Charter West Bank v. Riddle

Nebraska Supreme Court Online Library
www.nebraska.gov/apps-courts-epub/
05/12/2023 09:06 AM CDT
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Nebraska Supreme Court Advance Sheets
314 Nebraska Reports
CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 263Charter West Bank, a Nebraska banking
corporation, appellee, v. Justin E. Riddle
and Erin M. Riddle, appellants.
___ N.W.2d ___
Filed May 12, 2023. No. S-22-557.
1. Jurisdiction: Statutes. Subject matter jurisdiction and statutory inter-
pretation present questions of law.
2. Judgments: Appeal and Error. An appellate court independently
reviews questions of law decided by a lower court.
3. Injunction: Equity. An action for injunction sounds in equity.
4. Equity: Appeal and Error. On appeal from an equity action, an appel-
late court tries factual questions de novo on the record and, as to ques-
tions of both fact and law, is obligated to reach a conclusion independent
of the conclusion reached by the trial court.
5. Right to Counsel: Effectiveness of Counsel. A self-represented litigant
will receive the same consideration as if he or she had been represented
by an attorney, and, concurrently, that litigant is held to the same stan-
dards as one who is represented by counsel.
6. Jurisdiction: Appeal and Error. Before reaching the legal issues
presented for review, it is the duty of an appellate court to determine
whether it has jurisdiction over the matter before it.
7. Jurisdiction: Words and Phrases. Subject matter jurisdiction is the
power of a tribunal to hear and determine a case in the general class or
category to which the proceedings in question belong and to deal with
the general subject matter involved.
8. Jurisdiction: Appeal and Error. Where a lower court lacks subject
matter jurisdiction to adjudicate the merits of a claim, issue, or question,
an appellate court also lacks the power to determine the merits of the
claim, issue, or question presented to the lower court.
9. Federal Acts: Courts: Jurisdiction. The federal and state courts have
concurrent jurisdiction over claims arising under the Lanham Act, 15
U.S.C. § 1051 et seq. (2018).
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Cite as 314 Neb. 26310. Federal Acts: Proof: Intent. Generally, to prevail in a cybersquatting
claim under the Anticybersquatting Consumer Protection Act, 15
U.S.C. § 1125(d) (2018), a plaintiff must show (1) it owned a mark;
(2) its mark was distinctive or famous at the time of registration of the
defendant’s domain name; (3) the defendant registered, trafficked in,
or used the domain name; (4) the defendant’s domain name was identi-
cal or confusingly similar to, or in the case of a famous mark, dilutive
of, the plaintiff’s mark; and (5) the defendant had a bad faith intent
to profit.
11. Evidence: Words and Phrases. Evidence consists of facts admitted at
a trial to establish or disprove the truth of allegations put in issue by
the pleadings.
12. Appeal and Error. An appellate court is not obligated to engage in an
analysis that is not necessary to adjudicate the case and controversy
before it.
Appeal from the District Court for Douglas County:
J Russell Derr, Judge. Reversed, injunction vacated, and
dismissed.
Justin E. Riddle, pro se, and Erin M. Riddle, pro se.
Jeffrey A. Silver for appellee.
Heavican, C.J., Miller-Lerman, Cassel, Stacy, Funke,
Papik, and Freudenberg, JJ.
Cassel, J.
I. INTRODUCTION
This appeal turns on whether a bank’s “mark” qualified
for protection under the federal Anticybersquatting Consumer
Protection Act (ACPA). 1 The bank claimed that a married
couple threatened to use a website to “disseminate adverse
information” unless the bank purchased it for $1 million. The
district court issued a permanent injunction in the bank’s
1
See Anticybersquatting Consumer Protection Act, Pub. L. No. 106-113,
§ 3002, 113 Stat. 1501 (codified at 15 U.S.C. § 1125(d) (2018)).
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CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 263favor. Because the ACPA required the bank to prove it owned
a mark that was “distinctive” or “famous,” and it failed to do
so, we reverse the district court’s judgment, vacate its injunc-
tion, and dismiss the action.
