If this is done, deliberately or unintentionally, the horticultural industry will be discouraged from submitting plant names to International Registrars for registration. Furthermore, if trademarks are accepted for registration as cultivar names when in fact they are not cultivar names, there will be considerable confusion as to what is the correct cultivar name, particularly since different trademarks may be used in commerce in the same or different geographical areas to commercially identify plants of the same cultivar.

PROPER USAGE OF COMMERCIAL TRADE DESIGNATIONS AS TRADEMARKS
Plant Labels

Since only commercial plant trade designations which are not also cultivar names may be protected as trademarks, it is incumbent on those wishing to employ a protectable trademark to use trademarks for plants properly. In addition to the trademark, a label, tag, or other descriptive information concerning the plant must employ the generic plant name, i.e. the cultivar name. It is also desirable for the trademark owner to promote the trademark through advertising and marketing literature as the trademark owner's product. A properly designated label will prominently display the trademark but will also indicate the cultivar name.

Suggestions for Proper Trademark Usage

As an illustration, let us suppose the ABC Nursery has developed a new Nandina domestica plant variety for which it applies the cultivar name 'Abcor.' ABC Nursery intends to market 'Abcor' under the trademark PROTECTABLE. The nursery applies for registration of 'Abcor" with the appropriate International Registrar for that plant. When the plant is marketed however, it applies its own trademark PROTECTABLE (note use of the TM symbol to identify ABC Nursery as the source or origin of the plant). A label or tag for the plant might read as follows: PROTECTABLE (Nandina domestica 'Abcor'), and, preferably indicate ABC Nursery as the source of the plant and owner of the trademark with the legend "PROTECTABLE is a trademark of ABC Nursery." In registering the generic or varietal designation of the plant 'Abcor,' ABC Nursery is acknowledging that others may grow and sell plants identified as 'Abcor' unless the plant itself is subject to plant patent or breeders' rights protection. Absent some protection against unauthorized asexual or other propagation of 'Abcor,' others may use the cultivar name 'Abcor' to identify their products but may not also use the trademark PROTECTABLE which is the property of ABC Nursery, whether govermentally registered or not. In fact, since trademark rights are enhanced by usage, it would be in ABC Nursery's best interest to promote PROTECTABLE as ABC Nursery's plants of Nandina domestica 'Abcor.' In this way, both the separate generic identification of the plant variety , i.e. the cultivar name, and the protected trademark are part of the information disclosed to the public. If and when others have the right to sell Nandina domestica 'Abcor,' purchasers satisfied with ABC Nursery's product PROTECTABLE can continue to do so knowing that the plants will continue to be of the quality established by ABC Nursery for its trademarked product. Other Nandina domestica 'Abcor' which are not identified by the ABC Nursery trademark, may or may not be of the same quality.

PLANT VARIETY PROTECTION

Unlike trademark rights, patents and breeders' rights do protect the owner of such rights against the unauthorized propagation and sale of plants of the protected varieties. In the United States, new varieties of plants may be protected by plant patents, utility patents and, in the case of sexually reproducible new varieties, by Certificates of Protection. Applications for Certificates of Protection are filed with the U.S. Department of Agriculture and the rights obtained by the certificate of protection are similar to breeders' rights obtained in other countries. Patent rights in the United States include the right to exclude others from using or selling plants of the protected variety, and in the case of plant patents, from asexually reproducing the plant. Utility patent rights may be broader than rights obtained from plant patents.

Applications for protection in the United States must include the varietal name in the description. Such varietal name will be treated as the cultivar or "generic" name of the variety described. Thus, trademarks should not be identified in applications for patents or Certificates of Protection as the cultivar name or rights in the trademark may be lost.

CONCLUSION

It is possible to separately obtain plant variety protection and enforceable trademark rights for commercial identification of plants. However, to maintain trademark rights, the mark must be used correctly and maximum trademark protection is obtained by governmental registration. 

OUR U.S. PLANT PATENT - IT TOOK A WHILE

by Vincent G. Gioia
Partner, Christie, Parker & Hale, LLP, Irvine, California

The Congress shall have the power...to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respect writings and discoveries.

U.S. Constitution, Article 1, Section 8, Clause 8.

