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Sep 26, 2003

THE LEGAL LINE

Ed Maldonado, Esq.

Dear Legal Line,

Our company recently went through the whole process to get, and was granted, a Carrier ID code this past June. By luck, we have a number that translates alphanumerically to a very marketable word. We have had a lot of experience with access numbers but not Carrier ID codes. I know with website that it is often best to register it as a trademark. Do I have to register the CIC the same way, or is it different?

Cleveland Carrier



Dear Cleveland,

To the best of my knowledge, there have not really been any major cases where CIC holders have enforced trademark rights under the Lanham Trademark Act. Lanham is the Act that harmonizes trademark infringement claims at the federal court level. It would be the likely cornerstone of any previous legal battles that requiring registration to enforce the rights of a trademark holder against an infringement. The reason for the lack of any previous cases may, in fact, lie in the nature of a Carrier Identification Code (CIC).

Unlike access numbers, or 1-800 numbers, CICs are more carefully managed by the North American Numbering Plan Administration (NANPA). NANPA maintains tight control over what numbers are issued, and who has use of the CICs, because they harmonize the CICs use between the LECs and other carriers. This is also the reason NANPA does not issue CICs in blocks like Access Numbers — they are unique to a carrier. So when your company got its CIC, NANPA issued it to you; you did not select it or bulk order it. Once issued, it is held for the life of the company, or until it is returned to the NANPA. Therefore, CIC with unique alphanumeric translations are very limited. As far as any documented cross-over in the alphanumeric side of the CIC occurring between two CIC holders, I have yet to hear of any controversy that wasn’t first nipped in the bud by NANPA before, or while, being issued. The tight control of NANPA in issuing and administering CICs may simply make trademark a moot point for CICs. It has never really come to bear in the courts so it is not a requirement.

Perhaps the real issue in protecting your CIC is the ability of a company to enforce a trademark infringement over alphanumeric translations, or, more generally to protect your trade name being used by another competitor in the same industry. As far as alphanumeric translation infringement cases, there is a case out of Minnesota that may be telling as to what direction the Courts may turn. In Diamler — Chrysler v. Bloom; BZM Communications 315 F.3d 932 (8th Cir. 2003), an infringement case was filed against a communications company that held a vanity number of 1-800-637-2333 (A.K.A. 1-800-MERCEDES). For you legal eagles, it is good reading on elements of an infringement claim. For the rest, the results of the case centered around two critical points: 1.) the licensing of a toll-free telephone number is not use within the meaning of Lanham Act even where it was possible that the alphanumeric translation of such number might spell-out a protected mark; and 2.) a trademark holder is not generally entitled to relief for a defendant’s use of a vanity telephone number that translates into the trademark, unless the defendant advertises or otherwise promotes the alphanumeric translation of the phone number thereby causing the public to see the protected mark associated with the defendant’s goods or services.

What does this mean? If you have a vanity toll-free number, it is not an infringement that it might spell out a protected mark. If you advertise that you are that protected mark to the public through the alphanumeric translation, you likely have a Lanham problem and could find yourself in court very soon. The key here is the intent of the infringing company or person to make profit from the confusion by the public. This case also really reinforces the point about NANPA’s tight control over CICs, making trademarks moot. If a competitor has a similar alphanumeric CIC, how are they going to advertise or promote confusion between the two — their CIC has a number distinct from yours, and unless the public dials their number directly, it will not be routed to them. They would really have to show their hand to infringe in such an instance.

As for your trade name being used by another competitor, a case appeared on the radar this year that may be relevant to the prepaid industry, and telecom in general. It is Qwest Communications International, Inc. v. WorldQuest Network, Inc. CIV.A.02-WM-2195(CBS) in the U.S. District Court in Denver, Colorado. It is a case where the trademark holder has challenged infringement by a competitor in specific telecommunication market channels — including prepaid calling cards. I think it is a case worth tracking in the near future. Keep an eye out for it.

Good Luck and Success in the Industry!

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•• Ed Maldonado is a principal of Maldonado & Glenn, a telecom legal firm. He can be reached atinfo@4counsel.net. Send all of your Legal Line questions tolegalline@prepaidpress.com.

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