Re: [wg-c] Retraction of previous proposal

["Kevin J. Connolly" <CONNOLLK@rspab.com>]

>>> "Mark C. Langston" <skritch@home.com> 07/29/99 02:47PM  wrote:

>I'm afraid I must retract my previous proposal that would have the
>registries accepting TM strings for comparison against DB updates
>to police for infringement.

>I was unaware that TM law and legal precedent require the mark
>holders to absorb the cost of protecting their own interests, something
>which I initially suspected was true anyway.

>I was also unaware that there are existing businesses that provide
>this service to any TM/IP interest willing to pay to protect their
>marks.

>What I thought was compromise was in effect extra-legal.

I find this proposition remarkable.

It seems to imply that the "poison list" approach to famous 
trademarks is on some level unlawful

Since our purpose in this WG is to explore different patterns 
of thinking, I request that you provide not only with this conclusion 
but the basis for it.  The naked proposition that TM holders have 
to pay to protect their marks would suggest, for example, that the 
PTO should never reject an application to register a mark on the 
ground that a prior registration conflicts with the proposed registration; 
i.e., the PTO publishes everything in the Gazette and if you snooze, 
you lose.  Yet I seem to recall having heard that the PTO does in fact 
peruse marks offered for registration to see whether they conflict with 
existing marks.  So, I have a wee bit of trouble reconciling these 
propositions.

Besides, I can't imagine for a moment that the law on point is uniform in
all jurisdictions worldwide.

KJC

<as usual, please disregard the trailer>

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