Re: [wg-b] wg-b

["John Berryhill Ph.D. J.D." <john@johnberryhill.com>]

> on the list, to whom does it appeal this decision? On what is the decision
> based? Michael Palage talked about a
> combination of objective and subjective. How can you form a list if there
> has been no determination of the objective requirements? Or can you? Or
did
> you? We have never managed to define fame.

Factors constituting a "famous mark" for dilution purposes have been
developed in a number of legal decisions, and these factors are well known
to any trademark attorney.  There's no need to re-invent the wheel on what
constitutes a famous mark.  If any other definition is used, of course, then
that definition means nothing under U.S. law.  The holders of famous U.S.
marks will be suing under U.S. law.

Because several of the factors are not ascertainable without access to
proprietary information of the mark holder, the mark holders would have to
apply and provide the information (things like advertising budgets, revenue,
etc.).  Additionally, one will have to pay for and conduct consumer surveys.
Just obtaining the data needed to make a "fame" determination for a single
mark in litigation is an extensive undertaking.  If someone is proposing to
sit around in a comfy chair with a bowl of popcorn and make these
determinations on their own from among the over two million U.S. registered
marks, and if that someone thinks they are doing something that won't get
them sued, they are dreaming.

Otherwise, the list is entirely meaningless in terms of how "fame" has been
defined in U.S. case law, and the holders of actual "famous marks" are going
to be very upset by a process which does anything other than to determine
with perfect accuracy which marks will be found by a U.S. court to be
famous.  You only need to miss one in order to have a lawsuit.

Mr. Palage has proposed that such a list is needed in order to protect
registrars from liability, but neither Mr. Palage nor anyone else is able to
explain how this list will protect anyone from liability.  It is simply to
believed to be true because someone convinced Mr. Palage it is true.  I
don't know what his legal qualifications or trademark experience are.   In
the absence of any legal justification for this voodoo, just tell me where
to send the list of my clients' marks and the names of the people to sue if
my clients' marks don't end up on the final list.  There's going to be
liability - of that much we can be certain.

John Berryhill, Ph.D. J.D.
Philadelphia, Pennsylvania