RE: [wg-b] US Statutorily Protected Marks

["Michael D. Palage" <mpalage@infonetworks.com>]

Listed below please find the guidelines that the Japanese Patent Office has
provided to me in connection with its Well-Know mark process. I would like
to personally thank Deputy Director of International Affairs Division Mr.
Ken-ichi IOKA, for his continued assistance to date.

Although I generally agree with Lynne's statements about the status of the
mark NOT being well-known on an international level merely because of its
inclusion on this list. I believe the following passage from the attached
document does seem to indicate that the Japanese Patent Office does look to
the status of the mark "outside" of Japan as one of many factors it
considers:

5. In judging whether a foreign trademark is well known in Japan, full
consideration needs to be given to, if submitted, materials showing that the
trademark concerned is well known in a foreign country and goods on which
the trademark is used are exported to or provided in several countries or
services bearing the trademark are rendered in several countries.

For those individuals that may try out the Japanese Well-Known Trademarks
on-line database, please note that at the bottom of each record, there is a
notation to the effect of either: (1) This trademark has been registered as
a defensive mark or (2) This trademark was recognized as a well-known
trademark in the trial or court decision.

And by the way Lynne, this is EXACTLY the type of insightful input that we
need to tackle the issues before. We welcome any further insight you may
have on the subject. Could you elaborate on your statement that "the
defensive registration
system has been generally disappearing from national systems." In your
professional opinion why is this happening? Are we creating something that
is already obsolete?

Best regards,

Michael D. Palage

Section 4(1)(x)
Trademarks which are well known among consumers as indicating the goods or
services as being connected with another person's business, and trademarks
similar thereto, and which are used in respect of such goods or services or
similar goods or services.

1. "A trademark well known among consumers" as prescribed in this paragraph
includes not only a trademark which is widely recognized among end consumers
but also a trademark which is widely recognized among traders in the
industry   and also includes not only a trademark which is known throughout
the country  but also a trademark which is widely recognized in a certain
area.
2. A trademark to be cited for the application of the provision of this
paragraph   needs to be widely recognized among domestic consumers in Japan
at a time  when an application for the registration of a trademark is filed
(See Section   4(3).).
3. To prove a trademark's being well known under the provision of this
paragraph, the provisions of Items 2(1) and (2) of Chapter II (Section 3(2))
of the
Guidelines apply mutatis mutandis.
4. Concerning a trademark relating to goods or services special in the
manner of their transaction or provision (such as, for example, medicines
and drugs for medical use which are distributed in a specific market or
services to test and examine or research medicines, which are provided only
in a limited market), full consideration needs to be given to, in
particular, the actual state of transaction of the goods concerned or the
provision of the services concerned with respect to the above proving method
and the recognition based thereon of a trademark's being well known.
5. In judging whether a foreign trademark is well known in Japan, full
consideration needs to be given to, if submitted, materials showing that the
trademark concerned is well known in a foreign country and goods on which
the trademark is used are exported to or provided in several countries or
services bearing the trademark are rendered in several countries.


Section 4(1)(xv)
Trademarks which are liable to cause confusion with goods or services
connected with another person's business (other than the trademarks
mentioned in paragraphs (x) to (xiv))

1. "... likely to cause confusion with goods or services connected with any
other   person's business" applies not only in case where the users of goods
or services  are likely to be confused over the source of the goods or
services with the   goods or services concerned mistakenly recognized as
those connected with the   business of other persons but also in case where
the user of the goods or services   are likely to be confused over the
source of the goods or services with the  goods or services concerned
mistakenly recognized as connected with the business of a person who has a
certain economic or organizational relationship with other persons.
The following are examples of conceivable cases.
(1) In case where a trademark used by a business operator A with respect to
a good G connected with its own business has become well known throughout
Japan, the use of the trademark  by a business operator B with respect to a
good X (not similar to the good G and having no relationship with the good G
in respect of its manufacturer, seller , distribution route, materials, use,
etc.)   connected with its own business leads consumers to see the good X
not as a    good connected with the business of the business operator A but
as a good    connected with the business of another business operator A'
having affiliated    or other business relationship with the business
operator A with confusion    caused over the source of the good (on the
assumption of the presence of the business operator A' which does not
actually exist).
(Note) The above case (1) applies to a service with the word "good" and "its
manufacturer, seller, distribution route, materials, use, etc." altered to
read "service"    and "the provider of the service and its provision means
and purpose, articles for use for  the provision of the service, etc."

