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RE: [wg-b] US Statutorily Protected Marks



As to the marks protected as well-known marks by the Japanese:  One should
note that the only claim for these marks is that they are recognized as
well-known marks in Japan.  There is no implication, as far as I know, that
the marks are internationally well-known or even well-known regionally.

The standards that are used by the Japanese to establish that a mark is
well-known in Japan would perhaps be of interest to the members of  WG-B.
As far as I know, based on a briefing I had on the system almost two years
ago, the Japanese use two standards to establish that a mark is well-known
in Japan.  A mark will be considered well-known in Japan if 1) a court of
competent jurisdiction declares that the mark is well-known, or,  2) if the
owner of the mark has a certain number of defensive registrations.  (I don't
know what that number is.)

A defensive registration is one where the mark is registered for a type of
goods or services not produced by the mark owner. Only a few national
trademark systems have such registrations and the defensive registration
system has been generally disappearing from national systems.  The defensive
registration serves to keep anyone from registering the mark for the goods
or services listed in the registration.  As an example (this is purely
made-up and non-factual) IBM, whose principal goods and services would be
computer related,  could have defensive registrations for the mark IBM for
such things as key-chains, paper, greeting cards or automobiles.  The
Japanese tote up the number of such registrations and at a certain point
declare that the mark is well-known in Japan.

This is probably more than anyone wanted to know about the subject!  

