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

["Martin B. Schwimmer" <martys@interport.net>]

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
>
>

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