At 08:21 AM 1/24/99 -0700, Carl Oppedahl wrote: >At 10:23 PM 1/23/99 , Bill Lovell wrote: >>At 08:11 AM 1/23/99 -0800, you wrote: > >Yet another is that the trademark asserted under NSI's policy might be from >Australia or Vietnam or Ukraine, and thus be a trademark for which USPTO >has limited experience. Finally getting to this: True enough. If it were a U.S. trademark registration from another country, of course U. S. law would apply (in a regular trademark case). If, on the other hand, it were a mark having a legitimate trademark in the foreign country, a foreign registered domain name, there is a 'famous' U. S. mark, the web page (obviously!) shows up on U. S. browsers, what's a fella to do? But I'm saying we figure out how to resolve intracountry TM v. DN disputes first -- teach everyone to adopt the Colgate-Palmolive model? -- and then turn to intercountry. Solving the former may present a way of solving the latter. > >The best solution of course is for NSI to return to its pre-July-1995 >policy, namely RFC 1591. Yes, that too. > >Under RFC 1591 (still followed by many of the top-level-domain registrars >of the world) the role of the registrar is limited to putting the two >parties into contact with each other, and otherwise getting out of the way. > And if either party is unhappy, it can go to regular court. > >The disadvantage (assuming the trigger was an NSI challenge) is that the >trademark recognized by NSI as reason for cutoff of the domain name may >have been from Ukraine or Vietnam or wherever ... and the USPTO isn't >particularly experienced with such a trademark. Also true; see above. > >There are many nice things about regular courts. (1) the courts operate on >an open record. This means that anyone who wonders whether the court is >acting fairly can simply look to see what the court did in previous cases. >NSI conducts its deliberations in secret. (2) courts listen to both sides >of the story. NSI makes its decision without hearing the domain name >owner's side of the story, and indeed without telling the domain name owner >of the decision until after NSI has made the decision. (3) if a >preliminary remedy is to be given, the court requires that a bond be posted >by the party seeking the preliminary remedy. NSI requires no such bond. >(4) courts are quite experienced with disputes involving more than one >country and can deal with it. NSI has repeatedly shown its ignorance of >trademark law in countries outside of the US, in the language of its policies. > >Now the USPTO has many of the same advantages of courts, true. But people >who have trademark gripes with toothpaste packages don't go to the USPTO, >they go to courts. I can't see why domain names are so special that they >need different treatment than toothpaste packages. They don't. What I'm saying is that the interference process in the USPTO could be applied to both; current CFR has the process limited to special cases -- I don't remember the exact wording, and don't have it immediately available -- but I see no reason why a trademark interference should be any more difficult than a patent interference, and no doubt easier. A patent interference I would say is cheaper than a patent suit, and so I'm suggesting that the same would apply to the trademark case. In other words, the USPTO would have to cut some more slack on trademark interferences, and the guy with a toothpaste fight (who was not so wise as Colgate-Palmolive's counsel) would need to be educated that the option was available. Bill Lovell > __________________________________________________ To receive the digest version instead, send a blank email to [EMAIL PROTECTED] To SUBSCRIBE forward this message to: [EMAIL PROTECTED] To UNSUBSCRIBE, forward this message to: [EMAIL PROTECTED] Problems/suggestions regarding this list? Email [EMAIL PROTECTED] ___END____________________________________________