> -----Original Message-----
> From:	mpalage@infonetworks.com [SMTP:mpalage@infonetworks.com]
> Sent:	Thursday, November 25, 1999 2:42 PM
> To:	wg-b@dnso.org
> Subject:	[wg-b] US Statutorily Protected Marks
> 
> Several participants have asked me about the list of statutorily protected
> marks under US Federal Law. The following is a "partial" list obtained
> from
> the Trademark Manual of Examining Procedure - Section 1900.
> http://www.uspto.gov/web/offices/tac/tmep/1900.htm
> 
> I have also recently completed a list of all 732 marks contained in the
> Japanese Well-Known Trademark on-line database. Although I will be
> including
> this as an appendix to my position paper, I will try to forward it to the
> list for the benefit of other individuals and organization writing their
> papers.
> 
> Some of these organization listed below, such as the Red Cross, the
> Olympics
> and the FBI, have already contact ICANN accredited registrars about
> installing filters to protect their famous marks.
> 
> Hopefully all my colleagues in the US are enjoying their Thanksgiving Day
> holiday.
> 
> Best Regards,
> 
> Michael D. Palage
> 
> 
> 
> Partial Listing of US Statutorily Protected Marks:
> 
>      American Ex-Prisoners of War 36 U.S.C. 2115
>      American Legion 36 U.S.C. 48
>      The American National Theater and Academy 36 U.S.C. 3305
>      American Symphony Orchestra League 36 U.S.C. 3416
>      American Veterans of World War II, Korea, and Vietnam 36 U.S.C. 67p
>      American War Mothers 36 U.S.C. 100
>      AMVETS (see American Veterans of World War II, Korea,
>      and Vietnam)
>      Big Brothers [and other names] 36 U.S.C. 895
>      Big Sisters [and other names] 36 U.S.C. 895
>      Blinded Veterans Association 36 U.S.C. 867
>      Blue Star Mothers of America, Inc. 36 U.S.C. 956
>      Board for Fundamental Education 36 U.S.C. 516
>      Boy Scouts of America 36 U.S.C. 27
>      Central Intelligence Agency 50 U.S.C. 403m
>      Central Liquidity Facility 18 U.S.C. 709
>      CIA (see Central Intelligence Agency)
>      Citius Altius Fortius (see Olympic)
>      Civil Air Patrol 36 U.S.C. 206
>      Coast Guard [and other names] 14 U.S.C. 639
>      Commodity Credit Corporation 15 U.S.C. 714m
>      DEA (see Drug Enforcement Administration)
>      Department of Housing & Urban Development
>      [and other names] 18 U.S.C. 709
>      Disabled American Veterans 36 U.S.C. 90h
>      Drug Enforcement Administration 18 U.S.C. 709
>      Fastener Quality Act 15 U.S.C. 5401
>      FFA (see Future Farmers of America)
>      The Foundation of the Federal Bar Association 36 U.S.C. 587
>      4-H Club [also specific reference to emblem consisting of
>      a green four-leaf clover with stem and the letter H in
>      white or gold on each leaflet] 18 U.S.C. 707
>      F.B.I. (see Federal Bureau of Investigation)
>      Federal Bureau of Investigation 18 U.S.C. 709
>      Federal Deposit Insurance Corporation [and other names] 18 U.S.C.
> 709
>      Federal Home Loan Mortgage Corporation 12 U.S.C. 1457,
>      12 U.S.C. 1723a
>      Future Farmers of America 36 U.S.C. 286
>      Geneva Cross (see Red Cross)
>      Girl Scouts of America 36 U.S.C. 36
>      Give a Hoot, Don't Pollute (see Woodsy Owl)
>      The Golden Eagle [also specific reference to insignia of
>      an American Golden Eagle (colored gold) and a family
>      group (colored midnight blue) enclosed within a circle
>      (colored white with a midnight blue border)] 18 U.S.C. 715
>      Government National Mortgage Association 12 U.S.C. 1723a,
>      18 U.S.C. 709
>      HUD (See Department of Housing & Urban Development)
>      International Olympic Committee (see Olympic)
>      HCFA (see Social Security)
>      Health Care Financing Administration (see Social Security)
>      Ladies of the Grand Army of the Republic 36 U.S.C. 78o
>      Library of Congress 36 C.F.R. 701.35
>      Life Saving Service (see Coast Guard)
>      Lighthouse Service (see Coast Guard)
>      Little League; Little Leaguer 36 U.S.C. 1086
>      Marine Corps 10 U.S.C. 7881
>      Medicaid (see Social Security)
>      Medicare (see Social Security)
>      The Military Chaplains Association of the United States of
>      America 36 U.S.C. 316
>      NASA (see National Aeronautics and Space Administration)
>      National Aeronautics and Space Administration
>      [also flags, logo, seal] 42 U.S.C. 2459b,
>      14 C.F.R. 1221.101,
>      1221.107
>      National Agricultural Credit Corporation 18 U.S.C. 709
>      National Conference of State Societies, Washington,
>      District of Columbia 36 U.S.C. 418
>      National Conference on Citizenship 36 U.S.C. 446
>      National Credit Union [and other names and acronyms] 18 U.S.C. 709
>      National Music Council 36 U.S.C. 676
>      National Safety Council 36 U.S.C. 477
>      National Society, Daughters of the American Colonists 36 U.S.C. 2909
>      National Society of the Daughters of the American Revolution 36
> U.S.C.
> 18c
>      National Women's Relief Corps, Auxiliary of the Grand
>      Army of the Republic 36 U.S.C. 1017
>      Naval Sea Cadet Corps 36 U.S.C. 1056
>      NCOA (see Non Commissioned Officers Association of the
>      United States of America)
>      Non Commissioned Officers Association of the United States
>      of America [and other names] 36 U.S.C. 4016
>      Olympiad (see Olympic)
>      Olympic [and other names] [also specific reference to (1) the
>      symbol of the International Olympic Committee, consisting
>      of five interlocking rings, and (2) the emblem consisting of
>      an escutcheon having a blue chief and vertically extending
>      red and white bars on the base with five interlocked rings
>      displayed on the chief] 36 U.S.C. 380
>      OPIC (see Overseas Private Investment)
>      Overseas Private Investment 18 U.S.C. 709
>      Paralyzed Veterans of America 36 U.S.C. 1160
>      Pearl Harbor Survivors Association 36 U.S.C. 3615
>      Peace Corps 22 U.S.C. 2518
>      Red Cross [and other names] [also specific reference to
>      the emblem of the Greek red cross on a white ground] 18 U.S.C. 706
>      Reserve Officers Association of the United States 36 U.S.C. 238
>      SSA (see Social Security)
>      Secret Service [and other names] 18 U.S.C. 709
>      Smokey Bear 18 U.S.C. 711,
>      16 U.S.C. 580p,
>      36 C.F.R. 261.20
>      Social Security [and other names, symbols and emblems] 42 U.S.C.
> 1320b-10
>      Sons of Union Veterans of the Civil War 36 U.S.C. 547
>      Swiss Confederation [with specific reference to the coat of
>      arms, consisting of an upright white cross with equal arms
>      and lines on a red ground] 18 U.S.C. 708
>      U.D. (see Secret Service)
>      USCG (see Coast Guard)
>      USCGR (see Coast Guard)
>      USMC (see Marine Corps)
>      USO (see United Service Organizations, Incorporated)
>      U.S.S.S. (see Secret Service)
>      United Service Organizations, Incorporated 36 U.S.C. 1307
>      United States Capitol Historical Society 36 U.S.C. 1215
>      United States Mint 18 U.S.C. 709
>      United States Railway Association 45 U.S.C. 711
>      United Spanish War Veterans 36 U.S.C. 56f
>      The United States Blind Veterans of the World War 36 U.S.C. 87
>      United States Coast Guard (see Coast Guard)
>      United States Olympic Association (see Olympic)
>      United States Olympic Committee (see Olympic)
>      369th Veterans Association 36 U.S.C. 3015
>      Veterans of Foreign Wars of the United States 36 U.S.C. 117
>      Veterans of World War I of the United States of America,
>      Incorporated 36 U.S.C. 777
>      Vietnam Veterans [and other names] 36 U.S.C. 3816
>      Woodsy Owl 18 U.S.C. 711a,
>      16 U.S.C. 590p,
>      36 C.F.R. 261.20
> 
> 
>