Re: COM names != US trade marks (was Re: Future of IANA)

["Richard J. Sexton" <richard at sexton.com>]

At 08:05 PM 2/2/98 -0800, Einar Stefferud wrote:
>But, one thing is very clear non-the-less:
>
>NMA.COM is not NMA.ORG, even when bothare owned by the same party.
>And NMA.US is not NMA.CA, even when both are owned by the same party.

A more succint example is IBM. They registered IBM.COM in March 1986,
IBM.NET eight years later in June 1996 but did not bother to register
IBM.ORG. Somebody in Switzerland grabbed it in June 1996.

IBM didn't seem to believe it would suffer any damage or dilution
of it's name by letting somebode else use IBM.ORG; clearly it
had the time and money to obtain it for it's own use even if
that use was to "put it on the shelf" and never made operational.

>My take is that having more iTLDs will make the reality I have
>described much more easily apparent, even to TM Lawyers, and will
>certainly solve the problem for the Internet (at least as well as the
>International TM problem is now solved among nations).  (Actually not
>very well;-)...  So, then we can send our friendly TM Lawyers back
>where they came from to finish solving the original International TM
>probem.
>
>Since our TM Lawyers have convinced themselves that iTLDs are the real
>problem, they will continue to try to get the Internet to stop using
>them, and revert to using only nTLDs.  We have seen this plea many
>times, and it being repeated here.  But that would not solve our
>problem either.

The US Patent and Trademark office has very recently issued a
policy statement that a domain name that merely serves to associate
an address is not able to get a trademark, but a domain name that has
an identifiable product or service attached to it *can*
be trademarked.

A trademark is granted for an identifiable product
or service within a certain geopolitical area and the
US is a bit different in that a TM can be given in
a state or national boundry, plus it has the the notion
of "famous marks" that is unkown outside the US.

So what the, are the rights of a trademark owner viz a viz
a domain name?

If one were to own a US trademark on a name, lets say frobozz,
that was perhaps a brown soft drink and somebody besides frobozz
Inc. registered frobozz.com to sell soft drinks, there
would be trouble[1]. If frobozz.com were obtained to sell,
say, email redirection services, the fizzy company would
have a hard time getting a rational judge to find a problem.[2]

TM people have to read their own definitions.

What the trademark poeple need to understand is that their
rights to exclusivity to a name extend only to the product
or service the trademark was obtained for, and in the
geoplitical area where they applied for it. They do not,
under any circumstances, have world-wide, exclusivity for
that name, which is, in effect, what claiming they have
a priori rights over a domain name that matches their
trademark would mean.

This is made worse by the US statutes on famous marks
but this is strictly a US problem, and the problem in a 
nutshell is the trademark system recognizes borders, 
and the Internet does not.

In effect, what you are seeing unfold is the Interent
regarding onerous US trademark laws as damage, and routing
around them.

=======

[1] Maybe. If they were selling a blue fizzy soft drink that
wasn't trying to pass itself off as the brown fizzy soft
drink, thats different. See the bluenote.com case.

[2] It would also be necessary to dispute any defenses
such as a common law mark in the home jurisdiction of
frobozz.com, etc

======

Thanks to Dan Steinberg for clarification and help on
these issues.

Disclaimer: I'm not a lawyer. Dan is though.

--
                   ``It's too dark to put the keys in my ignition''  
 richard at sexton.com
 Bannockburn, Ontario, Canada +1 (613) 473-1719