RE: The Fame Claim List -was [wg-b] notification as compromise?

["Roeland M.J. Meyer" <rmeyer@mhsc.com>]

Hello Martin,

Wouldn't part of such a solution be; that the US PTO run a TM whois
service that a registry could check automagically? It would solve a lot
of problems. It would also reduce the cost substantially.

> -----Original Message-----
> From: owner-wg-b@dnso.org [mailto:owner-wg-b@dnso.org]On Behalf Of
> Martin B. Schwimmer
> Sent: Tuesday, September 07, 1999 8:41 AM
> To: wg-b@dnso.org
> Subject: Re: The Fame Claim List -was [wg-b] notification as
> compromise?
>
>
> There is no US government service providing notice to TM
> owenrs of this type.
>
> The U.S. trademark office when examining a TM application
> will advise the
> applicant if, in its view, the new application would infringe
> the rights of
> a prior TM owner (this is more than notification - the PTO
> will block the
> application initially).  The PTO does not inform the TM owner
> that its TM
> has been the subject of a "clocking citation."  THE US PTO
> does publush a
> "gazette" every week publishing approved applications.  One
> drawback is
> that a subscription to the gazette or to a watching service
> is expensive to
> the small TM owner.  Private watching services will notify a
> TM owner if a
> new application might infringe the rights of a TM owner.  The
> TM owner will
> have to notify the applicant, if necessary, if the TM owner
> wishes to take
> action.
>
> The EEC TM office (known as OHIM) will notify the TM
> applicant and a prior
> registrant of each other's existence.  This is notification only - the
> application is not blocked.
>
> I advocate the notification rather than exclusion system (as presently
> proposed).  Notification can cast a larger net than an
> exclusion process
> and there is no impairment of the DN owner's rights prior to its being
> allowed to make its case.
>
> There is a useful function in putting the DN owner on notice
> that there
> might be a prior rights holder.  Because infringement is
> determined on a
> similarity rather than an identity standard, there is a need
> for a human
> element, and human elements can lead to bureacracies.  Many
> countries in
> the world do not have examination for prior rights - that
> streamlines the
> application process, but that can also create more
> inter-partes proceedings
> (TM owners attempting to oppose applications or cance
> registrations).  With
> notification, the DN owner has certainty in its ability to use a name
> earlier in the process.  Functions such as the fame claim list would
> seemingly be automatic (and non-judgemental), and provide
> notification.
>
>
>
>
>
>
> At 07:59 AM 9/7/99 -0700, you wrote:
> >> They can't.  They can identify names which include terms
> which may lead to
> >> infringement.  The Muppets cannot register muppet.firm,
> muppets.firm,
> >> mupets.firm, mymuppets.firm, themuppets.firm, themupets.firm,
> >> the-muppets.firm, the-mupets.firm, muppet1.firm, muppetshow.firm,
> >> muppetmovie.firm, muppetsmovie.firm, muppetshop.firm,
> wwwmuppets.firm,
> >> wwwthemuppets.firm, muppet.biz, muppets.biz, mupets.biz,
> mymuppets.biz,
> >> themuppets.biz, themupets.biz, the-muppets.biz, the-mupets.biz,
> >> muppet1.biz, muppetshow.biz, muppetmovie.biz, muppetsmovie.biz,
> >> muppetshop.biz, wwwmuppets.biz, wwwthemuppets.biz,
> muppet.web, muppets.web,
> >> mupets.web, mymuppets.web, themuppets.web, themupets.web,
> the-muppets.web,
> >> the-mupets.web, muppet1.web, muppetshow.web, muppetmovie.web,
> >> muppetsmovie.web, muppetshop.web, wwwmuppets.web,
> wwwthemuppets.web,
> >> muppet.shop, muppets.shop, mupets.shop, mymuppets.shop,
> themuppets.shop,
> >> themupets.shop, the-muppets.shop, the-mupets.shop, muppet1.shop,
> >> muppetshow.shop, muppetmovie.shop, muppetsmovie.shop,
> muppetshop.shop,
> >> wwwmuppets.shop, wwwthemuppets.shop, on the first day that
> all these TLDs
> >> open.  They can put people on notice that names which
> include MUPPETS or
> >> MUPETS might infringe their rights.
> >
> >i am likely wrong, but i thought the government already
> provided a service
> >which did essentially that.
> >
> >randy
> >
> >
>
> @ @ @ @ @ @ @ @ @
>