Marty--
Let's not forget the GOPED case, which is well-served by Bob Cumbow's
abstract at
<http://www.perkinscoie.com/resource/ecomm/netcase/Cases-08.htm>:
>>"Patmont Motor Works Inc. v. Gateway Marine Inc., 96-2703 (N.D. Cal.
12/18/97): Use of another's trademark in the non-domain name portion of a
Web site url is a "nominative fair use" that does not give rise to a
likelihood that consumers will be confused as to the source of the Web
site's content. Defendant dealer had agreed not to use plaintiff's "Go-Ped"
motor scooter trademark "in any email address, or any key word designation
on any Internet server." When dealer used the term in the url of a back
page of his Web site -- "www.idiosync.com/goped" -- Patmont sued, alleging
trademark infringement; but the court found that: "The text that follows
the domain name in a URL -- in other words, the text that comes after the
slash -- serves a different function" from that of a domain name. "Nothing
in the post-domain path of a URL indicates a Web site's source of origin,
and [plaintiff] has cited no case in which the use of a trademark within a
URL's path formed the basis of a trademark violation." Opinion at:
http://www.Loundy.com/CASES/Patmont_v_Gateway.html"
Some of the defendants in Porsche v. Porsch.com may cite this case as
authority that use of PORSCHE or variations of the mark in the domain name
itself are a fair use, but that is not what the case says.
Best regards,
--Fred
Frederic M. Wilf
Intellectual Property & Technology Law
Email [EMAIL PROTECTED]; URL http://www.saul.com/laywers/5082.html
Saul Ewing Remick & Saul, 1055 Westlakes Drive, Berwyn, PA 19312, U.S.A.
______________________________ Reply Separator _________________________________
Subject: Re: [Fwd: [ifwp] NSI Domain Name Dispute Stats]
Author: [EMAIL PROTECTED] (Martin B. Schwimmer) at INTERNET
Date: 2/2/99 6:48 PM
Yeah, let's play the home version of the law game.
Without a knowledge of the pre-existing law, it's just a popularity contest
about Porsche. The following is a quick list of the some of the law
perhaps relevant to a US analysis of these DNs. Foreign law varies on some
of these points. McCarthy's is a good source on this. Also a book called
"The Use of Another's Trademark" by Burshtein and others.
Of course you would want to know how the DN owners are using the DN, what
relationship they may or may not have to Porsche, other factors that are
not available to our contestants.
btw, when doing your 43(c) dilution analysis, keep in mind that PORSCHE is
not JUNO. I believe there were four or five third parties who had federal
registrations for JUNO.
There are zero third parties who have federal registrations for PORSCHE.
Here goes:
Independent dealers who specialize in selling or servicing a particular
brand of product are generally free to use the mark to truthfully inform
the public of this fact, so long as the use does not cause confusion about
the affiliation of the user with the owner of the mark. General Electric
v. A-ALL Appliance Parts, 224 USPQ 1054 (1984).see Mobil Oil v. Mobile
Mechanics, 192 USPQ 744 (`976) (MOBILE MECHANICS enjoined for auto repair
shop).
A third party may use a mark to refer to the owner of the mark, provided
such use does not attempt to promote or capitalize on consumer confiusion or
to appropriate the cachet of one product for a different one. Use isfair if
it does not imply sponsorship or endorsement by the trademark holder. New
Kids on the Block v. News America Publishing, 971 F.2d 302 (1992)
(defendant's phone-in poll referred to pop group without falsely implying
endorsement). See also the Joe Montana poster case.
A seller of replacement parts may legally advertise that the parts are made
to fit a trademarked product so long as the customer is not confused as to
the source of the replacement parts. Piper Aircraft v. Wag-Aero, 553
F.Supp. 136 (1982).
A seller of replacement parts may not give the impression that the
replacement parts are made or sponsored by the trademark owner. Id.
With compatible products, excessive prominence of the original mark may
cause confusion as to the source of the products. Plasticolor Molded
Products v. Ford, 698 F. Supp. 199 (1988).
The heart of dilution, as distinguished from unfair competition (which is
tested by likelihood of confusion) is the destruction of the selling power
of the mark. Deere & Co. v. MTD, 41 F.3d 39 (1994).
ok, porschecar.com, let's see . . .
<snip>