By including this provision the framers of the Constitution showed their awareness that promoting progress of science benefits the country as a whole and that progress is best promoted by rewarding those who are responsible for it. Congress wasted little time to exercise this authority. The first law granting rights to those that promote progress of science, i.e. inventors, was enacted by Congress in 1790 under the power given to Congress by the Constitution. But it was not until 1930 that promoting development of new varieties of plants was recognized to be just as important as inventing new machines and processes. Through various amendments and revisions of the patent law (the last major recodification of the patent law took place in 1952), the law now indicates the subject matter for which a patent may be obtained and the conditions for patentability. 

The well known plant breeder, Luther Burbank, who introduced us to Winter Rhubarb, the Shasta Daisy, and the Burbank Potato, as well as over 800 new plant varieties, expressed his disappointment as a plant breeder when he wrote in the early 20th century:

"I have been for years in correspondence with leading breeders, nurserymen, and Federal officials and I despair of anything being done at present to secure to the plant breeder any adequate returns for his enormous outlays of energy and money. A man can patent a mousetrap or copyright a nasty song, but if he gives to the world a new fruit that will add millions to the value of the earth's annual harvests he will be fortunate if he is rewarded by so much as having his name connected with the result. Though the surface of plant experimentation has thus far only been scratched and there is so much immeasurably important work waiting to be done in this line, i would hesitate to advise a young man, no matter how gifted or devoted, to adopt plant breeding as a life work until [Congress] takes some action to protect this unquestioned rights to some benefit from his achievements."

In the 1920's, a patent attorney, John Diener, raised the problem with then Secretary of Agriculture, Arthur A. Hyde, and suggested introducing legislation to grant broad patent-like protection to originators of plants and products thereof, such as flowers, fruit, roots, leaves, seeds, etc. Unfortunately, the effort met with only limited success but Congress did pass the Plant Patent Act in 1930 which provided some, but not all, of the protection proposed to the Secretary of Agriculture. Even now, though providing more protection than was available to Luther Burbank, the patent law still does not apply explicitly to "parts of plants" and, as a result, cut flowers, fruit and other plant parts or products produced by plants grown outside the U.S. may be imported without violating U.S. patent rights. However, legislation is now pending in Congress to correct this larger than a "747" cargo bay loop hole and plant breeders everywhere should let Congress know how they feel about it.

The special nature of "plant inventions" did raise some inherent problems to drafting a patent-like law to protect plants. For example, before enactment of the Plant Patent Act, it was considered that two factors prevented plants from being patentable. One was the belief that plants were products of nature, even those bred by man, and, therefore, should not be able to be protected. The other factor was that it was not possible for a plant to be able to be described in writing in a way required by other sections of the patent law for other forms of inventions. Patent applications for other inventions are required to contain a written description of the invention and the manner of making it sufficient to enable another person to make and use it. Obviously, a plant cannot be made by others from a mere written description.

These "problems" were handled very nicely. The first factor was overcome by requiring some intervention by "man" (and women) as a prerequisite for patentability. The second concern about the ability to reproduce the plant invention from a written description was removed by the practical solution of making an exception for plants.

The intervention by man was accomplished by requiring the act of asexual reproduction as a step in making a patentable plant invention. This was quite reasonable since unless preserved in some way, new varieties are lost. The legislative history acknowledged the importance of preservation:

"Whether the new variety is a hybrid, mutant or sport, there is never more than one specimen of it produced except through asexual reproduction. For example, without asexual reproduction there would have been but one true McIntosh or Greening apple tree. These varieties of apple could not have been preserved had it not been through human effort in the asexual reproduction of the two original trees. They could not have been reproduced true to type by nature through seedlings. The bill, therefore, proposes to afford through patent protection an incentive to asexually reproduce new varieties. Many varieties of apples equally as valuable as the McIntosh or Greening have undoubtedly been created and disappeared beyond human power of recovery because no attempt was made to asexually reproduce the new varieties. The present bill by its patent protection proposes to give the necessary incentive to preserve new varieties. 
(emphasis added)

Back in 1892 legislation was proposed to grant patent rights for plant inventions. This legislation was supported by many prominent individuals, even Thomas Edison who stated that "nothing that Congress could do to help farming would be of greater value and permanence than to give to the plant breeder the same status as the mechanical and chemical inventors now have through the law". The Plant Patent Act was passed by Congress on May 13, 1930 and was signed by President Hoover on May 23, 1930. It was the first legislation anywhere in the world to grant patent rights to plant breeders and was enacted to "afford agriculture, so far as practicable, the same opportunity to participate in the benefits of the patent system as has been given to industry, and thus assist in placing agriculture on a basis of economic equality with industry." 