II. BACKGROUND
1. Parties
According to the operative complaint, Charter West Bank
(Charter West) is a Nebraska banking corporation with its main
office located in West Point, Nebraska. It has branch offices
located in Elkhorn, Nebraska; Papillion, Nebraska; Pender,
Nebraska; and Walthill, Nebraska.
Justin E. Riddle and his wife, Erin M. Riddle, are former
customers of Charter West who applied for a mortgage loan
that was denied.
2. Federal Lawsuit
Prior to the instant case, the Riddles filed a lawsuit against
Charter West and an instrumentality of the federal government
as a result of the denial of their mortgage loan. The Riddles’
lawsuit was removed to federal court.
At some point during that litigation, Justin notified Charter
West via email that he had purchased a website associated
with the domain name “www.charterwestbank.com” (the web-
site). Justin indicated that he planned to use the website to
post information that would reflect negatively upon Charter
West, and he later informed Charter West that the website “is
for sale.”
Charter West sent the Riddles an email in which it offered
“to settle [the federal case], subject to execution of a [c]onfi-
dential [s]ettlement [a]greement.” In the email, Charter West
offered payment to the Riddles in exchange for their transfer
of the website to Charter West. The Riddles rejected Charter
West’s settlement offer via email that same day.
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CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 2633. ACPA Complaint
Shortly after the Riddles rejected Charter West’s settlement
offer in the federal case, Charter West filed a separate lawsuit
against the Riddles—pursuant to the ACPA 2—in state district
court. The ACPA case led to the instant appeal.
In Charter West’s complaint, it recited that the Riddles had
filed a lawsuit against it and an instrumentality of the federal
government after the Riddles’ application for a mortgage loan
was denied and that the Riddles’ lawsuit had been removed to
federal court. Charter West alleged that “[w]hile the [federal
case] is pending,” the Riddles purchased the website, and that
they “threatened to use th[e] website to disseminate adverse
information.” It further alleged that the Riddles had “a bad
faith intent to exploit the [website] to customers of Charter
West that seek banking information via the internet.” Finally,
it alleged that the Riddles “offered to sell the [website] to
Charter West for $1 million.”
Charter West requested the district court issue a preliminary
and permanent injunction enjoining the Riddles from display-
ing the website online, as well as a further order directing the
Riddles to transfer the website to Charter West. 3
There were three exhibits attached to the complaint. The
first exhibit was a list of domain names owned by Charter
West. The second exhibit was a series of emails exchanged
between the parties relating to the federal case. The third
exhibit showed the content displayed on the website. It appears
from the record that the website consisted of a single webpage,
which purported to be a “Corruption Report” on Charter West
and the other defendant involved in the federal case.
2
See § 1125(d). See, also, Black’s Law Dictionary 486 (11th ed. 2019)
(defining “cybersquatting” as “[t]he act of reserving a domain name on the
Internet, esp[ecially] a name that would be associated with a company’s
trademark, and then seeking to profit by selling or licensing the name to
the company that has an interest in being identified with it”).
3
See § 1125(d)(1)(C).
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CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 2634. Preliminary Injunction
The district court held a hearing on Charter West’s request
for a preliminary injunction, during which it received evi-
dence from both parties. Charter West offered three exhibits
that showed the parties’ email correspondence relating to the
federal case. The emails generally discussed ongoing discov-
ery matters, Charter West’s settlement offer, and Justin’s use
of the website. The Riddles’ evidence included a letter that
served as Charter West’s “mediation report” in the federal
case, documentation regarding their mortgage loan application
that was denied, and excerpts from a PowerPoint presentation
that discussed the ACPA.
Following the hearing, the district court entered an order
issuing a preliminary injunction that prevented the Riddles
from displaying in any manner or form, or in any social
media, the domain name associated with the website “or any
iteration of that domain name.” It stated that the Riddles “may
not sell, assign or transfer [the website] until further order of
the [c]ourt.”
