Re: [wg-c] Do we need a TM law modification?

["Martin B. Schwimmer" <martys@interport.net>]

>So here's my proposal, and I think this idea is kicking around. Can the TM
laws be modified to clarify that failure to register a domain name
corresponding to a mark does not constitute failure to police a mark?

"Failure to police" is not the sole concern.   Third-party use of a mark
may either infringe or dilute that mark, and the failure to take action
agaisnt such use is damning evidence against that mark's strength and scope
of protection (the argument that the TM owner should be penalized because
of its lack of diligence is secondary). 

If TM owner for ACME for shirts doesn't take action against a party who
uses ACME for socks, then the party who uses ACME for shoes does not argue
that TM owner failed to police - it argues that (1) ACME is not
particularly distinctive and (2) the TM owner has impliedly admitted that
shirts and socks are unrelated, and therefore shirts and shoes must be
unrelated.

 The idea that evidence of a warehoused mark should not be admissible
regarding the strength of a mark is a compelling thought, however the
question is: how does the TM owner in fact ascertain that a mark is
warehoused, and not being used as an email address?

An alternative idea may be that if there were TLDs targeted at
non-commercial use - there could then be a presumption that any use would
not be infringing or diluting, and would not be admissible as evidence
which goes to the strength of the mark.



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