(2) In case where a trademark  is used by a business operator A with respect
to a service connected with its own business has become known well
throughout Japan, the use of the trademark  by a business operator B with
respect to a good (not similar to the service of the business operator A)
connected with its own business leads consumers to mistakenly recognize the
good as connected with another business of the business operator A with
confusion caused over the source of the good.
 (Note) The above case (2) applies in case where the business of the
business operator A relates to a good and the business of the business
operator B relates to a service.
2. To judge the liability of a trademark "to cause confusion with goods or
services   connected with another person's business," the following factors
are  comprehensively taken into consideration.
(a) How much another person's trademark is known (the degree or
dissemination of  advertisement, publicity, etc.).
(b) Whether another person's trademark is a creative mark.
(c) Whether another person's trademark is a house mark.
(d) Whether there is the possibility of multiple businesses.
(e) Whether there is any relationship between goods, services or goods and
services.
3. To prove a trademark's being well known as in Item 2(a) above, the
provisions of  Items 2(1) and (2) of Chapter II (Section 3(2)) of the
Guidelines apply mutatis  mutandis.
4. A trademark with its part indicating a famous trademark of another person
needs to be handled in the following manners:
(1) A trademark judged as similar to a registered famous trademark of
another   person and used for goods or services identical with or similar to
the designated goods or designated services of that registered famous
trademark falls under the  provision of Section 4(1)(xi).
(2) A trademark liable to cause confusion over the source of a good or
service, however it is recognized as not similar to a famous trademark of
another person or is similar to a famous trademark of another person but
used for a different good or service, falls under the provision of this
paragraph, in principle.
(3) A trademark similar to a famous trademark of another person but not
liable to cause confusion over the source of a good or service, if used for
an unfair intention, falls under the provision of Section 4(1)(xix).
5. A trademark application with respect to a trademark which is liable to,
if used by the applicant, cause confusion over the source of its goods or
services with those of a famous trademark well known as a famous trademark
overseas among consumers in Japan (not necessarily to final consumers) at
the time of its filing (See Section 4(3).) is liable to be refused under the
provision of this paragraph with that famous trademark cited as a reason for
refusal.
6. To judge the liability of a trademark to cause confusion with goods or
services  connected with another person's business, full consideration is
given to the actual state of their transaction.
7. A three-dimensional trademark indicating the shape of a building, if
widely recognized in Japan as the shape of another person's building before
an application is filed for it, falls under the provision of this paragraph.

Section 4(1)(xix)
Trademarks which are well known among consumers in Japan or abroad as
indicating the goods or services as being connected with another person's
business, and trademarks identical with or similar thereto, and which are
used by the applicant for unfair intention (intention to gain an unfair
profit, intention to cause damage to such another person and other unfair
intentions - hereinafter the same) (other than the trademarks mentioned in
each of the preceding paragraphs) in respect of such goods or services

1. For example, trademarks presented below fall under the provision of this
paragraph.
(a) A trademark of which the registration is sought to, taking advantage of
a
well-known foreign trademark or a trademark similar thereto being not
registered in Japan, force its purchase, prevent a market entry by the owner
of that foreign trademark or force the owner of that foreign trademark to
conclude an agent contract
(b) A trademark identical with or similar to a trademark well known
throughout Japan, for which an application is filed with an intention to
dilute the distinctiveness of the well-known trademark to indicate the
source of a good or impair the reputation, etc. of the trademark owner,
however the trademark of that application per se is not liable to cause
confusion over the source of a good
2. Trademarks "well known among consumers" as stipulated in this paragraph
not only mean trademarks widely known to final users but include trademarks
widely recognized among traders.
3. Trademarks "well known among consumers ... abroad" as stipulated in this
paragraph need to be well known in the countries they originate from but not
necessarily need to be well known in multiple countries outside those
countries. Nor do they in Japan.
4. A judgment on an "unfair intention" needs to be made with full
consideration given to the following materials, if available.
(a) Materials proving a fact that another person's trademark is well known
among consumers (the period, scope, frequency of its use)
(b) Materials showing that a well-known trademark is composed of a coined
word or particular in composition
(c) Materials proving a fact that the owner of a well-known trademark has a
concrete plan to make a market entry in Japan (such as, for example,
exportation to Japan, sales in Japan, etc.)
(d) Materials proving a fact that the owner of a well-known trademark has a
plan to expand its business in the near future (such as, for example, the
start of a new business, development of its business in new areas, etc.)
(e) Materials proving a fact that the owner of a well-known trademark is
forced to accept a demand from a trademark applicant for the purchase of a
trademark in question, the conclusion of an agent contract, etc.
(f) Materials showing that a trademark, if used by its applicant, is liable
to impair credit, reputation, consumers-attractiveness built up in a
well-known trademark