The original law for plant patent protection was made as amendments to the general patent law. Specifically, one section of the existing law was amended to recite:

"Every patent shall contain...a grant to the patentee...of the exclusive right to make, use, and vend the invention or discovery  (including in the case of a plant patent the exclusive right to asexually reproduce the plant).

Another section of the patent law was amended to recite:

"Any person who has invented or discovered any new and useful art, machine...or who has invented or discovered and asexually reproduced any distinct and new variety of plant other than a tuber propagated plant,...may...obtain a patent therefor.

This form of the law offering protection to plants continued until the passage of the 1952 Patent Act when the plant patent provisions were written as a separate chapter of the statute. Also, as was done for utility patents in the general patent law, the plant patent grant was changed from the "exclusive right" to the "right to exclude others". This change attempted to codify various court decisions explaining the nature of the right conferred by a patent which was not a positive right to produce the patented invention but actually a right to exclude others from doing so.

Another interesting thing that was done after separating the plant patent sections from other sections dealing with utility patents, was to explicitly provide that the provisions of the law relating to patents for inventions "shall apply to patents for plants, except as otherwise provided." This means that the sections of the law regarding remedies for infringement of patents and the requirement for a full disclosure of the invention also apply to plant patents. Therefore, like applications for utility patents, plant patent applications must contain as full and complete a disclosure as reasonably possible of the plant and its characteristics to distinguish it from related known varieties and must particularly point out where and in what manner the variety of plant has been asexually reproduced. However, unlike utility patent applications, plant patents are expressly excluded from complying with the requirement that the description enable someone to make the invention (as set forth in 35 U.S. C. 112). Also unlike utility patent applications, only a single claim is permitted in a plant patent and it refers to the plant "shown and described" in the patent. 

In one amendment to the Plant Patent Act, the law was amended in 1954 to preclude patent protection for plants found in an uncultivated state. By indicating what was excluded, the amendment had the effect of broadening the statute to include plants found in a cultivated state and subsequently asexually reproduced. At the present time the Plant Patent Act includes the following provisions:

35 U.S.C. 161:

Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor.

The provisions of this title [the general patent law] relating to patents for inventions shall apply to patents for plants, except as otherwise provided.

35 U.S.C. 162:

No plant patent shall be declared invalid for noncompliance with section 112 of this title if the description is as complete as is reasonably possible.

The claim in the specification shall be in formal terms to the plant shown and described.

35 U.S.C. 163:

In the case of a plant patent the grant shall be of the right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced.

The owner of a plant patent has a right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced. Thus, a plant patent is infringed by the unauthorized asexual reproduction of the new variety as well as by the sale or use of such asexually reproduced plants. Any one of these acts constitutes infringement of the plant patent but use or sale of lawfully obtained plants does not constitute infringement. However, unauthorized asexual reproduction of the lawfully purchased plants of a patented variety would be infringement of the plant patent. Since those selling or using plants which have been unlawfully asexually reproduced are separately liable for plant patent infringement, infringement damages may be significantly greater for those using infringing plants, such as to produce commercial products or crops. 

Sexual reproduction of the patented variety would not constitute infringement of the plant patent since the plant patent rights are limited to the exclusion of others from asexual reproduction of the plant and not from sexual reproduction, but sexual reproduction of such plants are not likely to duplicate the characteristics of the new variety. Query, should asexual reproduction of sexually reproduced plants that have the same essential characteristics of the patented variety be regarded as infringement, or should this be another large loophole that deprives the original breeders and their inventions of the economic benefit of their "invention"?

Under amendments to the patent law enacted by Congress in 1994 following U.S. adherence to GATT, but effective June 1995, the term of plant patent protection begins when the patent issues and continues for a period of 20-years from the application filing date. However, unlike for patents granted under the general patent law, no maintenance fees are required to maintain the plant patent in full force and effect; therefore once the plant patent is granted it is not necessary to pay any additional fees during the term of the patent.

