Re: [wg-c] Choosing the intial testbed

[John Charles Broomfield <jbroom@manta.outremer.com>]

Hi Bob,
	Thanks for the reference. VERY useful.

IANAL IANAL IANAL IANAL IANAL IANAL IANAL!!!!! However, I *can* read, :-)
Some extracts:

"Just as the average person with no special knowledge recognizes "800" or
"1-800" followed by seven digits or letters as one of the prefixes used for
every toll-free phone number, the average person familiar with the Internet
recognizes the format for a domain name and understands that "http," "www,"
and a TLD are a part of every URL. "

"It is the perception of the ordinary customer that determines whether the
asserted mark functions as a mark, not the applicant's intent, hope or
expectation that it do so.
See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960)."
---(that is a great quote, because I read it as indicating that even if NSI
---managed to get a piece of paper from the uspto saying that they had a
---trademark on ".com", as the ordinary person doesn't consider that a brand,
---then tough, no valid trademark).

VERY IMPORTANT QUOTE FOLLOWS:
"D. Marks Comprised Solely of TLDs for Domain Name Registry Services 
If a mark is composed solely of a TLD for "domain name registry services"
(e.g., the services currently provided by Network Solutions, Inc. of
registering .com domain names), registration should be refused under
Trademark Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, on the
ground that the TLDwould not be perceived as a mark. The examining attorney
should include evidence from the NEXIS® database, the Internet, or other
sources to show that the proposed mark is currently used as a TLD or is
under consideration as a new TLD.
If the TLD merely describes the subject or user of the domain space,
registration should be refused under Trademark Act §2(e)(1), 15 U.S.C. §2(e)(1),
on the ground that the TLD is merely descriptive of the registry services."
---Hey, this seems EXACTLY what we have been looking for for a while now.
---The answer to the question "can you TM a TLD?". Answer (if I read
---correctly): NO

That should clear up a LOT of mess wrt blocking by one particular company on
the basis of holding a TM for the proposed TLD... (Hint: They state they
have been authorized by IANA to operate).

Yours, John Broomfield.

> At 22:42 22-03-2000 -0500, Milton Mueller wrote:
> > > a simple constraint for gTLD my be that they are *not* trademarkable for
> > > the purpose of being a gTLD.
> 
> Dear Milt:  I am commenting on your comment on Rick Wesson's comment on 
> somebody else's comment;-}
> 
> I think you missed Rick's point, Milt.  At least it is my point that the 
> USPTO has already ruled that a top level domain does not designate the 
> source of the goods, it is only a part of an address.  An SLD may, under 
> the right circumstances be trademarked.
> 
> Here is the reference:
> 
>                               EXAMINATION GUIDE NO. 2-99
> 
>                                        September 29, 1999
> 
>                 MARKS COMPOSED, IN WHOLE OR IN PART, OF DOMAIN NAMES
> 
>          http://www.uspto.gov/web/offices/tac/notices/guide299.htm
> 
> Regards, BobC
> 
> 
> 
> --------------------------------------------------------------------------
> "I've sawed this board off three times, and it's *still* too short".
> 
> "Small choice between rotten apples."  Dr. U.B. Bray
>