5. Trial
After the federal case concluded, the district court held a
bench trial in the ACPA case. There are two aspects of trial that
require summary.
At the outset, the court and the parties discussed the absence
of an answer. The court noted that it had previously ordered
the Riddles to file an answer to the ACPA complaint, but there
was no answer in the court’s record. Therefore, it explained,
the cause was technically in default. Charter West represented
that it had received an “answer” from the Riddles, even if it
was not properly filed in the court, and the court proceeded
with the trial.
Turning to the evidence adduced at trial, Charter West
introduced the three exhibits that it had previously attached
to the ACPA complaint, the exhibits already received by
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CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 263the district court at the preliminary injunction hearing, and
a transcript from the preliminary injunction hearing. It also
introduced an email exchange that took place after the pre-
liminary injunction hearing and a decision 4 of the U.S. Court
of Appeals for the Eighth Circuit showing that the federal
case had concluded. The Riddles introduced as evidence a law
review article discussing Fed. R. Evid. 408.
6. Original Judgment on
ACPA Violation
Following trial, the district court entered a judgment, styled
as an order, finding that the Riddles had violated the ACPA.
However, it determined that Charter West failed to meet its
burden of showing a permanent injunction should issue. It
reasoned that there was no evidence before the court of any
actual damages, real or irreparable, past or present, suffered by
Charter West due to the Riddles’ actions.
Based on its finding that the Riddles violated the ACPA,
the court ordered them to transfer their interest in the domain
name “www.charterwestbank.com” to Charter West within
30 days.
7. Motion to Alter or Amend
Charter West filed a timely motion to alter or amend the
district court’s judgment. In the motion, Charter West asked
the court “to include the requested permanent injunction” as a
result of its finding that the Riddles violated the ACPA.
8. Amended Judgment Granting
Permanent Injunction
Following a hearing on the motion, the district court entered
an amended judgment (styled as an order) granting Charter
West’s request for a permanent injunction. It explained:
“Here, upon further review by the [c]ourt, [the Riddles’] own
4
Riddle v. Charter West Bank, 787 Fed. Appx. 360 (8th Cir. 2019).
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CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 263words reveal their intent, and the very real possibility of irrep-
arable harm exists—in fact [the Riddles] state[] their intent is
to use the domain name charterwestbank.com to cause harm to
[Charter West].” It provided various excerpts from the parties’
email correspondence. Then, it concluded:
The potential for future harm—unquantifiable harm—
if [the Riddles] are allowed to continue to use the
domain name, is irreparable and there is no adequate
remedy at law. In balancing the hardships between each
party, the [c]ourt notes that [the Riddles] face[] no hard-
ship in refraining from willful domain site infringement,
whereas [Charter West] faces hardship from loss of busi-
ness, reputation, etc. . . . [T]here is nothing to prevent
[the Riddles] from continuing to be critical of [Charter
West] using other means . . . but [the Riddles] should not
be able to confuse consumers that [the Riddles’] website
is in fact that of [Charter West] by continuing to use
the [website].
The court issued a permanent injunction enjoining the
Riddles from using the website or any other domain name con-
taining the words “charter west.”
The Riddles filed a timely appeal and proceed as self-
represented litigants. We moved their appeal to our docket. 5
III. ASSIGNMENTS OF ERROR
The Riddles assign, reordered, that the district court erred in
(1) exercising jurisdiction, because “the [ACPA] and freedom
of speech fall firmly under federal jurisdiction”; (2) “failing
to recognize that [Charter West] does not qualify for [ACPA]
protection”; (3) “allowing settlement emails [into evidence] in
violation of rule 408”; (4) “granting [Charter West] judgment
against the [Riddles] for cybersquatting”; and (5) “ruling that
the [Riddles] can not use [a domain name containing] any
iteration of ‘[C]harter [W]est.’”
5
See Neb. Rev. Stat. § 24-1106(3) (Cum. Supp. 2022).
