Intellectual Property Law

Federal Registration Owned by Someone Else No Defense to Cybersquatting

By Michael Atkins

This Central District of California case of Monex Deposit Co. v. Gilliam efficiently dispatched a creative but unpersuasive defense to cybersquatting: “You don’t have any trademark rights to enforce against me, since someone else owns the federal registration to that mark. They’re the exclusive, nationwide user of the mark — not you.”

The court’s analysis:

“Jason Gilliam’s second argument is that Monex cannot possibly own the mark ‘Monex’ because other companies have registered trademarks of the word ‘Monex.’ However, a mark can have more than one owner and the Lanham Act permits concurrent registrations of the same mark, provided there is not likely to be confusion, mistake, or deception. Jason Gilliam implicitly acknowledges this fact by pointing out the various other companies in other industries that use the word ‘Monex’ as a mark. Jason Gilliam has presented no evidence that another entity has the right to use the ‘Monex’ mark to designate services related to trading in precious metals or lending funds for the purchase of precious metals. Additionally, Monex has submitted a declaration indicating that no other entity is using the ‘Monex’ mark to designate those types of services.”

This led the court to deny Mr. Gilliam’s motion for summary judgment.

The case cite is Monex Deposit Co. v. Gilliam, __ F.Supp.2d __, 2009 WL 4456564, No. 09-287 (C.D. Calif. Dec. 3, 2009).

Full post as published by Seattle Trademark Lawyer on December 09, 2009 (boomark / email).