Since the U.S. was largely an agrarian society when the Constitution was written and the country was formed, it is quite remarkable that it took so many years for Congress to provide an opportunity to protect new varieties of plants. Unfortunately, even when Congress got around to facing up to the task they didn't do as good a job as they could. The issue of lack of protection for "parts of plants" still remains and the question of what constitutes a "plant variety" capable of protection was not made clear in the patent law itself. Nonetheless, it is the "only game in town" and the consequence of not obtaining plant patent protection for asexually reproducible plant varieties can be costly both in terms of lost market share and profitability. Obtaining a plant patent for new varieties provides the possibility of exclusively enjoying a market for that variety and a chance to earn additional benefit by licensing others to grow and sell plants of the protected variety. It's certainly worth considering. 

TRADEMARK RIGHTS HELP IN
DOMAIN NAME DISPUTES

By Vincent Gioia

Commercial designations of plants, that are not cultivar names, can be protected as trademarks. Many plant industry businesses have also registered firm names as trademarks and firms have also obtained registrations for service marks. It has become increasingly useful to obtain corresponding domain names to support online marketing and sales. However, increasing attention to Internet business potential also raises possibilities of encountering infringement of trademark and service mark rights on the Internet. It is useful to be aware that trademark rights help in domain name disputes.

A virtual explosion of domain name registrations has resulted in numerous conflicts. To resolve these conflicts, a uniform domain name resolution policy has been created and implemented through an agreement with the Internet Corporation for Assigned Names and Numbers (ICANN) and domain main registrars, including Network Solutions. This policy establishes the rules for resolving disputes between domain name registrants and owners of trademarks and service marks that may be the subject of "bad faith" registration and use of Internet domain names by others. The rules provide that a complaint may be filed with an ICANN-approved dispute resolution provider which then appoints one or more panelists having the power to transfer ownership of the domain name to someone with trademark or service mark rights to that name. Cost of initiating this dispute resolution generally starts at about $1,000. 
Only alleged abuse of registration of a domain name that meets the following requirements may be the subject of a complaint resolved by the new ICANN dispute resolution procedure. The requirements for supporting a complaint are: 

1. The domain name registered is identical or confusingly similar to a trademark or service mark in which the person or entity bringing the complaint has rights; and

2. The domain name registrant has no rights or legitimate interests in the domain name in question; and 

3. The domain name has been registered and is being used in bad faith.

Theoretically, all of the foregoing are required to support a complaint. 

It is obvious that the need to establish abusive registration is the most difficult of the three requirements. However, a review of recent proceedings for domain name disputes indicates that panelists generally have no problem in finding "use in bad faith". Some of the situations that are considered relevant by panelists resolving dispute resolutions include: (1) the appearance that the domain name was registered primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or service mark or to a competitor; or (2) registration of the domain name was to prevent the owner of a mark from using the mark as a domain name; or (3) the registration was primarily for the purpose of disrupting the business of a competitor; or (4) the domain name registrant is using the domain name to intentionally attempt to attract Internet users for financial gain.

Those registering domain names should also be aware that in the event of a conflict with someone that owns trademark or service mark rights, the dispute resolution process favors the owners of a trademark or service mark. For example, even with respect to the issue of whether or not the domain name registrant has "used" the domain name in bad faith, panels designated to decide such issues typically employ the slimmest of reasons to support a holding of bad faith. In many cases, bad faith may be found even if the domain name registrant has only attempted to offer the domain name for sale. In such cases, the offer for sale is considered to establish that the name had been registered and was being used in bad faith. This also may be the result even if the domain name registrant has not actually used the domain name but has merely obtained registration. In similar cases, the panels deciding the disputes found that a general offer to sell made it "possible to infer that the domain name was registered and used" and that the failure to use the domain name provided an inference that it was registered without a bona fide intent to make a good faith use. In still another case, a panel held that even where there was no evidence that there was a website or other online presence using the domain name, the "passive holding of a domain name" constituted bad faith based upon the strength of the complaining party's trademark. 

Under the ICANN rules, a panel has the authority to either direct transfer of the domain name ownership or to have the domain name canceled. It should also be noted that the ICANN procedure resolves domain name disputes regardless of where the registrar, the domain name holder or the complainant is located. It has been reported that a decision can generally be expected within sixty (60) days of filing of a complaint. Appearance by an attorney is not necessary because the required papers can be filed and the correspondence conducted either by mail or electronically. 

It seems by far the safest approach is to register a trademark or service mark and acquire rights in the mark. Once rights in the trademark or service mark are acquired, such as by national registration, the ability to deal with conflicting domain names registered by others is considerably enhanced.