Section 64
(Registrability of Defensive Marks)
Section 64:
(1) The owner of a trademark right may, when his registered trademark in
respect of goods has become well-known among consumers as indicating the
designated goods as being connected with his business and when the use of
the registered trademark by any other person in respect of goods other than
the designated goods covered by the registered trademark and goods similar
thereto or services similar to the designated goods is likely to cause
confusion between such goods or services and the designated goods in
connection with his business, obtain a defensive mark registration of a mark
identical with the registered trademark with respect to goods or services
for which such possibility of confusion exists.
(2) The owner of a trademark right may, when his registered trademark in
respect of services has become well known among consumers as indicating the
designated services as being connected with his business and when the use of
the registered trademark by any other person in respect of services other
than the designated services covered by the registered trademark and
services similar thereto or goods similar to the designated services is
likely to cause confusion between such services or goods and designated
services in connection with his business, obtain a defensive mark
registration of a mark identical with the registered trademark with respect
to services or goods for which such possibility of confusion exists.

1. " ... when his registered trademark in respect of goods has become
well-known
  among consumers" means "reaching a state of 'famous'."
2. The "famous" degree is judged based on the following criteria:
(1) the start and duration of use of a registered trademark relating to an
application for the registration of a defensive mark (hereinafter referred
to a principal registered trademark), areas of its use, goods or services
connected with its use, etc.;
(2) the degree or dissemination of an advertisement, publication, etc. of
the principal registered trademark;
(3) the state of business at the owner of the principal registered
trademark, with consideration given to the relationship of the designated
goods or services its business scale, business activities (state of
production or sale, etc.); and
(4) the recognition of the principal registered trademark's being famous by
the Patent Office.
3. The likelihood of confusion over the source of goods or services is
judged with   consideration comprehensively given to the following with
respect to the   relationship of the designated goods or designated services
of the defensive       mark with those of the principal registered
trademark.
(1) Dissimilar goods need to be generally recognized as stemming from the
same company when judged in consideration of their manufacturers, vendors,
distribution routes, materials and uses and dissimilar services so judged in
consideration of their providers, provided contents, articles provided in
the  services.
(2) Besides requirements in (1) above, the source of goods or services needs
to be generally recognized as closely connected with the owner of the
principal registered trademark.
4. A trademark including the common name of a good or service with an
application for its registration covering goods or services other than the
said  goods or services is granted a registration as a defensive mark if it
satisfies other  requirements.



-----Original Message-----
From:	owner-wg-b@dnso.org [mailto:owner-wg-b@dnso.org] On Behalf Of
Beresford, Lynne
Sent:	Friday, November 26, 1999 1:06 PM
To:	'mpalage@infonetworks.com'; wg-b@dnso.org
Subject:	RE: [wg-b] US Statutorily Protected Marks

As to the marks protected as well-known marks by the Japanese:  One should
note that the only claim for these marks is that they are recognized as
well-known marks in Japan.  There is no implication, as far as I know, that
the marks are internationally well-known or even well-known regionally.

The standards that are used by the Japanese to establish that a mark is
well-known in Japan would perhaps be of interest to the members of  WG-B.
As far as I know, based on a briefing I had on the system almost two years
ago, the Japanese use two standards to establish that a mark is well-known
in Japan.  A mark will be considered well-known in Japan if 1) a court of
competent jurisdiction declares that the mark is well-known, or,  2) if the
owner of the mark has a certain number of defensive registrations.  (I don't
know what that number is.)

A defensive registration is one where the mark is registered for a type of
goods or services not produced by the mark owner. Only a few national
trademark systems have such registrations and the defensive registration
system has been generally disappearing from national systems.  The defensive
registration serves to keep anyone from registering the mark for the goods
or services listed in the registration.  As an example (this is purely
made-up and non-factual) IBM, whose principal goods and services would be
computer related,  could have defensive registrations for the mark IBM for
such things as key-chains, paper, greeting cards or automobiles.  The
Japanese tote up the number of such registrations and at a certain point
declare that the mark is well-known in Japan.