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CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 263IV. STANDARD OF REVIEW
[1,2] Subject matter jurisdiction and statutory interpretation
present questions of law. 6 An appellate court independently
reviews questions of law decided by a lower court. 7
[3,4] An action for injunction sounds in equity. 8 On appeal
from an equity action, an appellate court tries factual ques-
tions de novo on the record and, as to questions of both fact
and law, is obligated to reach a conclusion independent of the
conclusion reached by the trial court. 9
V. ANALYSIS
[5] As an opening matter, we begin our analysis by recalling
that a self-represented litigant will receive the same consider-
ation as if he or she had been represented by an attorney, and,
concurrently, that litigant is held to the same standards as one
who is represented by counsel. 10 To the extent the Riddles urge
us to apply “‘less stringent standards’” 11 here, we decline to do
so and hold them to the same standard that is demanded in any
other case.
With that settled, we turn to the Riddles’ assignments of
error.
1. Jurisdiction
[6] Before reaching the legal issues presented for review,
it is the duty of an appellate court to determine whether
6
County of Lancaster v. County of Custer, 313 Neb. 622, 985 N.W.2d 612(2023).
7
McGill Restoration v. Lion Place Condo. Assn., 313 Neb. 658, 986 N.W.2d
32 (2023).
8
County of Cedar v. Thelen, 305 Neb. 351, 940 N.W.2d 521 (2020).
9
Salem Grain Co. v. City of Falls City, 302 Neb. 548, 924 N.W.2d 678(2019).
10
Cattle Nat. Bank & Trust Co. v. Watson, 293 Neb. 943, 880 N.W.2d 906(2016).
11
Brief for appellants at 6.
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CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 263it has jurisdiction over the matter before it. 12 The Riddles do
not say so, but the premise of their first assignment of error
is that the district court lacked subject matter jurisdiction to
decide this case. Because of our duty, we must consider our
jurisdiction.
[7,8] Subject matter jurisdiction is the power of a tribunal
to hear and determine a case in the general class or category
to which the proceedings in question belong and to deal with
the general subject matter involved. 13 Where a lower court
lacks subject matter jurisdiction to adjudicate the merits of
a claim, issue, or question, an appellate court also lacks the
power to determine the merits of the claim, issue, or question
presented to the lower court. 14 Thus, in order to determine that
we have jurisdiction to review the merits of the ACPA claim
on appeal, we must first determine whether the district court
had subject matter jurisdiction to decide an ACPA action. We
conclude that it did.
The ACPA is a relatively new addition to the federal
Lanham Act, 15 also known as the Trademark Act of 1946. 16
The Lanham Act contains a specific provision 17 vesting the
federal courts with original jurisdiction “of all actions aris-
ing under” that act. The question underlying the Riddles’
assignment of error is whether the state courts are vested with
concurrent jurisdiction to decide “actions arising under” the
Lanham Act, which we consider as a matter of first impression
in this state.
12
Ramaekers v. Creighton University, 312 Neb. 248, 978 N.W.2d 298(2022).
13
Bleich v. Bleich, 312 Neb. 962, 981 N.W.2d 801 (2022).
14
Heist v. Nebraska Dept. of Corr. Servs., 312 Neb. 480, 979 N.W.2d 772(2022).
15
See 15 U.S.C. § 1051 et seq. (2018).
16
See Pub. L. No. 79-849, 60 Stat. 427.
17
See § 1121.
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CHARTER WEST BANK V. RIDDLE
Cite as 314 Neb. 263We turn to the U.S. Supreme Court’s precedent for guid-
ance. The Court has instructed that “[i]n cases ‘arising under’
federal law, . . . there is a ‘deeply rooted presumption in favor
of concurrent state court jurisdiction,’ rebuttable if ‘Congress
affirmatively ousts the state courts of jurisdiction over a par-
ticular federal claim.’” 18 It has further instructed that “the
mere grant of jurisdiction to a federal court does not operate
to oust a state court from concurrent jurisdiction.” 19 Thus, the
Lanham Act provision granting the federal courts jurisdiction
is not dispositive.
