RE: [wg-b] US Statutorily Protected Marks

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

Actually, the point is made yet further, that only a government agency can
get away with this type of filtering. In the USA, one has to have explicit
permission to sue a goverment agency. For all intents and purposes, this
makes them immune from litigation, except for some very persistent and
expensive class-action suits. These suits take *years* just to get the
required permissions.

The point is that the US PTO is a trademark registry, it is ALSO a US
government agency, under DOC (aka DOC/PTO). As such, it can filter with
impunity, being practicably immune from litigation.

This same circumstance does NOT apply to a DNS registry unless it is run
under USG contract, to a USG agency, such as NSI. In fact, recent case-law
has been excersized such that there is actual judicial opinion defending NSI
filtering, based on exactly this precept. NSI was not held responsible
BECAUSE it was working as a contractor to DOC/NTIA, a USG agency.

As this becomes shifted to ICANN, this protection will no longer exist. I
spoke to Phil Sbarbaro last Friday and he indicated that NSI is actually
considering dropping ALL filtering, in DNS registration systems, due to this
reasoning. The point is that filtering is not defensible, in the US, by a
non-government agency.

WRT US Statute protection for marks, it is a congressional directive applied
exclusively to DOC/PTO and has no jurisdiction beyond that. Were someone, in
Mexico, to operate a Smokey Bear web-site, under MX, the USG could do
nothing about it.

> -----Original Message-----
> From: owner-wg-b@dnso.org [mailto:owner-wg-b@dnso.org]On Behalf Of
> Harald Tveit Alvestrand
> Sent: Friday, November 26, 1999 1:47 PM
> To: mpalage@infonetworks.com; wg-b@dnso.org
> Subject: Re: [wg-b] US Statutorily Protected Marks
>
>
> At 14:41 25.11.99 -0500, Michael D. Palage wrote:
> >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
>
> Thank you - this makes the point that US statutorily
> protected marks do not
> necessarily meet the Paris/TRIPS criteria for "famous marks" more
> eloquently than any logical argument!
>
> "Smokey Bear" indeed!
>
>                       Harald A
>
>
> --
> Harald Tveit Alvestrand, EDB Maxware, Norway
> Harald.Alvestrand@edb.maxware.no
>