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

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

>>>> Milton Mueller <mueller@syr.edu> 08/05/99 10:21AM >>>
>
>
>Martin B. Schwimmer wrote:
>
>> Trademark laws act preemptively.
>
>But a domain name is not an application for a trademark. I thought that this
>distinction was obvious.
>

There is a significant and growing body of federal case law which treats
domain name registration as sufficiently similar to trademark registration
that a domain name is treated by analogy to trademark.

>> If I own a registration for EXAMPLE for
>> widgets, and a third party files an ITU application for EXAMPLE (or
>> something similar) for widgets (or something similar), the trademark office
>> will refuse registration, regardless of whether the applicant ever made
>> use.
>
>Again, you are talking about competing or conflicting *trademark
>applications.*We on this list are discussing domain name registrations.
>

The continued suggestion that domain names and trademarks are not related
concepts is not likely to win acceptance outside of a small circle of technocrats.
A domain name is not the same as a trademark.  But a domain name has enough
intellectual property content that domain name policy must be responsive to the
needs of the IP community.

>Whether a domain name registration conflicts with a tm application cannot and
>should not be determined prior to use.
>
That depends on the domain name.  There is no legitimate use for a domain name
that maps into a famous trademark.  Other trademarks' relationship to domain names
cannot be determined in advance of use; but there is a significant class of trademarks
which are absolutely preclusive of domain names being registered except by leave of
the trademark owner.  Coca-Cola is simply the most obvious instance of this rule.


>> So attacking registration "in advance of use" is not "well beyond trademark
>> law" but is in fact the universal norm.
>
>Nice try. Add to "universal norm" the words "in trademark registration" and you
>are correct.
>

The qualification I think needs to be read into this is that "in advance of use" applies
with respect to famous trademarks.  Outside of that August class of marks, the trademark
is not entitled to preclusion of domain names prior to use.

KJC

:include <yada>

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