[9] Seeing nothing that affirmatively ousts the state courts
of jurisdiction over claims arising under the Lanham Act, we
hold that the federal and state courts have concurrent jurisdic-
tion. Several federal and state courts have reached a similar
conclusion. 20 Accordingly, we conclude that the district court
had jurisdiction to decide Charter West’s ACPA claim, and this
court has jurisdiction to review its merits on appeal.
2. ACPA Protection
The Riddles’ next assignment of error challenges the dis-
trict court’s finding that Charter West qualified for protection
under the ACPA. Before addressing the Riddles’ specific argu-
ments, we review the statutory elements of a cybersquatting
claim set forth in the ACPA.
18
Mims v. Arrow Financial Services, LLC, 565 U.S. 368, 378, 132 S. Ct.
740, 181 L. Ed. 2d 881 (2012) (quoting Tafflin v. Levitt, 493 U.S. 455, 110
S. Ct. 792, 107 L. Ed. 2d 887 (1990)).
19
Gulf Offshore Co. v. Mobil Oil Corp., 453 U.S. 473, 479, 101 S. Ct. 2870,
69 L. Ed. 2d 784 (1981).
20
See, e.g., Verizon Communications v. Inverizon Intern., Inc., 295 F.3d 870(8th Cir. 2002); Aquatherm Industries, Inc. v. Fla. Power & Light Co., 84
F.3d 1388 (11th Cir. 1996); Berlitz Schools of Languages, Etc. v. Everest
House, 619 F.2d 211 (2d Cir. 1980); Burris Carpet Plus, Inc. v. Burris, 785
N.W.2d 164 (N.D. 2010); Pioneer First Fed. S. & L. v. Pioneer Nat. Bank,
98 Wash. 2d 853, 659 P.2d 481 (1983).
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Cite as 314 Neb. 263(a) Elements of Cybersquatting
Subparagraph (1)(A) 21 of the ACPA provides, in relevant
part:
A person shall be liable in a civil action by the owner of
a mark . . . if, without regard to the goods or services of
the parties, that person—
(i) has a bad faith intent to profit from that mark
. . . ; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time
of registration of the domain name, is identical or confus-
ingly similar to that mark;
(II) in the case of a famous mark that is famous at the
time of registration of the domain name, is identical or
confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by rea-
son of section 706 of Title 18[ 22] or section 220506 of
Title 36.[ 23]
[10] For ease of application, we set forth the elements of an
ACPA claim. Generally, to prevail in a cybersquatting claim
under the ACPA, a plaintiff must show (1) it owned a mark 24;
(2) its mark was distinctive or famous at the time of regis-
tration of the defendant’s domain name 25; (3) the defendant
21
§ 1125(d)(1)(A).
22
18 U.S.C. § 706 (2018) (protecting American National Red Cross).
23
36 U.S.C. § 220506 (Supp. III 2021) (protecting International Olympic
Committee, International Paralympic Committee, Pan-American Sports
Organization, and United States Olympic and Paralympic Committee).
24
See § 1127 (defining “mark” for purposes of Lanham Act as “any
trademark, service mark, collective mark, or certification mark”).
25
See id. (defining “domain name” as “any alphanumeric designation which
is registered with or assigned by any domain name registrar, domain
name registry, or other domain name registration authority as part of an
electronic address on the Internet”).
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Cite as 314 Neb. 263registered, trafficked in, or used the domain name; (4) the
defendant’s domain name was identical or confusingly similar
to, or in the case of a famous mark, dilutive of, the plaintiff’s
mark; and (5) the defendant had a bad faith intent to profit. 26
This articulation disregards § 1125(d)(1)(A)(ii)(III), which has
no application here and applies to the marks of only a few
specific entities.
In the next section, we address the Riddles’ arguments
regarding Charter West’s mark.
