Re: [wg-c] Retraction of previous proposal

[Milton Mueller <mueller@syr.edu>]

Kevin:

Kevin J. Connolly wrote:

> The naked proposition that TM holders have
> to pay to protect their marks would suggest,

TM owners are responsible for the costs of *policing* their marks. That is,
registries and other parties have no affirmative duty to look out for TM
violations. It is up to the owner to identify them.

> 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.

Registering a domain name is not the same as registration of a trademark. A
trademark registration confers property protection; a domain name registration
simply secures a unique address. Whether a domain name conflicts with a
trademark depends upon how it is used. This cannot be determined at the time
of registration. If you want the highest level legal ruling on it, refer to
the Lockheed Martin decision: "contributory infringement doctrine does not
impose upon NSI an affirmative duty to seek out potentially infringing uses of
domain names by registrants."