At 09:45 PM 1/21/99 -0500, you wrote:
>Case law in the USA, not in the entire world. As I recall, the law varies a
bit
>from country to country, no?
>--MM
>
>Martin B. Schwimmer wrote:
>
>> I would argue that the case law for likelihood of confusion analysis is
>> completely fleshed out. An entry level examiner at the US Patent and
>> Trademark Office is competent to render a preliminary opinion when
>> comparing two marks and their intended goods and services. Absence of
>> precedent is certainly not an issue if the DN steps forward and indicates
>> the area of intended use (as every tradmeark applicant in the world has to
>do).
Responding to this post rather than directly to Mr. Schwimmer's post since I
seem
not to have it, this is what I have just argued in the 9th Circuit:
"A more appropriate mode of operation for NSI (soon to be taken over by the
Internet
Corporation for Assigned Names and Numbers, "ICANN") would be to register
domain
names not otherwise taken and then leave the registration intact until a court
of
competent jurisdiction tells it otherwise."
While the theory suggested by Mr. Schwimmer looks good on its face, having seen
NSI deal with trademark issues I continue to hold with another view I have also
expressed, in less polite terms:
"NSI and ICANN should stay entirely out of areas that are quite beyond their
competence and leave that to those who are competent, i.e., to the United
States Patent and Trademark Office and analogous bodies in other countries."
As I also previously argued in a response to the NTIA paper (available on the
web
but I don't have the URL at the moment," the U. S. Code of Federal Regulations
has provisions within it for "arbitration" of trademark disputes very similar
to what
are called interference proceedings as to patents, wherein two parties have
invented
the same thing and the USPTO determines from the evidence who has priority.
The field of use would be relevant in a trademark case and could be competently
addressed in the USPTO; ICANN will simply not have the expertise.
As to the case law being "fleshed out," if that were true (e.g., as to NSI) I
would
not this very day be starting out on my third year in this one litigation --
ISS v.
Epix. Inc. And Dr. Mueller is quite correct in saying that the case law varies
from country to country -- what the USPTO resolves in the U.S. might have
been decided differently in another country, especially those that employ a
registration rather than a public use theory concerning how a trademark is
acquired. The best approach anywhere thus leaves different solutions around
the world, but as we all know, since the Internet encompasses the entire
world, there can only be one solution, whatever legal theory may be adopted.
The only way to get that "one solution" is through international treaty adopted
and adhered by COUNTRIES, not insular, pretentious little bureaucracies, in
the manner of a GATT or NAFTA, a WPO or the like. It is then that the little
bureaucracies set up the technical means and push around the paper.
Bill Lovell
.
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