RE: [wg-b] US Statutorily Protected Marks

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

I am a little confused by your comments Kathryn.  Although I 100% agree with
you that it is our task to "reflect law" and "not make it", I do not know
where the distinction between commercial and non-commercial exists. I
believe our mandate is to protect famous marks - period, no distinction
between famous or commercial. I could be wrong. If you could provide me the
basis for your position I would greatly appreciate it.

It is my personal opinion that the discussion about US statutorily protected
marks actually serves several purposes. First, as Lynne accurately pointed
out:

These marks are protected because the persons responsible for protecting
them were able to convince Congress to provide statutory protection.

This statement reinforces the need for clearly defined objective criteria,
coupled with more flexible subjective criteria, in defining famous marks. In
order to safeguard the "famous trademark process" stakeholders must be able
to make sure that individuals cannot "convince" the panel to grant famous
trademark status to a mark that does not deserve it.

The second benefit of the US statutory discussion is the benefit of seeing
how different bodies, administrative, legislative, etc. deal with protecting
trademarks. I believe that there is no case law, administrative process, or
existing mechanism or safeguard that addresses the problem that we are
facing. Therefore, we should approach the problem with open minds, invite as
many people to participate in the process and see what creative "non-law
making substantive solution" we can arrive at.

I also agree with your statement that what ever process we adopt, it must
withstand judicial scrutiny both in the US and abroad.

In your RFC - 1 comment Kathryn you stated, "Domain Name Rights Coalition
and NetAction believe that this section is appropriate and called for by the
White Paper. While most of the questions are appropriate. we believe the
main question is unasked. On the Internet, what is a famous mark?" Will you
be preparing a report on how to define a famous mark. Could you also provide
me with some additional info on your comments below. I was going to write
you personally, but I figured I will kill two birds with one stone :)

We also request that WIPO expand this section to include questions about the
role of existing treaties and agreements outside of WIPO, including GATT and
WTO treaties, and how famous marks have been defined and limited. These
existing agreements are very important, and WIPO is in a unique position to
collect, review and evaluate them.

If you have access to the relevant portions of these agreements I would
appreciate reviewing them personally. Why do you think these are so
important?

Thanks

Mike


-----Original Message-----
From:	KathrynKL@aol.com [mailto:KathrynKL@aol.com]
Sent:	Friday, November 26, 1999 7:22 PM
To:	mpalage@infonetworks.com; wg-b@dnso.org
Subject:	Re: [wg-b] US Statutorily Protected Marks

I am surprised to find this Working Group moving forward with researching
protection for NONCOMMERCIAL ORGANIZATIONS such as Federal Parks and Veteran
Associations, etc.  If anyone is looking for a starting point for protection
of Famous Commercial Marks, I think you are looking in the wrong place.

The Courts with jurisdiction over the statute below specifically reject this
type of broad, "across the board" protection for COMMERCIAL MARKS.  These
Courts find such commercial protection to be a "commercial monopolization of
language" -- far beyond the scope of the class of goods and services
protected by the registered trademark.

Our goal -- at least in the UDRP -- has always been to reflect law, not make
it.  If this working group goes forward with commercial protection
resembling
the noncommercial protection below, you are Making Law.

I further predict that if we move forward in this direction, the courts will
strike down our commercial protection with the scope below quickly and
cleanly and leave us (ICANN) looking very, very bad.

Kathryn Kleiman


<< 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
  >>