This is probably more than anyone wanted to know about the subject!

> -----Original Message-----
> From:	mpalage@infonetworks.com [SMTP:mpalage@infonetworks.com]
> Sent:	Thursday, November 25, 1999 2:42 PM
> To:	wg-b@dnso.org
> Subject:	[wg-b] US Statutorily Protected Marks
>
> Several participants have asked me about the list of statutorily protected
> marks under US Federal Law. The following is a "partial" list obtained
> from
> the Trademark Manual of Examining Procedure - Section 1900.
> http://www.uspto.gov/web/offices/tac/tmep/1900.htm
>
> I have also recently completed a list of all 732 marks contained in the
> Japanese Well-Known Trademark on-line database. Although I will be
> including
> this as an appendix to my position paper, I will try to forward it to the
> list for the benefit of other individuals and organization writing their
> papers.
>
> Some of these organization listed below, such as the Red Cross, the
> Olympics
> and the FBI, have already contact ICANN accredited registrars about
> installing filters to protect their famous marks.
>
> Hopefully all my colleagues in the US are enjoying their Thanksgiving Day
> holiday.
>
> Best Regards,
>
> Michael D. Palage
>
>
>
> Partial Listing of US Statutorily Protected Marks:
>
>      American Ex-Prisoners of War 36 U.S.C. §2115
>      American Legion 36 U.S.C. §48
>      The American National Theater and Academy 36 U.S.C. §3305
>      American Symphony Orchestra League 36 U.S.C. §3416
>      American Veterans of World War II, Korea, and Vietnam 36 U.S.C. §67p
>      American War Mothers 36 U.S.C. §100
>      AMVETS (see American Veterans of World War II, Korea,
>      and Vietnam)
>      Big Brothers [and other names] 36 U.S.C. §895
>      Big Sisters [and other names] 36 U.S.C. §895
>      Blinded Veterans Association 36 U.S.C. §867
>      Blue Star Mothers of America, Inc. 36 U.S.C. §956
>      Board for Fundamental Education 36 U.S.C. §516
>      Boy Scouts of America 36 U.S.C. §27
>      Central Intelligence Agency 50 U.S.C. §403m
>      Central Liquidity Facility 18 U.S.C. §709
>      CIA (see Central Intelligence Agency)
>      Citius Altius Fortius (see Olympic)
>      Civil Air Patrol 36 U.S.C. §206
>      Coast Guard [and other names] 14 U.S.C. §639
>      Commodity Credit Corporation 15 U.S.C. §714m
>      DEA (see Drug Enforcement Administration)
>      Department of Housing & Urban Development
>      [and other names] 18 U.S.C. §709
>      Disabled American Veterans 36 U.S.C. §90h
>      Drug Enforcement Administration 18 U.S.C. §709
>      Fastener Quality Act 15 U.S.C. §5401
>      FFA (see Future Farmers of America)
>      The Foundation of the Federal Bar Association 36 U.S.C. §587
>      4-H Club [also specific reference to emblem consisting of
>      a green four-leaf clover with stem and the letter H in
>      white or gold on each leaflet] 18 U.S.C. §707
>      F.B.I. (see Federal Bureau of Investigation)
>      Federal Bureau of Investigation 18 U.S.C. §709
>      Federal Deposit Insurance Corporation [and other names] 18 U.S.C.
> §709
>      Federal Home Loan Mortgage Corporation 12 U.S.C. §1457,
>      12 U.S.C. §1723a
>      Future Farmers of America 36 U.S.C. §286
>      Geneva Cross (see Red Cross)
>      Girl Scouts of America 36 U.S.C. §36
>      Give a Hoot, Don't Pollute (see Woodsy Owl)
>      The Golden Eagle [also specific reference to insignia of
>      an American Golden Eagle (colored gold) and a family
>      group (colored midnight blue) enclosed within a circle
>      (colored white with a midnight blue border)] 18 U.S.C. §715
>      Government National Mortgage Association 12 U.S.C. §1723a,
>      18 U.S.C. §709
>      HUD (See Department of Housing & Urban Development)
>      International Olympic Committee (see Olympic)
>      HCFA (see Social Security)
>      Health Care Financing Administration (see Social Security)
>      Ladies of the Grand Army of the Republic 36 U.S.C. §78o
