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RE: [wg-c] Branded TLDs
At 10:23 PM 10/5/99 -0700, you wrote:
>Please correct me if I am wrong. We now have a massive inequity codified
>as administrative law. A registry must be vulnerable to trademark
>holders yet can not hold a trademark itself. Do you realize the scenario
>here?
.
>
>NSI operates .COM for 10 years, Joe Scumbag attorney calls up one day
>and says that they registered a trademark, called .COM, and NSI has to
>cough up 30% of their revenue as a trademark license payment, or JS will
>file, and get, an injunction telling NSI to cease and desist use of the
>.COM TLD because it violates JS's trademark. NSI could not file TM on
>COM because of this silly ruling.
No, the PTO policy that a TLD suffix does not function as a trademark for
registration would not allow any entity to claim trademark rights in the
TLD (under the present legal environment). So Joe Scumbag attorney would
have to tell his client SCUMBAG DOMAIN REGISTRAR, that it cannot harass NSI
in the manner in which you describe. A registry could certainly hold a
trademark. NETWORK SOLUTIONS INC. would be an example of one such
trademark for registration services.
>
>This smells like some very old fish. It is not good news. Whomever wrote
>this was not thinking clearly. Lots of judges seem tobe saying the
>oposite, every time they put a domain name on hold for trademark
>violation. Becasue, if a TLD cannot be a trademark, then a domain name
>can not be one either. There is no functional difference between a TLD
>and any other domain name.
You're in this business so it would be presumptious of me to point out that
a TLD, functionally, is only one part of a domain name - the part that is
identical in every domain name in that TLD. The point of this policy is to
state that .com has the same TRADEMARK significance as INC. has in a
trademark or trading name, which is to say no trademark significance. This
practice is equivalent to stating that no company can register INC as a
trademark for incorporation services, and thus cannot prevent any other
company from incorporating company names which end in an INC.
>
>What do they say about a TM holder running a TLD using the same name? Of
>course, the TM was qualified before the registry was ever invented. Does
>the TM protection then pass on to the TLD? IMHO, this is a critical
>issue.
>
The policy indicates that the examiner can reject the application if there
is evidence that the mark is INTENDED to be used as a TLD. This would seem
to suggest that the pending CORE applications will be rejected to the
extent that they cover domain registration services. Of course CORE could
own the trademark .WEB for pretzels.
I posted this policy to WG-C because the policy implies the following:
under PTO practice (remember, the Federal Courts will be the arbiter in the
US on this point), trademark rights will not inure in the TLD suffix
itself, and therefore present trademark claims to any particular suffix as
of now are presumptively invalid.
DISCLAIMER - this is not intended as legal advice. Consult your own
scumbag attorney.
>> -----Original Message-----
>> From: owner-wg-c@dnso.org [mailto:owner-wg-c@dnso.org]On Behalf Of
>> Martin B. Schwimmer
>> Sent: Tuesday, October 05, 1999 11:45 AM
>> To: ga@dnso.org
>> Cc: domain-policy@lists.internic.net; wg-c@dnso.org
>> Subject: [wg-c] Branded TLDs
>>
>>
>> The US PTO has released Examination Guide No. 2-99, dated
>> September 29,
>> 1999 (I could not find it today at www.uspto.gov but I would
>> expect it to
>> be up shortly).
>>
>> Entitled "Marks Composed, In Whole Or In Part, Of Domain
>> Names," the entire
>> document is of interest to these lists. I note in particular:
>>
>> "Marks Comprised Solely of TLDs for Domain Name Registry Services
>>
>> If a mark is composed of a TLD for "domain name registry
>> services" (e.g.
>> the services currently provided by NSI of registering .com
>> domain names),
>> registration should be refused under Trademark Act Sections
>> 1, 2, 3 and 45,
>> on the ground that the TLD would not be perceived as a mark.
>> . . . If the
>> TLD merely describes the subject or user of the domain space,
>> registration
>> should be refused under Trademark Act Section 2(e)(1) on the
>> ground that
>> the TLD is merely descriptive of registry services."
>>
>> This would imply that .com could function as a trademark for
>> pretzels or
>> t-shirts, but not domain name registry services.
>>
>> I add that this is a PTO policy guide. The Federal Courts would have
>> ultimate authority to interpret the Lanham Act on this and
>> other issues.
>>
>>
>>
>>
>>
>>
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