It is important to note that the evidence does not establish
what Charter West claims its mark to be. At trial, it produced
a list of domain names that it owned, but its domain names are
not its mark for purposes of this analysis. 27 The only evidence
of Charter West’s mark seems to be its legal name—“Charter
West Bank.” Thus, in addressing the Riddles’ arguments, we
consider that to be its mark.
(b) Resolution
(i) Ownership of Mark
Under the first element, the Riddles argue that
“‘Charterwestbank’ is not a registered trademark, [and] there-
fore, Charter[ W]est has no explicit rights to the term . .
. .” 28 We reject this argument, which derives from a separate
cause of action 29 under the Lanham Act. Even assuming that
Charter West did not record its legal name as a registered
mark, the U.S. Supreme Court has stated that protection
26
See, § 1125(d)(1)(A)(i) and (ii); DaimlerChrysler v. The Net Inc., 388 F.3d
201 (6th Cir. 2004); Carr v. Mississippi Lottery Corp., 350 So. 3d 1068(Miss. 2022).
27
Cf. Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004).
28
Brief for appellants at 24.
29
See § 1114(1)(a) (trademark infringement related to use of registered mark
in manner “likely to cause confusion, or to cause mistake, or to deceive”
consumers).
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Cite as 314 Neb. 263under the ACPA is not limited to registered marks. 30 This
argument lacks merit.
(ii) Distinctive or Famous Mark
Turning to the second element, the Riddles argue that Charter
West’s name “is not distinctively famous enough” to qualify
for protection. 31 But this precise argument is inconsistent with
the statutory language. As set forth above, subparagraph (1)(A)
of the ACPA requires “a mark that is distinctive” or “a famous
mark.” 32 There is no requirement under the ACPA that Charter
West’s mark needed to be both “distinctive” and “famous” to
qualify for protection. 33
But we understand the Riddles’ argument to assert more
broadly that Charter West’s mark is neither “distinctive” nor
“famous,” which requires that we determine the meaning of
these two terms. The ACPA directs us to a separate subsection 34
of the Lanham Act for the statutory definitions.
Although that subsection does not explicitly define the
term “distinctive,” it provides that a mark may be distinctive
“inherently or through acquired distinctiveness.” 35 It defines
the term “famous” as “widely recognized by the general
consuming public of the United States as a designation of
source of the goods or services of the mark’s owner.” 36 It fur-
ther provides:
30
See Matal v. Tam, 582 U.S. 218, 137 S. Ct. 1744, 198 L. Ed. 2d 366(2017) (citing 5 J. Thomas McCarthy, Trademarks and Unfair Competition
§ 25A:49 (4th ed. 2017)).
31
Brief for appellants at 25.
32
§ 1125(d)(1)(A)(ii)(I) and (II).
33
See, generally, 5 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 25A:50 (5th ed. 2023).
34
§ 1125(c).
35
See § 1125(c)(1).
36
§ 1125(c)(2)(A).
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Cite as 314 Neb. 263In determining whether a mark possesses the requisite
degree of recognition, the court may consider all relevant
factors, including the following:
(i) The duration, extent, and geographic reach of adver-
tising and publicity of the mark, whether advertised or
publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of
sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or on the
principal register. 37
In its judgment and amended judgment, the district court did
not specify whether it found Charter West owned “a mark that
is distinctive” or “a famous mark.” But, having determined
that the Riddles violated the ACPA, it at least implicitly found
that this element was satisfied.
As noted above, our standard of review requires that we
review the district court’s finding de novo on the record and
reach an independent conclusion. 38 We cannot conclude from
the record before us that Charter West met its burden of proof
on this element.
[11] Charter West’s only assertion of record directed to this
element appears to be an allegation in its complaint, which
set forth its legal name and the locations of its offices. During
the preliminary injunction hearing, Charter West asked the
district court to take judicial notice of its complaint, but that
does not mean that the allegation is considered evidence. We
have previously stated that evidence consists of facts admitted
at a trial to establish or disprove the truth of allegations put in
issue by the pleadings. 39
37
§ 1125(c)(2)(A)(i) through (iv).
