Jennifer and all,
There has been much discussion and debate with respect to common law
trademark and Domain names as they relate to commerce. There is
some precedent for it as well. However there is also precedent against common
law Trademark and a domain name as well. Recently, January 16th,
I believe the USPTO provided for some reclassifications for Trademarks
for use in the internet, you might want to review them closely, for yourself.
It is none the less best to say that if you are going to use a Domain
Name in commerce you should trademark that domain as soon as possible,
after it has been in use for commercial purposes, as required by TM law
presently.
Jennifer Silverberg wrote:
> Jeff and all-
>
> I agree. To me, the Internet is the opportunity to have a meeting with a logical
>flow of
> ideas, and no one interrupting. ;-) Not to mention that we all can take the time to
> think through a statement as we write it, rather than fumbling around for the exact
>words.
>
> I'm new to this group, and I wonder if there has been any discussion on how the use
>of a
> domain relates to "first use" (which I think is a huge flaw in trademark law in the
>first
> place) with respect to gaining/opposing trademarks . For example, if I have the
>website
> appledumpling.com and later someone else wants to trademark appledumpling.com (or
>for that
> matter appledumpling), does my use of the site support a first-use opposition to
>their
> filing - of course assuming similar classes of commerce? This is assuming that I
>support
> commerce on the site, too - what if I sell advertising on the site - or not?
>
> I guess Nathan's comment about "common law trademarks" kind-of gets at this - but
>since a
> common-law trademark can provide first use protection, to me it seems to hold power.
>
> Jennifer
>
> jeff Williams wrote:
>
> > Jennifer and all,
> >
> > Thank you Jennifer for your praise. >;) Though I thought that Nathan's
> > was quite good as well. What is important here in my caveat/suggested
> > amendment to Nathan's suggestion was to insure that there is
> > fair and equitable competition in the market place without compromising
> > on stability to any great extent. An attempt at the best of both worlds,
> > so to speak.
> >
> > BTW, I felt that this was a very good but very small example of
> > how we can work together online... What do you think Jennifer?
> >
> > Jennifer Silverberg wrote:
> >
> > > Jeff (and all)-
> > >
> > > Super clarification. In fact, this is beyond a clarification - you have amended
>the
> > > statement to protect the individual/small company potentially under the assault
>of a
> > > larger company with deeper pockets, especially if the individual/small company is
> > > dependent on the site revenues throughout the challenge.
> > >
> > > Good catch.
> > >
> > > Jennifer
> > >
> > > jeff Williams wrote:
> > >
> > > > Nathan and all,
> > > >
> > > > Well stated Nathan. We agree. I would make one caveat to your last
> > > > comment/statement, you stated, " I don't believe the name should be taken away
> > > > in any circumstance other than significant infringement based on potential
> > > > customer confusion.", I would add, or possibly amend this by saying that,
> > > > no domain name should be impeded as to it's use ( read put on hold),
> > > > removed, or otherwise diminished in any fashion, unless or until there
> > > > it is clearly proven, in a court of law or decided by mutual agreement
> > > > of the litigants by any registry/registrar.
> > > >
> > > > Comments?
> > > >
> > > > Nathan James wrote:
> > > >
> > > > > I am not an expert, but here is what I know to be factual:
> > > > >
> > > > > In your example, the new trademark holder can have NSI put the name on hold
> > > > > without any consideration to the potential damage of the current holder of
> > > > > the domain. The current holder would HAVE to sue if they wanted to keep
> > > > > their name in operation. The trademark owner has the option to sue, but his
> > > > > case is not guaranteed. The current holder has a case, in court at least,
> > > > > because he has a common law trademark and has a legitimate interest
> > > > > continuing to use the name. His case is strengthened because he had a common
> > > > > law trademark before the other party. How the case will turn out is
> > > > > anybody's guess.
> > > > >
> > > > > Here's some opinion now: His domain name does not give him implied
> > > > > intellectual property. His business name and it's publication gives him a
> > > > > common law trademark, but not property. The court would have to weigh the
> > > > > strengths of the two trademarks and decide if they can co-exist without
> > > > > infringement or dilution.
> > > > >
> > > > > I do think that trade names and domain names should be protected from this
> > > > > kind of theft. I believe that the registered trademark owner should have no
> > > > > power to put the name on hold. I don't believe the name should be taken away
> > > > > in any circumstance other than significant infringement based on potential
> > > > > customer confusion.
> > > > >
> > > > > Nathan James
> > > > >
> > > > > ----------
> > > > > >From: "G. Ireton" <[EMAIL PROTECTED]>
> > > > > >To: [EMAIL PROTECTED]
> > > > > >Subject: Domain as related to trademark and property issues
> > > > > >Date: Tue, Mar 9, 1999, 7:09 AM
> > > > > >
> > > > >
> > > > > > Okay, so.. I have a question, pardon me if it is stupid.. I am learning.
> > > > > >
> > > > > > If I have a client that establishes a business name on the net by selling
> > > > > > services and or products under a specific name that is also the domain name
> > > > > > he has chosen to use, but does not protect the name by trademark would it
>be
> > > > > > possible for a person to trademark that name and then sue him for
> > > > > > infringement under the pretence that a domain is not property and does not
> > > > > > imply anything other than space? Is the implied intellectual property
> > > > > > enough? Should trade names in the startup phase of a business be protected
> > > > > > against this kind of 'theft'?
> > > > > >
> > > > > > G. Ireton
> > > > > >
> > > > > >
> > > > > > --
> > > > > > DOMAIN-POLICY administrivia should be sent to <[EMAIL PROTECTED]>
> > > > > > To unsubscribe send a message with only one line "SIGNOFF DOMAIN-POLICY"
> > > > > > For more help regarding Listserv commands send the one line "HELP"
> > > > > >
> > > > >
> > > > >
> > > >
> > > > Regards,
> > > >
> > > > --
> > > > Jeffrey A. Williams
> > > > CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
> > > > Information Network Eng. Group. INEG. INC.
> > > > E-Mail [EMAIL PROTECTED]
> > > > Contact Number: 972-447-1894
> > > > Address: 5 East Kirkwood Blvd. Grapevine Texas 75208
> >
> > Regards,
> >
> > --
> > Jeffrey A. Williams
> > CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
> > Information Network Eng. Group. INEG. INC.
> > E-Mail [EMAIL PROTECTED]
> > Contact Number: 972-447-1894
> > Address: 5 East Kirkwood Blvd. Grapevine Texas 75208
Regards,
--
Jeffrey A. Williams
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail [EMAIL PROTECTED]
Contact Number: 972-447-1894
Address: 5 East Kirkwood Blvd. Grapevine Texas 75208
