The federal government enacted the Digital Millennium Copyright Act in 1998 to address online copyright infringement situations. Does the DMCA apply to trademarks? The law is home to many issues where lawyers must make a call in a gray area. This is not one of those areas. Not even close.
Trademarks and copyrights are forms of intellectual property, but they address two different sets of rights. The DMCA applies to copyright issues. The federal law provides a framework for people to use online to resolve copyright disputes. Sometimes it works well, and sometimes the DMCA is a disaster. However, what is clear is the DMCA applies only to copyright, not to trademarks. After all, “DMCA” is an abbreviation for Digital Millennium Copyright Act.
What about trademark law? Is there a DMCA equivalent contained in federal trademark law in the United States? The answer is no, which is a bit odd as it is difficult to know why the federal government was so keen on addressing online copyright issues in 1998, but said nothing about trademark disputes on the web. Congress could have passed a Digital Millennium Trademark Act and few people would’ve raised a fuss. But Congress did not. While the decision is unfortunate, people and companies holding trademarks and service marks are not without options.
How do you handle a trademark complaint generated from a situation online? If you believe someone is using your trademark or service mark without permission and infringing upon it, then a lawyer should send a Cease & Desist letter to the person and online business in question. You should always have a lawyer write the Cease & Desist correspondence as there are ramifications associated with the exact language used in the letter.
The law is rarely clear. This is one exception. The Digital Millennium Copyright Act does not apply to trademarks.
Richard A. Chapo, Esq.