At 10:25 PM 7/5/99 -0700, you wrote:
>
>> Ah, the answer: Mr. Kent Crispin has been caught out blathering legal
>> nonsense,
>> and is looking either to find a scapegoat or change the subject.
>
>The legal stuff I was referring to came from Mr Craig McTaggart, on
>July 3:
>
Gotcha! NOW Mr. Kent Crispin has been caught out making sense!
That is FORBIDDEN to engineering wonks, and I hope you've learned
your lesson.
> [...]
>
> And here's another one: you don't own your trademark either. You
> hold certain rights, recognized by courts with respect to common
> law trademarks, or granted by the state under statute with respect
> to registered trademarks. If you stop using your trademark, or if
> you don't renew the registration for it, or if the registration is
> expunged, you may cease to hold those rights. It is not a matter
> of 'owning' a trademark. It is a matter of holding certain rights
> in relation to a certain string of characters or distinctive design
> which are recognized or granted by public authorities.
Actually, all of the above is pretty much the law.
>
> Yes, trademarks appear to be capable of being 'bought' and 'sold',
> but what really happens in such a transaction is that the 'seller'
> promises to ask the registration authority to change the name of
> the registered holder to that of the 'buyer.' Nothing is actually
> bought or sold, but rather value is given in exchange for an
> apparent 'transfer' of the relevant rights. No property is
> transferred. _Rights_ are _assigned_. Very different.
>
>[...]
>
>Craig McTaggart claims to be a Graduate Student/Faculty of Law at
>the University of Toronto. That's another joke, Bill.
>
>> As for the
>> above
>> quote, "The claim was that this is not the case. The claim was, as I
>> recall, that
>> the USPTO can be somehow cajoled to transfer the registration, but that a
>> straight
>> sale is not possible," I've been following these threads for quite some
>> time, and
>> I can't recall anyone ever being dumb enought to advance that theory.
>
>You see the quote above, where it was advanced. Let me repeat it yet
>once more for your tired old eyes: "Nothing is actually 'bought' or
>'sold' but what really happens in such a transaction is that the
>'seller' promises to ask the registration authority to change the
>name of the registered holder to that of the 'buyer.'"
>
>I didn't look up the exact quote for my message, and it was just a 1
>sentence summary of what Mr McTaggart wrote. Perhaps I did not do it
>justice, but it isn't that far off.
But there are subtle distinctions. Trademarks can be "bought and sold"
as an accompaniment to the good will associated therewith. Chrysler
pulled off a masterpiece when it acquired the trademark "Jeep," and
what did it do with it? It commenced manufacturing Jeeps, one of which
is now owned in my family (not by me :-( ) and another of which will
be MY next car! The good will associated with the Jeep name is worth
a bundle.
In all of this, a part of the contract will be that the trademark registration
is transferred to the new owner, i.e., to Chrysler from . . . ? (It had,
of course,
been the Henry J. Kaiser Corporation, but I don't know if there were any
others in between -- maybe American Motors, I don't recall for sure.)
Patent, copyright and trademark ownership are all freely transferable
between parties, and if the parties are smart they will ensure that the fact
of the transference is recorded in the relevant agency. There is nothing
in the way of the USPTO being "cajoled" to do anything -- that is an
administrative body that registers what comes in the door if it meets
certain criteria established by law, and that's the end of it. Transfers
of title or assignments that do what they purport to do will, under
37 CFR 2.6(b)(6), and with a payment of $40, be recorded.
Trademarks, however, differ from the other two in that (a) they do not have
explicit protection in the U. S. Constitution; and (b) there are duties
associated
with the "ownership" of a trademark: the benefited party is not the "owner'"
but rather the general consumer public, in the assurance that when buying a
Jeep or whatever the product received will indeed have the qualities one has
been led to expect. That is the reason why there are duties placed on the
trademark "owner": that entity is charged with the responsibility of ensuring
that such quality is indeed maintained, that the trademark is not applied to
other (perhaps shoddy) goods, etc., so that the consuming public will in fact
get what it expected.
>
>Furthermore, it *is* true that at one time in the past you went into a
>rather forceful diatribe about how trademarks were definitely *not*
>property -- I can dig up the quotes to remind you of that, if you
>like.
No "forceful diatribe" -- I know what I wrote, and it will be much like I said
above. Trademarks are not property, as the case law states, because of
the distinctions I've just noted. Or put another way, to speak merely of the
"ownership" of a trademark is to leave out too much of the baggage that
comes with such "ownership" -- it is sloppy language.
>
>> The
>> USPTO
>> can't be "cajoled" into doing anything; if entities such as ICANN ever come
>> to be
>> as well and professionally managed, we shall all have cause to be
grateful.
>
>Whatever. I take "cajoled" as a poetic license rough synonym for
>"seller promises to ask the registration authority"...it is sad, but
>apparently not only are you humorless, but you have no poetry in your
>soul, either. Maybe being a distinguished IP attorney makes you
>give up on these human weaknesses...
No, it's a matter of your lack of re-reading and editing what you write.
Engineering wonks (Thanks, Diane! I love that phrase!) will be as meticulous
as can be in describing technical goodies, but will then throw caution to
the winds when trying to discuss something out of their fields, such as the
law. And we attorneys are experts in human weaknesses -- a famous
American pundit (who, if it was not Mark Twain, it should have been) once
remarked that the first duty of an attorney is to persuade his client to stop
doing all the damn fool things that the client is doing.
>
>:-)
>
>In any case, as I said in another message -- I don't really care if
>Mr McTaggarts theory applies to TMs or not -- that's something you
>lawyers can argue about. I was interested in the general reasoning
>applied to domain names.
Understood. I would respond if I could remember what the hell we were
talking about.
Bill Lovell
>
>--
>Kent Crispin "Do good, and you'll be
>[EMAIL PROTECTED] lonesome." -- Mark Twain
>
