At 10:50 PM 2/10/99 -0500, [EMAIL PROTECTED] wrote:
>
>>Why to TM attorney's always ignore the administrative portion of the name
>>(the TLD), in their suits? Is there some issue with trademark law that
>>requires them to do this? If there is no such requirement then why do it?
>>What is to be gained?
>>
>
>I'm writing to you directly because I can't post to the list from my home
>machine.
I am assuming then that I can post this reply to the list thread. This is
good stuff!
>First off - remember, the test of trademark infringement is confusing
>similarity, not identity. Does the use of defendant's mark create a
>likelihood of confusion with plaintiff's mark. A multi-factorial test is
>used. The three most importantant factors are similarity of the marks,
>similarity of the goods and similarity of the channels of trade.
>
>Similarity of the marks can be sight, sound or meaning. So N-R-G may be
>deemed to be identical to ENERGY. POWER may be similar to POWDER if people
>buy that product in a hurry and don't read the label quickly. FOREST
>STREAM may be similar to TIMBER CREEK. It depends on the circumstances.
>
>I completely acknowledge that the trademark legal system is completely
>different from a telecommunications addressing system at this point, where
>addressing merely needs uniqueness, and allows for the coexistence of
>nma.com and nma.org.
>
>But the wetware always trails the software. A computer keeps forest.com
>separate from timber.com. A human dimly remembers that the cool site they
>heard about has something to do with trees.
>
>When looking at whether two marks are similar the court will look at the
>DISTINCTIVE elements within the marks. Descriptive elements will not be
>given as much weight. So GENERAL MOTORS CORP. will be deemed to be similar
>to GENERAL MOTORS LTD. or GENERAL MOTORS CARS or GENERAL MOTORS SYSTEMS,
>because corporate naming words such as CORP. or LTD. and descriptive words
>such as CARS and SYSTEMS do not distinguish. In contrast, XEROX MOTORS
>SYSTEMS will have a different connotation and will not be similar to
>GENERAL MOTORS SYSTEMS because the dominant element of the two marks are
>different (XEROX and GENERAL).
>
>Now, when you say "TM lawyers ignore the TLD in suits" I assume you mean,
>why would the plainitff's lawyer argue that nma.com is confusingly similar
>to nma.org in a suit. The defendant's lawyer would argue that .org is in
>fact a distinguishing element.
>
>So is the TLD name a non-distinctive element like a corporate naming word
>or is a distinguishing element?
An example closer to your meaning would be
1) MHSC.COM
2) MHSC.NET
3) MHSC.ORG
We own the first two and someone else owns the third. MHSC.ORG is NOT a
competing business. In four years, there has not been a conflict. Also,
APACHE.ORG, APACHE.NET, and APACHE.COM, which are all three different
organizations, not inter-related.
I would argue that the TLD *is* a distinguishing element. In court, does a
technical argument win any merit? Or, is it strictly based on wet-ware
terms/context? I think I am seeing part of the problem, in that, computers
are more discerning than humans. The problem is that fuzzy addressing is
not technically workable, RealNames not with standing. Certainly not on the
scale the Internet works on.
>This is a question of fact. Defendant would have to establish that .org
>means something to people and that people would not believe that the same
>entity would own the .com and .org version of the DN.
>
>Plaintiff's lawyer would show evidence of the commercial usage of the .org
>TLD, and show evidence of parties who won and utilize both TLDs. The
>lawyer might take a survey showing that people believed that in the
>context, there was a connection between nma.org and nma.com.
>
>btw, the strength of the mark may affect the analysis - red-cross.com vs.
>red-cross.org may be different than nma.org vs. nma.com.
>
>Now I think that this is a problem, and in my WIPO submission I stated my
>belief that in the present circumstances - .org no longer signifies what
>was intended in RFC 1591, As we are all aware, NSI no longer enforces the
>structure. This erosion aids the plaintiff in the above case, who can
>argue that people will not conclude that there is no way nma.org is
>associated with nma.com, because the distinction between .org and .com had
>been blurred.
>
>I would suggest that enforcing the "charter" of a TLD will allow the TLD
>itself to distinguish. In that scenario, people will conclude that there
>is no way that nma.org is connected to nma.com, and thus the use of the two
>DNs are not confusingly similar.
>
>OK, that was the example with acronyms (which are not particularly
>distinctive) - what about microsoft.com and microsoft.org.
My daughter has a high-school buddy that wants to start a software company
called "smallsoft". By your argument then this would constitute a conflict?
___________________________________________________
Roeland M.J. Meyer -
e-mail: mailto:[EMAIL PROTECTED]
Internet phone: hawk.lvrmr.mhsc.com
Personal web pages: http://staff.mhsc.com/~rmeyer
Company web-site: http://www.mhsc.com
___________________________________________________
KISS ... gotta love it!
