With thanks to my colleague Cassandra Robertson for bring this article in yesterday’s NY Times to my attention. The article describes ongoing battles between the FTC and Experian to have Experian stop using the “freecreditreport.com” domain name for credit monitoring services that are not, in fact, free. What interested me in particular about the article was the point that Experian makes that it should not have to give up the name because the name effectively functions as its TM. I don’t know the law on misleading/deceptive TMs in the United States – or if indeed there is specific law on this. This TM may not be misleading in the traditional TM sense ie confusing consumers about the source of services (unless one accepts that the government has a TM in freecreditreport.gov which is uses for its free credit report services and confusion arises when people seek the “.gov” services but mistakenly assume they’ll find that under the “.com” name). It seems more likely that the mark is potentially misleading/deceptive in the more general unfair competition sense. I know I’m only displaying my own ignorance here, but what are the salient TM precedents, if any, in these kinds of situations?
Deceptively misdescriptive (consumers would believe the misdescription but their purchase decisions wouldn’t be affected) marks are registrable on proof of secondary meaning; deceptive (consumers would believe the misdescription and it would affect a purchase decision–query what that means here!) marks are not registrable at all.
Thanks much for the clarification, Rebecca. That makes a lot of sense. I wonder if Experian has a registered TM corresponding with the domain name. It would seem that the “freecreditreport.com” name might fall into the second category, if indeed anyone can figure out what it means that the misdescription would affect the purchase decision.
http://www.RemoveMyCreditInquiries.org is a web site I found that is ran by a community organization of credit experts and lawyers that can remove credit report inquiries for $10. They also appear to remove late comments as well on other sites.
First, FreeCreditReport.com is a generic name and therefore is non-trademarkable.
Second, the Lanham Act governs both trademark and unfair competition laws in the United States.
Therefore, Experian should not be able to keep a domain name that it uses in a deceptive and misleading way.
This is, in essence, false advertising.
The nature of the false advertising is both the domain name itself (freecreditreport.com, where you can not get a free credit report), as well as the site itself (which deceptively funnels people into non-free credit report services).
So, Experian might have an argument if the site was trademarkable (and they are likely arguing that their significant advertising campaign has created secondary meaning, but this still requires the mark to be distinctive and not generic).
Since Experian does not have a trademarkable name in the domain name itself, it should be required to give it up like the false and misleading advertiser it is.
FreeCreditReport.com wouldn’t be generic, would it? It would be descriptive (and in this case either deceptively misdescriptive or just deceptive). Something like “Credit Report” would be generic. That’s if I’m remembering my trademark law correctly.
An important point here is that, as Rebecca says, the mark is not *registrable* — that doesn’t mean it can’t be protected as a trademark under the Lanham Act, however, or that the mark cannot be used in commerce.
TM law is really not a very sharp sword when it comes to policing against non-TM based forms of consumer deception — there are other laws that do that better.
FreeCreditReport.com cannot become descriptive with a secondary meaning because it is the epitome of generic. The Third Circuit has good language on this in A.J. Canfield Co. v. Honickman, 808 F.2d 291 (3rd Cir. 1986): “Trademark law seeks to provide a producer neither with a monopoly over a functional characteristic it has originated nor with a monopoly over a particularly effective marketing phrase. Instead the law grants a monopoly over a phrase only if and to the extent it is necessary to enable consumers to distinguish one producer’s goods from others and even then only if the grant of such a monopoly will not substantially disadvantage competitors by preventing them from describing the nature of their goods.”
A generic phrase such as “FreeCreditReport.com” does nothing to indicate the source of the product or service provided, and it is far too generic for secondary meaning to attach to it. One reason is the fact that granting a trademark would disadvantage any competitor who wanted to offer a free credit report.
As for the protections granted FreeCreditReport.com . . . the only protections would be false or misleading advertising by competitors who use the mark — here the domain name — in a way harmful to Experian. This is not a trademark protection as much as it is an unfair competition protection under the Lanham Act.
The reason there is no trademark protection is that you cannot have a trademark — be it registered or state-based — in a generic phrase that cannot indicate source.
Finally, Mr. Lastowka has missed the most interesting point of the post — Experian is attempting to use trademark as a shield. This is not about the government using it as a sword.
Experian claims the FTC cannot force it to stop using a valid trademark. Using trademark this way is a red-herring. The analysis will still ultimately require a determination of whether Experian’s advertising of non-free credit services on a site called ‘FreeCreditReport.com’ constitutes false or misleading advertising or unfair competition.
In reply to John (whose comment has not cleared yet) — I tend to think the name is generic, and the Federal Circuit probably does too, based on this recent decision:
http://blog.hdp.com/hd-signals/federal-circuit-affirms-that-mattress-com-is-generic/
But note that this case made it to the Federal Circuit. While you and I can have opinions about what is generic and what is not, it doesn’t mean that every “genericword.com” domain is going to be deemed generic by every court — that would be an overstatement.
Re swords and shields, what I was saying is that TM law is not a good way to offensively prevent people from using trademarks like “misdescriptiveword.com” — other bodies of law do that.
You’re right, of course, that a TM is not a shield — at all, as far as I know. You can’t claim that TM rights are a defense against those other laws.
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