>      Library of Congress 36 C.F.R. §701.35
>      Life Saving Service (see Coast Guard)
>      Lighthouse Service (see Coast Guard)
>      Little League; Little Leaguer 36 U.S.C. §1086
>      Marine Corps 10 U.S.C. §7881
>      Medicaid (see Social Security)
>      Medicare (see Social Security)
>      The Military Chaplains Association of the United States of
>      America 36 U.S.C. §316
>      NASA (see National Aeronautics and Space Administration)
>      National Aeronautics and Space Administration
>      [also flags, logo, seal] 42 U.S.C. §2459b,
>      14 C.F.R. §§1221.101,
>      1221.107
>      National Agricultural Credit Corporation 18 U.S.C. §709
>      National Conference of State Societies, Washington,
>      District of Columbia 36 U.S.C. §418
>      National Conference on Citizenship 36 U.S.C. §446
>      National Credit Union [and other names and acronyms] 18 U.S.C. §709
>      National Music Council 36 U.S.C. §676
>      National Safety Council 36 U.S.C. §477
>      National Society, Daughters of the American Colonists 36 U.S.C. §2909
>      National Society of the Daughters of the American Revolution 36
> U.S.C.
> §18c
>      National Women's Relief Corps, Auxiliary of the Grand
>      Army of the Republic 36 U.S.C. §1017
>      Naval Sea Cadet Corps 36 U.S.C. §1056
>      NCOA (see Non Commissioned Officers Association of the
>      United States of America)
>      Non Commissioned Officers Association of the United States
>      of America [and other names] 36 U.S.C. §4016
>      Olympiad (see Olympic)
>      Olympic [and other names] [also specific reference to (1) the
>      symbol of the International Olympic Committee, consisting
>      of five interlocking rings, and (2) the emblem consisting of
>      an escutcheon having a blue chief and vertically extending
>      red and white bars on the base with five interlocked rings
>      displayed on the chief] 36 U.S.C. §380
>      OPIC (see Overseas Private Investment)
>      Overseas Private Investment 18 U.S.C. §709
>      Paralyzed Veterans of America 36 U.S.C. §1160
>      Pearl Harbor Survivors Association 36 U.S.C. §3615
>      Peace Corps 22 U.S.C. §2518
>      Red Cross [and other names] [also specific reference to
>      the emblem of the Greek red cross on a white ground] 18 U.S.C. §706
>      Reserve Officers Association of the United States 36 U.S.C. §238
>      SSA (see Social Security)
>      Secret Service [and other names] 18 U.S.C. §709
>      Smokey Bear 18 U.S.C. §711,
>      16 U.S.C. §580p,
>      36 C.F.R. §261.20
>      Social Security [and other names, symbols and emblems] 42 U.S.C.
> §1320b-10
>      Sons of Union Veterans of the Civil War 36 U.S.C. §547
>      Swiss Confederation [with specific reference to the coat of
>      arms, consisting of an upright white cross with equal arms
>      and lines on a red ground] 18 U.S.C. §708
>      U.D. (see Secret Service)
>      USCG (see Coast Guard)
>      USCGR (see Coast Guard)
>      USMC (see Marine Corps)
>      USO (see United Service Organizations, Incorporated)
>      U.S.S.S. (see Secret Service)
>      United Service Organizations, Incorporated 36 U.S.C. §1307
>      United States Capitol Historical Society 36 U.S.C. §1215
>      United States Mint 18 U.S.C. §709
>      United States Railway Association 45 U.S.C. §711
>      United Spanish War Veterans 36 U.S.C. §56f
>      The United States Blind Veterans of the World War 36 U.S.C. §87
>      United States Coast Guard (see Coast Guard)
>      United States Olympic Association (see Olympic)
>      United States Olympic Committee (see Olympic)
>      369th Veterans Association 36 U.S.C. §3015
>      Veterans of Foreign Wars of the United States 36 U.S.C. §117
>      Veterans of World War I of the United States of America,
>      Incorporated 36 U.S.C. §777
>      Vietnam Veterans [and other names] 36 U.S.C. §3816
>      Woodsy Owl 18 U.S.C. §711a,
>      16 U.S.C. §590p,
>      36 C.F.R. §261.20
>
>
>