[ga] Re: NCC and trademark issues

[Jeff Williams <jwkckid1@ix.netcom.com>]

Kathy and all,

KathrynKL@aol.com wrote:

> confusion and new gTLDs:
>
> There is some precedent before the US FEderal Communications Commission that
> the issue of trademark confusion can be taken into account, even by a
> technical organization for a technical function.  The analogy is 800 numbers
> -- or toll free dialing codes used largely be commercial entities.  We had
> one in the US for years -- "800" -- and the numbers began to run out.  When
> the FCC decided to create new toll free codes such as 888 and 876, the
> trademark owners said that they should own 888 FLOWERS and 876 FLOWERS and
> all other versions of their existing 800 numbers (numbers correspond to
> letters on the US telephone keypad).
>
> The FCC said -- absolutely not!!  It is not their job to protect and police
> marks.  If the trademark owner wanted the new toll free code, he/she could
> register in it.  The FCC created one exception -- for the very first toll
> free code (888).  In that, it allowed some trademark protection for existing
> 800 number uses -- but only to get past the initial hump of confusion.  After
> the first toll free code was created, the FCC said the public would
> understand that 876 and 888 and 800 were different and that the same number
> in different toll free codes was owned by different companies.
>
> I think the answer is the same here.  It is not ICANN's role to protect or
> police mkarks.  However, the first gTLD may/possible/perhaps create a little
> confusion among the public and we can try to take that into account.  But
> after that:  the public is smart, savvy and will know that APPLE.COM,
> APPLE.UNION and APPLE.NOM are held by different people.

  Agreed to a point here Kathy.  That point being that, yes indeed the
public is smart and savvy as you indicate in your example.  Yet the
current classes of TM's recently created for Domain Names do not
scale as to the differences in your example ( Apple.com, Apple.union,
and Apple.nom ) as we also have Apple.org, Apple.net as possibilities
and in different cases for instance with other SLD's the UDRP or
the cybersquatting law could come into play.  This would not satisfy
and/or correspond well with the current USPTO TM classes as they
relate directly to Domain Names and in specific SLD's within new
TLD's.  Think about this for a moment and it will become fairly
clear.

  Hence, although the public is smart/savvy some companies or
large TM holders will likely challenge some registrations in new
TLD's as a matter of course to protect their existing Marks.

  So as we [INEGroup] see it from a legal prospective here, is
one of two things must be changed in conjunction with the addition
of new TLD's to be introduced.  They are as follows:

1.) Additional classes of TM's must be added to include TLD's
     themselves to be Trademarked.

2.) Or, Trademarking Domain names in any TLD must now be eliminated
      as a class of TM or new classes of TM's for each TLD will need to
      be added.

3.) And, the UDRP must or should be changed to accommodate the addition
      of new TLD's both commercial and non commercial.

  Of course none of these will accommodate or deal effectively with already
existing TLD's that are being offered by other registries.

>
>
> regards, kathy
>
> <<
>    As for your "c".  It seems to me that you are referring to grand fathering
>  with respect to Trademarks that are extant.  If so, this is a good and wise
>  suggestion.  Are you? >>

Regards,

--
Jeffrey A. Williams
Spokesman INEGroup (Over 112k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail jwkckid1@ix.netcom.com
Contact Number:  972-447-1800 x1894 or 9236 fwd's to home ph#
Address: 5 East Kirkwood Blvd. Grapevine Texas 75208


--
This message was passed to you via the ga-full@dnso.org list.
Send mail to majordomo@dnso.org to unsubscribe
("unsubscribe ga-full" in the body of the message).
Archives at http://www.dnso.org/archives.html