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

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

1.  Your analysis ignores dilution law and the Panavision case (the previos
poster did not limit his comment to infringement).  The general direction
of case law is not the opposite - Mr. Connolly's statement is correct.

2.  Your discussion of the PTO's standard for what constitutes a proper
specimen is inapposite.  The test for use of a mark for purposes of
registration with the PTO is a narrower standard than use under Sections
32, 43(a) and 43(c) of the Lanham Act (standards of use differ in other
countries as well).  That is why mere unauthorized reproduction of a mark
in an advertisement for goods may constitute infringemnt or dilution but
would not constitute an acceptable specimen of use for purposes of a
trademark application.



At 03:16 PM 8/9/99 EDT, you wrote:
>CONNOLLK@rspab.com wrote:
>> 
>>  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.
>
>Sorry to be a little out of phase with the pace of this discussion, but the 
>comment above by Kevin Connolly took me by surprise.  
>
>To the contrary -- the general direction of case law is the opposite and 
>judges are: 
>+   throwing off the proposal of NSI that a domain name was sufficiently 
>similar to a trademark to warrant suspension without any likelihood of 
>confusion
>+    and replacing it with a requirement that domain name use IN COMMERCE, 
>for goods and services must be shown -- traditional trademark infringement.
>
>For proof, look no further that the registration policy issued by the US 
>Patent and Trademark Office (which no one can claim is not savvy to these 
>issues):
>"In order to register an Internet domain name, an applicant must show that
it 
>offers services via the Internet. Further, specimens submitted in support of 
>the application to show use of the mark must show use of the Internet domain 
>name as a source identifier. ** The use of an Internet domain name as a mere 
>directional reference, similar to use of a telephone number or business 
>address on stationery, business cards, or advertisements, is not use of the 
>name as a source identifier. ** " (** added).  
>
>Source: Trademark examination of domain name policy, USPTO, 
>http://www.uspto.gov/web/offices/tac/domain/tmdomain.htm
>
>Kathryn Kleiman
>ACM's Internet Governance Committee
>
>

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