Trademark owners can still protect their rights even if an infringer isn’t using the mark to hawk their own goods or services, McGuireWoods Richmond partner Lucy Jewett Wheatley explained in a Nov. 28, 2022, Virginia Lawyers Weekly story reviewing a recent federal court ruling.
The dispute pitted GoSecure Inc., which owns the trademark for the term “GoSecure,” against an entrepreneur who owns the domain name “gosecure.com.” After losing an arbitration hearing over the rights to the domain name, GoSecure sued the entrepreneur alleging trademark infringement for using the term on his Twitter account, website and cybersecurity blog.
A federal judge in Virginia ruled in GoSecure’s favor. It didn’t matter that the businessman had long since stopped selling his own cybersecurity services on his website, the judge ruled, because his use of the term was still likely to confuse consumers.
Wheatley, who litigates high-stakes intellectual property cases for some of the world’s top companies, told VLW she was “impressed that the court understood that distinction.”
“The standard for establishing use of a trademark is not the same as the standard for infringement, and infringing conduct may not be enough to establish trademark rights,” Wheatley said. “It’s not uncommon that you will get one ruling in arbitration and the federal court goes the opposite direction.”
Wheatley also noted that the U.S. Supreme Court just agreed to hear a case dealing with an issue that came up in the Virginia lawsuit concerning the overseas reach of the federal trademark statute.
“Trademark law is tricky because there are a lot of cross-border issues and it’s challenging to define impact on U.S. commerce in the age of the internet,” Wheatly told VLW. “I’m not surprised the judge didn’t want to wade into that here.”
VLW earlier this year honored Wheatley as one of Virginia’s “Go To Lawyers” for intellectual property law.