38
See Salem Grain Co. v. City of Falls City, supra note 9.
39
Kimball v. Nebraska Dept. of Motor Vehicles, 255 Neb. 430, 586 N.W.2d
439 (1998).
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Cite as 314 Neb. 263We review the evidence actually adduced at trial. Charter
West offered three exhibits that it originally attached to its
complaint, which included a list of domain names owned by
Charter West, a series of emails, and the content displayed on
the website. It reintroduced the exhibits received by the court
at the preliminary injunction hearing, which showed further
email correspondence between the parties. It also offered a
transcript from the preliminary injunction hearing, an email
exchange that occurred after the preliminary injunction was
issued, and the Eighth Circuit’s decision in the federal case.
Viewing the evidence as a whole, we determine that it did
not demonstrate that Charter West’s mark was “distinctive” at
the time of registration of the Riddles’ domain name. The U.S.
Supreme Court has explained that “[m]arks are often classified
in categories of generally increasing distinctiveness; . . . they
may be (1) generic; (2) descriptive; (3) suggestive; (4) arbi-
trary; or (5) fanciful.” 40 “The latter three categories of marks,
because their intrinsic nature serves to identify a particular
source of a product, are deemed inherently distinctive and are
entitled to protection.” 41 “In contrast, generic marks—those
that ‘refe[r] to the genus of which the particular product is a
species’ . . . are not registrable as trademarks.” 42
It has explained:
Marks which are merely descriptive of a product
are not inherently distinctive. When used to describe
a product, they do not inherently identify a particular
source, and hence cannot be protected. However, descrip-
tive marks may acquire the distinctiveness which will
allow them to be protected under the [Lanham] Act. .
. . [T]he Lanham Act provides that a descriptive mark
40
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753,
120 L. Ed. 2d 615 (1992).
41
Id.42
Id. (quoting Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189,
105 S. Ct. 658, 83 L. Ed. 2d 582 (1985)).
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Cite as 314 Neb. 263that otherwise could not be registered under the Act may
be registered if it “has become distinctive of the appli-
cant’s goods in commerce.”[ 43] This acquired distinctive-
ness is generally called “secondary meaning.” 44
In summary, “The general rule regarding distinctiveness is
clear: An identifying mark is distinctive and capable of being
protected if it either (1) is inherently distinctive or (2) has
acquired distinctiveness through secondary meaning.” 45
We analyze Charter West’s mark under this framework.
The word “bank” is a generic term incapable of protection
by itself. 46 The words “charter” 47 and “west” 48 are, at most,
merely descriptive terms that are not inherently distinctive. 49
One court, applying a portion of the Lanham Act, rejected
characterizing the term “charter,” with respect to banking
services, as suggestive and leaned instead toward describ-
ing it as generic, but for purposes of analysis assumed that it
was descriptive. 50
43
§ 1052(f).
44
Two Pesos, Inc. v. Taco Cabana, Inc., supra note 40, 505 U.S. at 769.
45
Id. (emphasis in original).
46
See First Savings Bank, F.S.B. v. First Bank System, 101 F.3d 645 (10th
Cir. 1996); Bank of Texas v. Commerce Southwest, Inc., 741 F.2d 785 (5th
Cir. 1984). See, also, Neb. Rev. Stat. § 8-113 (Reissue 2022).
47
See, generally, “Charter,” Oxford English Dictionary Online, https://www.
oed.com/view/Entry/30814 (last visited May 2, 2023) (“[a] leaf of paper
. . . ; a legal document or ‘deed’ written (usually) upon a single sheet of
paper, parchment, or other material, by which grants, cessions, contracts,
and other transactions are confirmed and ratified”).
48
See, generally, “West,” Oxford English Dictionary Online, https://www.
oed.com/view/Entry/227885 (last visited May 2, 2023) (“[d]esignating the
western part of a country, region, town, etc., or the more westerly of two
regions, etc., with the same name”).
