Bill Lovell
> >Okay, so the dent goes the *other* way. I always thought that, as the
> >holder of a registered trademark, I "owned" that mark. In what way do I not
> >own it?
> >
> Anything that can be "owned" is property. A trademark
> registration is more like a contract with the world: "for the
> opportunity to prevent others from using this mark, I promise to
> police it and make sure that no one else uses the same mark on the
> same goods and services, which could cause confusion amongst all
> you folk." ... The trademark imposes duties of
> performance that neither patents nor copyrights impose, and are only
> acquired (this is all U. S. law, of course) by ACTUAL USE of the
> mark in commerce; the trademark registration itself neither adds
> to nor detracts from whatever trademark "rights" might already exist
>
There seem to be three criteria: actual use, not merely descriptive,
and not *confusingly* similar to other marks. (See Levine et al,
below.) AFAIK, there is no legal definition of confusion (Im not
touching it either!), but isnt this the critical issue for domain-
identifiers? Cyberspace eliminates all other factors (geography,
sphere of trade) which have served to reduce confusion in the past;
can those cues be adequately embedded in a string of 64
characters if we suppose that only the first glance will count? Can
'tradespace' afford to squander the resource by tolerating one firm's
commandeering as many possible 'similar' names as possible?
When pizza-house differs from pizzahut not only by containing
several 'distinct' chr, but by number as well, or when .com is three
unique chr compared to .net, isnt the effect of that strategy simply
to *reduce the level of significance -- that is, increase the
likelihood of confusion for everyone -- rather than resolve it? Come
the day that I type in piezo-chit and still find a site claimed by
PHCorp, I think one could argue that they have diluted their own
mark.
Are names intrinsically purposeful, or do they only 'serve' a
purpose? Isnt the fundamental issue still whether a name is
simply a name, and holding a domain name is no different than my
having a personal name?
kerry, aka rose
=================
Date: Mon, 26 Aug 1996 08:07:53 -0500
From: Alan Lewine <[EMAIL PROTECTED]>
Subject: Cyberspace-Law #26: Trademark 1
To: Multiple recipients of list CYBERSPACE-LAW
<[EMAIL PROTECTED]>
CYBERSPACE LAW FOR NON-LAWYERS
[ authors: Larry Lessig, David Post, Eugene Volokh]
TRADEMARK 1: Overview and Definition
Summary and Overview: This unit will cover another species
of "intellectual property" law -- trademark law, the law
governing the use of "brand names" and other words or
symbols associated with goods or services. We'll look at the
law governing the use and misuse of these words and symbols,
along with the general guidelines concerning when it's
proper, and improper, to use a trademark that belongs to
someone else. Finally, we will cover the special kinds of
trademark issues that have arisen, and are likely to arise,
on the Net.
What is a trademark?
Coca-Cola. Velveeta. Microsoft Windows. Netscape. JiffyLube.
We have seen that copyright law does not, generally
speaking, cover individual words or short phrases. So, for
example, the Kraft Corporation cannot protect, under
*copyright* law, the word "velveeta"; it can't, that is,
claim that you are infringing its copyright in the word
"velveeta" if you use the word any way that you'd like --
you can call your next novel (or your Web page) "The
Velveeta Connection," if you'd like, or put "Better than
Velveeta" in you .sig file, or even call the cheese that you
sell "velveeta," and there's nothing that Kraft can do
*under copyright law* to stop you.
But that is not to say that there is *nothing* that Kraft
Corporation can do to restrict your use of this word.
Velveeta may well be a protectable trademark -- in fact, it
is a protectable trademark -- and as a result Kraft *can*
stop you from using that word in certain ways (but not *all*
ways) under trademark law.
First, what is a trademark? Words, symbols and designs,
sounds, distinctive colors -- virtually anything that can be
used to identify specific goods or services and distinguish
them in the market from other similar goods or services --
is *potentially* a trademark. But you can't eat potential,
as one sage put it -- to actually be protectable as a
trademark the word or symbol or whatever must fulfill three
basic criteria:
> 1. It must be in actual *use* as an identifier of particular
goods or services: you can't get a trademark in some great
new name you've come up with for your new product until you
actually start using that name to identify that product.
> 2. It has to be in some way distinctive, not what courts
call "ordinary" or "merely descriptive" or "generic": you
can't use trademark to protect the common name of your
product -- say, the name "Modems" for the modems you are
selling (because that is a generic term) nor the phrase
"Tasty donuts" (which merely describes the donuts).
> 3. Finally, the mark must not be "confusingly similar" to
anyone else's trademark that is already in use.
When are marks "confusingly similar"? When "reasonable
consumers" would be confused as to the identity of the goods
or services being labeled -- when they would associate
products or services together that in fact have no
association.
The use of the word "Ritz" for a brand of crackers can be a
trademark -- even though there is also a hotel chain that
uses the same name, because a reasonable consumer would
not
be confused into thinking that there was any association
between these two very different kinds of goods. Similarly,
Lexus is a protected trademark for a kind of automobile;
even though it is similar to the pre-existing "Lexis"
trademark used by the legal database supplier, it is not
*confusingly* similar because the reasonable consumer would
not think that a supplier of legal databases suddenly went
into the car manufacturing business (or at least that's what
a court has said). Lexus might, however, have had problems
if they were labeling not automobiles but, say, magazines;
the magazine market and the database market are a lot closer
together, and it would be a lot easier to argue that
consumers *would* associate the magazine with the database
because a similar name was used.
* * * * * * * * * * * * * * * * * * * * * *
Date: [11 Sep 1996]
From: Alan Lewine <[EMAIL PROTECTED]>
Subject: Cyberspace-Law #31: Trademark 6
To: Multiple recipients of list CYBERSPACE-LAW
<[EMAIL PROTECTED]>
CYBERSPACE LAW FOR NON-LAWYERS
Topic: TRADEMARK 6. Are Domain Names Trademarks?
[...]
The first rule of thumb is the easiest: if you're not trying
to associate a name with some goods or services that *you*
are offering to the public, you're almost certainly OK. You
can participate in a discussion group about the pros and
cons of Netscape (and use the Netscape trademarked name to
your heart's content), you can put up a Web page discussing
"The Ten Things I Love (or Hate) About Pizza Hut" and nobody
can claim that you are infringing Pizza Hut's trademark.
Remember that the touchstone of trademark infringement is
consumer confusion about the origin or source of goods or
services to ensure that consumers do not go to another pizza
restaurant ("Pizza House") thinking that they are going to
Pizza Hut. In other words, as long as you do not try to
attach a trademark that is already in use to some *other*
goods or services (thereby deceiving or confusing potential
consumers), you are generally safe.
