Re: [wg-c] trademark law & new gTLDs

["Rita M. Odin" <OdinR@arentfox.com>]

Hi Mark,

I haven't read the Simon Higgs document, so I can't comment on that.  I can say that the International Classes were developed for registration purposes and are not, by themselves, determinative of the issue of the relatedness of the goods/services for purposes of the likelihood of confusion analysis employed the U.S. Patent and Trademark Office and U.S. Courts.  All countries in the Paris Convention* engage in some type of likelihood of confusion analysis, but the method of analysis (and the factors considered) differ from country to country. 

* for a list of the countries in the Paris Convention see WIPO's website at www.wipo.int. 

>>> Mark Measday <measday@ibm.net> 08/04 10:10 AM >>>
Hi, Rita,

Is that a specific US problem for US trademark lawyers to resolve?  Or are you saying that trademark classes themselves are inherently not susceptible to rational analysis and cannot be distinctly mapped to TLDs (e.g. as in the Simon Higgs document Kent refers to)? Apologies if this is an obtuse question.

"Rita M. Odin" wrote:

> Because: (1) the likelihood of confusion analysis does not depend upon the classification of the goods/services but, rather, upon the relatedness of the goods/services, which is a fact based determination (i.e., there can be a likelihood of confusion even if one party's goods are sunglasses, which are classified in IC 9 and the other party's goods are clothing, which are classified in IC 25.  These goods may be considered related in certain factual situations but may not be related in others) and (2) dilution can occur even if the mark is used on goods/services that are completely unrelated to the famous TM owner's goods/services.  See 15 U.S.C. § 43(c)(1).
>
> >>> Mark Measday <measday@ibm.net> 08/04 1:26 AM >>>
> Why isn't there an extended proposal mirroring tm classes then?
>
> Jonathan Weinberg wrote:
>
> >         I've been off-list for a few days, so I'm going to play catch-up just a
> > little.  There's been some discussion of the breadth of trademark law in
> > cyberspace and elsewhere.  As folks have pointed out before (and as the
> > WIPO report recognized), a rule that would allow a trademark owner to get
> > rid of a domain name including a string similar or identical to its
> > trademark would give the TM owner rights substantially *greater* than those
> > granted by meatspace trademark law.  That's because meatspace trademark law
> > gives registrants protection limited to particular goods and services, and
> > limited to particular locations.  "Ford" is a trademark for automobiles,
> > and the Ford Motor Company can stop anybody else from using that mark to
> > sell automobiles.  The Ford Motor Company can also stop other people from
> > using the mark to sell motor oil * even though that's a different product *
> > because consumers seeing "Ford Motor Oil" would likely be confused and
> > think that it came from the automobile manufacturer.  But the Ford Motor
> > Company can't stop somebody from using the mark "Ford" to identify a
> > fashion modeling agency (and indeed, there is a fashion modeling agency by
> > that name).  Trademarks are also limited geographically * Anheuser-Busch
> > has the exclusive right to use the "Budweiser" mark in the US, but a
> > different, and unrelated company, has the exclusive right to use the mark
> > in Hungary.  So a claim that a trademark owner has the right to control
> > every instance of www.trademarkname.sometld (even though, indeed, there may
> > be other folks using the same mark in other product lines or other parts of
> > the world), is a claim for substantially more expansive rights than that TM
> > owner has in meatspace.
> >
> >         OTOH, this isn't the trademark owners' fault.  It's valuable that
> > consumers not be confused when it comes to the origin of products, and the
> > fact is that consumers may be confused by a www.ford.com not in the hands
> > of the Ford Motor Company (although, come to think of it, other consumers
> > might be confused by a www.ford.com not in the hands of the modeling
> > company, and other (Hungarian) consumers might be confused by a
> > www.budweiser.com that *is* in the hands of Anheuser-Busch . . . ) The
> > problem is that consumers today tend to assume that www.foobar.com is
> > operated by whatever company named "foobar" they happen to be thinking
> > about at the moment.
> >
> >         What's the answer?  You got it * MORE gTLDs.  In meatspace, consumers cope
> > just fine with the fact that there are a lot of businesses named Acme.
> > They know about the various businesses; they don't expect any particular
> > Acme to be the particular one they have in mind; and they don't get
> > confused.  If consumers learned that there were a lot of different domains
> > on the web named www.acme.sometld, they wouldn't expect any particular one
> > to belong to Warner Brothers (which has a variety of U.S. registrations for
> > "acme") or to Jef Poskaner (who in fact owns the acme.com domain), or the
> > Acme Glass Company, or anybody else.  The mere existence of the domain name
> > would no longer be confusing.  Further, we can achieve this result without
> > regard to whether the new TLDs we add are "chartered," as Kent suggests, or
> > general-purpose.  (Now, if I have a domain named ford.biz, *and* I use
> > www.ford.biz to sell cars, then plainly people will be confused no matter
> > how many gTLDs there are.  That's trademark infringement.  But that's a
> > different case.)
> >
> > Jon
> >
> > Jonathan Weinberg
> > weinberg@msen.com 
>
> --
> _______________________________________________________________________
> Josmarian SA measday@josmarian.ch / measday@ibm.net 
> UK tel/fax: 0044.1273.474894 CH tel/fax: 0041.22.363.8800/1 FR tel/fax:
> 0033.450.20.94.92
> "Reality is an agreement between partners, preferably consensual, usually painful."
> Koskas Josmarian: unpublished letter,  1932
> ______________________________________________________________________