49
See 2 McCarthy, supra note 33, § 14:1 (geographically descriptive terms
require secondary meaning).
50
See Charter Nat. Bank and Trust v. Charter One Financial, Inc., No. 01
C 0905, 2001 WL 1035721 (N.D. Ill. 2001) (no reasonable likelihood of
success that term “charter” acquired secondary meaning).
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Cite as 314 Neb. 263Here, absent proof of “acquired distinctiveness through sec-
ondary meaning,” these terms, standing alone, would not be
subject to protection. Seeing no evidence in the record estab-
lishing secondary meaning, we find that Charter West failed to
show its mark was “distinctive.”
Likewise, we determine that the evidence failed to demon-
strate Charter West’s mark was “famous” at the time of regis-
tration of the Riddles’ domain name. Charter West’s evidence
of record does not show the “duration, extent, and geographic
reach of advertising and publicity of [its] mark”; the “amount,
volume, and geographic extent of sales of goods or services
offered under [its] mark”; or the “extent of actual recogni-
tion of [its] mark.” Nor does the evidence show “[its] mark
was registered.”
Although we recognize that those examples were not the
only means by which Charter West could have satisfied its
burden of proof, it needed to produce some evidence demon-
strating that its mark was either “distinctive” or “famous” at
the time of registration of the Riddles’ domain name in order to
prevail on its claim. 51 Upon our de novo review of the record,
it has failed to do so.
Both Charter West’s briefing and oral argument suggest
that it did not believe the ACPA required it to prove it had a
“mark” that was either “distinctive” or “famous.” Its appellate
brief stated, “In order to violate the [ACPA], [the Riddles]
must be using or trafficking in the offending domain name,
must be using the name in bad faith with intent to profit
and must be using a domain that contains a mark that is
confusingly similar to the owner’s mark.” 52 But this articu-
lation overlooks the language of § 1125(d)(1)(A)(ii)(I) and
(II), which, in order to qualify for protection, requires that
51
See § 1125(d)(1)(A)(ii)(I) and (II).
52
Brief for appellee at 6.
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Cite as 314 Neb. 263Charter West’s mark was “distinctive” or “famous” at the
time of registration of the Riddles’ domain name. And at
oral argument, in further response to a question whether it
“concede[d] that there’s no evidence in the record of a famous
or distinctive mark,” it responded that it “d[idn’t] have any-
thing that indicates that it’s famous. . . . Or distinctive.” Then,
in response to a question whether “those [are] requirements
to proceed under the [ACPA],” Charter West stated, “I don’t
think they are. I think if you talk about—if you look at the
[ACPA], it does not require you to have a trademark or it
does not require you to have a specific distinctive, famous, or
whatever adjective you want to add, to the word.” But con-
trary to Charter West’s written and verbal argument, the ACPA
imposes this requirement.
Because our de novo review of the record leads to the
conclusion that Charter West failed to prove its mark was
“distinctive” or “famous” at the time of registration of the
Riddles’ domain name, it did not qualify for protection under
the ACPA. Accordingly, the record does not support the district
court’s implicit finding that Charter West met its burden of
proof on this element. Nor does the record support the court’s
permanent injunction barring the Riddles from using the web-
site or any other domain name containing the words “charter
west.” We therefore must reverse its judgment and vacate
its injunction.
[12] In light of our conclusion, we need not reach the
Riddles’ remaining assignments of error. An appellate court is
not obligated to engage in an analysis that is not necessary to
adjudicate the case and controversy before it. 53
VI. CONCLUSION
Because we have determined that Charter West failed
to produce evidence showing it was entitled to protection
53
Avis Rent A Car Sys. v. McDavid, 313 Neb. 479, 984 N.W.2d 632 (2023).
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Cite as 314 Neb. 263under the ACPA, we conclude that the district court erred in
granting judgment against the Riddles for cybersquatting. The
judgment of the district court is hereby reversed, its injunction
is vacated, and the action is dismissed.
Reversed, injunction vacated,
and dismissed.