Ed and all,
Ed Gerck wrote:
> Bruce I Yegelwel wrote:
>
> > Anyone:
> >
> > For interest, does any have an inclination as to whether a domain name
> > registered in the English language (such as dogs.com), and trademarked with
> > the USPTO for a USA and International Category, has any legal right to
> > contest registration of the same domain in another language such as german
> > (Hunde.com)? Please recall that both domains are registered in the USA
> > because they are .com. Would it make a difference if the german domain was
> > registered .com from a new registrar in Germany. Also would it make a
> > difference if the domain was Hunde.ca?
>
> Bruce:
>
> There is a simple anwer to this, as this happens all the time. But we need first
> to distinguish a trivial case, mentioned by you, and that is between a DNS
> registration (which is not a trademark registration by any means but may
> infringe upon it) and a lawful trademark registration -- which, likewise, does
> not connect you to the Internet ;-) but may conflict with a previous Internet
> DNS (the reverse-hijacking problem).
>
> Outside of those trivial cases, let me try to summarize.
>
> Suppose that "DOGS.COM" is registered with USPTO as a TM in the US and
> International, for a *specific* list of categories and time, then:
>
> 1. Within those jurisdictions, categories and time, "dogs.COM' is protected, as
> well as probably "DOG-S.COM" as well as any syntactically *derived* (attention:
> this *is* litigation matter, so it depends on courts, countries, time of
> issuance, actual usage, branding, etc) denomination, such as probably also
> "DOG.COM" (again, litigation mater)..
SO far for the most part here Ed is indeed correct as I indicated earlier,
but is somewhat incorrect to the extent of the jurisdictional issue (Countries)
in which Dogs.com and Hunde.com may conflict depending of course on the
classification that the TM was filed on each "Name" (e.g. Dogs and hunde
respectively) and not Domain name, (dogs.com and hunde.com) with
respect to their jurisdistiction, in this case Germany and the US. As these two
countries recognize each others Trademark registrations.
Though this seems like a fine point, it is none the less distinct, and
therefore important to the Domain Name holder in this example.
>
>
> 2. Outside of those jurisdictions (not all countries are in the *current*
> International Category as seen *from* the US -- ask the Taliban for example) and
> treatie's scopes (prior art or obscene language in another country are possible
> counter-examples), nope, the TM is not valid.
This is indeed correct as it may apply to Taliban, but given your example
it is not correct as it applies to Germany and the US.
>
>
> 3. Outside of those list of categories, nope, the TM is not valid. For example,
> if "DOGS.COM" was not registered in the US as a TM for a dancing team then that
> use is open. As another example, the BAYARD case I mentioned is both a Belgian
> TM for sport rifles and a Brazilian TM for sport shirts -- as ruled in
> litigation some 10 years ago (the fact that both are linked to Bayard families
> was not relevant for the decision, though).
An interesting point and comparison, but not relevant to the original question
here Ed.
>
>
> 4. Outside of that time, nope, the TM is not valid -- as when it expires and is
> not renewed.
As a flat statement, this too is incorrect as well as it is not enunciated
adequately in reference, and it's indirect reference as flatly stated is
or would be only true to Taliban, not the US or Germany.
>
>
> 5. Outside of that syntactic string with those noted direct "derivations", nope,
> the TM is not valid. But, note that this only makes sense in this order of
> 2,3,4 -- because if it is not in the jurisdiction, not in the category nor in
> the time, then nope, the TM is not valid without further ado even for "DOGS.COM"
> -- and, it is free to be registered, as given in each item above. So, the
> syntactic similarity is important only for the *same* jurisdiction, category and
> time -- for which "HUNDE.COM" as well as "PERO.COM", "CACHORRO.COM", "CAO.COM"
> etc are all open to further registration in the US and I believe that even
> "BITCH.COM" is allowed ;-) . BTW, that is why companies value so much
> "international" names when they trademark a product.
Except for the reference to the *same* jurisdiction reference that Ed makes
here, this comment #5, is essentially correct dependent on the classification
of the Tm that these referenced DN's might have.
>
>
> But, now it gets complicated ;-)
>
> The US notion of "famous" marks is not internationally accepted -- not even in
> neighboring Canada and not only in Quebec. A German mark such as "GIFTS.COM"
> would be linked to poison products if we correctly follow the German language --
> but such is not necessary even in Germany because "gifts" in the English meaning
> of presents is quite international and can probably be so used and trademarked
> in Germany or, Russia.
>
> For further discussion on TMs but focused on their relationship to the DNS
> issues please see [1], for which I am thankful for comments. See also Michael
> Froomkin's paper and Kathryn Kleiman's (URLs in [1]) for a focus on TMs
> themselves, as applied to DNS issues.
>
> Cheers,
>
> Ed Gerck
>
> REFERENCE:
>
> [1] http://firstmonday.org/issues/issue4_4/gerck/
>
> >
> >
> > -----Original Message-----
> > From: Ed Gerck <[EMAIL PROTECTED]>
> > To: [EMAIL PROTECTED] <[EMAIL PROTECTED]>
> > Date: Tuesday, April 20, 1999 9:30 PM
> > Subject: Re: What this is all about,was Re: take it outside boys (was "Re:
> > easyDNS claims thefollowing TLD's ")
> >
> > >Jeff Williams wrote:
> > >
> > >> Ed and all,
> > >>
> > >> Ed Gerck wrote:
> > >> > When people use dumbed-down sound bites like "some level of ownership"
> > they should notice that NO trademark is valid beyond its jurisdiction -- for
> > example, even a famous US trademark is not valid per se in Canada (yes, that
> > Canada and US NAFTA party). Thus,
> > >> > please read the not so dumbed down segment of my message above, where I
> > very clearly state:
> > >> >
> > >> > 'no one can claim to have a "right" over .can or .com, or any domain
> > outside of his own jursidiction -- whatever it may be.
> > >> >
> > >> > Next time, please just ask what you do not understand.
> > >>
> > >> I would suggest that you misunderstood the gist of my response Ed.
> > >> As has been posted on this an other lists and the EU amongst other
> > >> countries have stated publicly as of last month and the relevant
> > >> URL was posted to these lists as well, Jurisdiction of of little concern
> > >> with respect to TM's.
> > >
> > >You are, unfortunately, mistaken. For trademarks one must look not only for
> > country jursidiction but also business "jurisdiction" as well as time
> > "jurisdiction" -- see for example the trademark Bayard.
> > >
> > >Cheers,
> > >
> > >Ed Gerck
> > >
> > >
> > >--
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> > >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]
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