In 2010, Ed Teal, the plaintiff, ran for sheriff of Marshall County. He announced his candidacy on January 6, 2011. On January 6 and 7, the defendant, a supporter of Teal's opponent, paid for registration of several domain names that incorporated the plaintiff's personal name and that might be used to promote his campaign. When the plaintiff could not register the domain names, he discovered they were owned by defendant, the plaintiff filed suit.
The defendant moved for summary judgment, which the court granted on all counts.
The plaintiff asserted that the defendant had violated the Anti-cybersquatting Consumer Protection Act (15 U.S.C. §1125(d)). Under the act, a personal name must be distinctive at the time the domain names are registered to be protected. Personal names are not considered distinctive as a trademark unless there is sufficient evidence of "secondary meaning"; that is, the consuming public associates the personal name with the goods or services offered. The court found that Teal's personal name had not developed the requisite secondary meaning to be protected by the act.
The plaintiff also asserted that the defendant had violated the Lanham Act (15 U.S.C. §1125(a)) by using a “false designation of origin.” The court found that for the Lanham Act to apply, the domain names in question had to be used in commerce. The plaintiff admitted the domain names were never used in commerce.
The plaintiff asserted federal trademark infringement (15 U.S.C. §1114(1)). Under the federal act, a cause of action is created for infringing a registered trademark. The plaintiff's name was not registered as a trademark under federal law.
Finally, the plaintiff asserted state trademark infringement (Code of Alabama §8-12-18). Once again, the court found that since Teal's name was not a registered trademark under Alabama law, he was not entitled to relief for state trademark infringement.
See Teal v. Gibbs, decided on June 28, 2011 by the U.S. District Court (N.D. Ala.).
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