IVAN HOFFMAN, B.A., J.D.
We’ve all seen such phone numbers. 1 800 this and 1 800 that. They can be very effective marketing tools. What, however, are the trademark implications of those numbers?
Under federal trademark law, these telephone numbers can, if they otherwise qualify, be registered as trademarks. Depending on how they are being used, they would fall within one or more international classifications. As discussed below, the owners of these marks may then have the rights of trademark that attend such ownership.
The issues discussed in this article relate to whether or not the use by a third party of a 1 800 number containing a trademark of an owner constitutes a trademark infringement or other interference with the rights of that owner.
A recent case serves to frame some of the issues. In DaimlerChrysler AG et. al. vs. Bloom et. al., the Eighth Circuit Court of Appeal was faced with the following facts:
Daimler and related companies were the owner of federal registrations on a number of marks for Mercedes and Mercedes-Benz (“Marks”). The defendant, who was a Mercedes dealer, came to acquire the telephone number 1 800 637-2333, “one possible alphanumeric translation of which is 1-800-MERCEDES.” [quote from the Court]. The defendant used the number in the marketing of his business.
The plaintiffs tried unsuccessfully to purchase the said telephone number from the defendant, even claiming that the possession and use of such number violated the dealer agreement between the parties.
Defendant then established another business and transferred the said number to that business and then licensed the telephone number to other Mercedes dealers throughout the country. The language of the license stated that these dealers were given “[e]xclusive use…of the telephone number 1-800-637-2333 and/or its mnemonic translation within an area….” These licensees then marketed the number as 1-800-MERCEDES in their particular geographic area.
The plaintiffs terminated the defendant’s dealer agreement and ultimately filed the litigation claiming violations of federal trademark laws and other claims.
The Court concluded that because the defendants did not actually use the Marks in commerce, which is required in order to state a claim under federal law, meaning that they did not use 1-800-MERCEDES but only 1-800-637-2333, the licensing of the indicated telephone number did not violated the rights of the plaintiffs. The Court quoted the provisions of the Lanham Act which states that a “mark shall be deemed to be in use in commerce.. on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.”
The Court, agreeing with the decision of the trial court, found that the merely licensing of the telephone number did not constitute a “use in commerce” since the defendants “did not advertise or promote Mercedes’ protected marks.” In this regard the Court cited a number of other cases involving the use of a vanity telephone number. In one case, Holiday Inns, Inc. vs. 800 Reservation, Inc., Holiday Inns developed and used 1-800-HOLIDAY in its business. The defendants, who were travel agents and intended to capitalize on the fame of Holiday Inns, developed and used a telephone number 1-800-H0LIDAY [note that the “O” was replaced by the numeral “0.”] The defendants did not advertise their said telephone number but hoped to capture customers who misdialed the correct number. The Sixth Circuit Court of Appeals ruled that the defendants had not used in commerce the mark of the plaintiff.
The Court in the Daimler case pointed out that even though the defendant’s licensees clearly used the number in the form of 1-800-MERCEDES, the plaintiffs failed to plead any form of contributory infringement on the part of the defendants and thus the conduct of those licensees cannot be imputed to the defendant including because such licensees were entitled to use the Marks by the terms of their dealer agreement with the plaintiffs. The Court further stated that even though the intent of the defendants was clearly to license the 1-800-MERCEDES telephone number for such use by the licensees, that the mere intention without an actual use by the defendants, was not a violation of the rights of the plaintiffs.
We thus conclude that the licensing of a toll-free telephone number, without more, is not a “use” within the meaning of the Lanham Act, even where one possible alphanumeric translation of such number might spell-out a protected mark.
Domain Name Cases
These issues have also arisen within the scope of domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP). There are a number of articles on my site the reader should review dealing with the provisions of the UDRP.
In Radisson Hotels International, Inc. vs. Natural Net Behavior, the domain name at issue was 18003333333.com. The Complainant was the hotel chain that claimed rights in trademark in the telephone number 18003333333 “because it has used it in commerce since 1987 for Hotel Services.” The Respondent claimed that the Complainant did not have such rights since it was merely a telephone number. Unlike the Daimler case, this telephone number did not “translate” to any otherwise protected trademark, such as “Radisson” or otherwise.
The Panel stated:
The Panel made findings that the Complainant had such common law rights of trademark given the extensive marketing efforts made by the Complainants over the years promoting and advertising the said phone number. Note: it is not a prerequisite under the UDRP to have a registered mark, although having registered marks is clearly much more advantageous to the complainant than not having such registration. Read “Should I Register My Trademarks?”In the Dial-A-Mattress Franchise Corporation v. Page, 880 F2d. 675, 678 (2nd Cir. 1989), it was stated: “Telephone numbers may be protected as trademarks, and a competitor’s use of a confusingly similar telephone number may be enjoined as both trademark infringement and unfair competition.” Whether Complainant’s number can be registered with the USPTO is beside the point. It is clear that the Complainant has a common law proprietary interest in the use of this number.
The Panel found that the registration of 18003333333.com was improper under the UDRP since the Complainant has such rights in trademark but, in addition, the conduct of the Respondent otherwise violated a number of the UDRP provisions. It stated:
In RRI Financial, Inc., v. Ray Chen, the domains were <1800redroof.com>, <1888redroof.com> and <1877 redroof.com>. The Complainant was the owner of the registered trademarks for Red Roof Inns and related marks, although not to a 1 800 version of their said marks. The Complainant argued, among other positions, that the use by the Respondent of the said domains was likely to cause confusion since not only does the Complainant use 1800REDROOF in their advertising but so too do the affiliates of the Complainant.It would not take much effort for the owner of the domain name <18003333333.com> to use it unfairly against Complainant. If placed on the Web as a source for making hotel reservations, those familiar with it would believe they are reaching a Radisson reservation service. Such customers could be routed to Radisson with the holder of the domain name obtaining a commission which Radisson otherwise would not have to pay. Also, attempts could be made to direct the user to a hotel other than Radisson, especially if the user seemed not to know of the prior use of <18003333333.com> by Radisson. In either event the holder of the domain name would be using Radisson’s proprietary toll free telephone number unfairly to deprive it of business. [emphasis supplied]
The Panel, citing other cases, stated:
For that reason and because the Respondent violated the other provisions of the UDRP, the domains were transferred to the Complainant.As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.
Thus, the issues with regard to these kinds of trademarks and rights in trademark involve not only whether they can be registered as marks, which under appropriate circumstances they can be, but also what conduct on the part of third parties does or in some instances does not constitute an infringement of the rights of a trademark owner.
The law, as you can see, often draws fine lines.
© 2003 Ivan Hoffman. All Rights Reserved.