Re: [ga] Domain names as observed (was Tucows Response toCochetti Transfer Letter)

["William S. Lovell" <wsl@cerebalaw.com>]

Joanna Lane wrote:

> Leah,
>
> This doesn't fit with my understanding. The trademark is not for "Amazon",
> it is for "Amazon.com", the ".com" being very much a part of the name being
> trademarked (under numerous categories, not just the one cited by Sotiris),
> but the ".com" is explicitly excluded as a trademark in isolation of the
> "Amazon" (that being clearly stipulated in all DN trademark applications I
> have seen). Also, it is not necessary to have a bricks and mortar operation
> for a trademark, it can be purely e-commerce. IANAL, but I did talk to the
> US Trademark Office in general terms about this a while ago.

The USPTO says that extensions such as .com have "no trademark significance,"
meaning that such an extension cannot be used to distinguish one mark from
another.   Also, one might very well register both, e.g., both Amazon and
Amazon.com, but the extensions themselves are not independently registrable
(for a lot of reasons).

What was missed in the whole UDRP bit, commencing with the initial sellout
by NSI to the trademark interests, is that under U. S. law, trade names are
also protected.  That is where a company name is used not in connection with
specific goods or services, so as to qualify for a trademark or a service mark,

but simply as the company name.  One could use that company name in that
trade name role as a domain name, and that trade name would be protectible
under the Lanham Act, even though the trade name would not be eligible for
either
a trademark or a service mark.  There are, of course, many companies that
manufacture and sell products that rest on those products' own trademarks,
while the name of the actual company never appears anywhere -- many of the
conglomerates, in fact, work that way exclusively -- one may not know from
week to week who actually owns some particular brand, but whoever it is
will have a company name that is protectible under the Lanham Act, but
absolutely toast under these dispute resolution abominations.  None of  the
various dispute resolution (i.e., read "stealing") policies give even the
slightest
bow to that centuries old aspect of U. S. trademark law.

IAAL. This is not legal advice but rather a scholarly observation.  :-)

Bill Lovell

> Regards,
> Joanna
>
> on 7/28/01 3:14 AM, L Gallegos at jandl@jandl.com wrote:
>
> >
> > Precisely, Sotiris.  Amazon.com is the name of the company and
> > the source of goods and services.  It is not simply an address for a
> > website.  One cannot trademark a domain name just as a domain
> > name.  It is the mark before the "." that is the tm.  For instance, I
> > cannot trademark biztld.net.  It is not the name of the company
> > and is just one of several addresses used for the .biz registry.
> >
> > Leah
> >
> >
> > On 28 Jul 2001, at 2:51, Sotiris Sotiropoulos wrote:
> >
> >> L Gallegos wrote:
> >>
> >>> As for trademarking a domain name, in the US, it can't be unless it
> >>> is more than just the address for a website.  The domain name
> >>> itself, as a domain name, is not trademarkable - at least according
> >>> to the USPTO guidelines.
> >>
> >>> From the USPTO:
> >>
> >> Word Mark: AMAZON.COM
> >>
> >> Goods & Services: IC 035. US 100 101 102. G & S: computerized on line
> >> search and ordering service featuring the wholesale and retail
> >> distribution of books, music, motion pictures, multimedia products and
> >> computer software in the form of printed books, audiocassettes,
> >> videocassettes, compact disks, floppy disks, CD ROMs, and direct
> >> digital transmission. FIRST USE: 19950415. FIRST USE IN COMMERCE:
> >> 19950415
> >>
> >> Mark Drawing Code  (1) TYPED DRAWING
> >>
> >> Serial Number: 75277670
> >>
> >> Filing Date: April 18, 1997
> >>
> >> Published for Opposition: March 31, 1998
> >>
> >> Registration Date: June 23, 1998
> >>
> >> This looks like a TM to me. (Also, not only is it a WORD MARK Tm, but
> >> it is of the most coomon TM variety: (1) TYPED DRAWING (1,729,236
> >> occurences of this type of TM in the USPTO)
> >>
> >> IANAL,
> >>
> >> Sotiris Sotiropoulos
> >>

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