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Re: [wg-b] US Statutorily Protected Marks

Ms Beresford, Lynne,

It might elucidate (i) where the participants on this list could best concentrate their efforts and (ii) what doesn't need to be done again as it didn't work last time, were you able to provide further illumination on the following areas:

(a) From your point of view (or that of the PTO), what were the structural flaws in the IAHC proposal with respect to trademark matters? Did these contribute to the derailment of that proposal?

(b) Should one understand from what you say below that it would have been hypothetically ok to register Sony and Hitachi in the US in 1948 as trademarks, say, but this is no longer the case, in the interim they have build their brands to (objectively determinable) famous status? Therefore the determination of  status will always be de facto, rather than de jure? That any putative list of famous service or trademarks will require continual revision and can only be predictive rather than authoritative?

Is the principle of mutual reciprocal recognition, found in 6bis, and extended in TRIPS, still intellectually appropriate for administering exceptions and exemptions on a global network? Can a case be made that the pragmatic test of 'well-knownness', for which there are complex and differentiated procedures, is too open to abuse, when the mark concerned can become globally famous through use of its (pirated?) domain ad interim?

What overlaps, if any, would you perceive between the work of the WTO IP and ecommerce committees and that of ICANN?

Your clarification is exceedingly useful and thank you for your courteous reply, although I did wonder about my parenthetic decapitation and decapitalization.

Yours sincerely,


"Beresford, Lynne" wrote:

Thanks to "measday" for the pertinent questions. First and foremost, I am
not representing the USPTO with the statements that I have made.  They are
my personal views only. To represent the USPTO, I would need to clear every
message and I have not done that.   I really resisted the impulse to make
comments on this list because I did not want to have anyone think that the
PTO was participating but I thought that some of the background information
I could supply might help further the debate.

As to the protection of well-known marks under 6bis of Paris and Article 16
of the TRIPs Agreement, the U.S. has met it requirements under Paris and
TRIPs e.g. the Trademark Trial and Appeal Board protected the mark "Cognac"
as a well-known unregistered common-law certification mark.  In general, the
obligation to protect well-known marks is an obligation to protect
unregistered  marks that are well-known in the country where protection is
sought  There is no obligation, for example, for the U.S. to protect a mark
that is well known in Japan if it is not well known in the United States.

Most industrialized countries belong to the Paris Convention and provide
protection to well-known marks.  They do so on the same basis as the U.S.
That is, each country protects a mark that is well-known within the country
even if it is not registered.

> -----Original Message-----
> From: measday@josmarian.ch [SMTP:measday@josmarian.ch]
> Sent: Saturday, November 27, 1999 3:25 AM
> To:   Lynne.Beresford@uspto.gov
> Subject:      Re: [wg-b] US Statutorily Protected Marks
> "Beresford, Lynne" wrote:
> > 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.
> Lynne,
> (i)  Should we assume that you are writing on behalf of the US PTO or
> giving a
> private opinion? Given your chairmanship of the original IAHC
> international
> process within the context of the WIPO debate at the time, it would be
> useful
> for wg-b to know (perhaps they do, in which case my apologies) whether
> they are
> engaging an official view or an off-hand opinion to aid Mike Palage in his
> sterling endeavours.
> (ii) Can we hope that you can provide not only the picture for Japan, but
> also
> on a multilateral basis for other advanced industrial economies such as
> Brazil,
> Korea etc.?
> (iii) I am a little confused as to the preamble in your statement.
> According to
> a naive reading of the Paris Convention for the Protection of Industrial
> Property (the Paris Convention), Article 6bis, section (1) of which
> provides as
> follows;
> "The countries of the Union undertake, ex officio if their legislation so
> permits, or at the request of an interested party, to refuse or to cancel
> the
> registration, and to prohibit the use, of a trademark which constitutes a
> reproduction, an imitation, or a translation, liable to create confusion,
> of a
> mark considered by the competent authority of the country of registration
> or use
> to be well known in that country as being already the mark of a person
> entitled
> to the benefits of this Convention and used for identical or similar
> goods.
> These provisions shall also apply when the essential part of the mark
> constitutes a reproduction of any such well-known mark or an imitation
> liable to
> create confusion therewith."
> there is an implication that, on the basis of reciprocity implied in the
> 6bis
> statement, US courts should in principle be bound by their international
> obligation to recognise famous marks from other countries. Insofar as the
> extended the Paris Convention coverage to service marks, largely at the
> behest
> of the US Government unless I have been incorrectly informed, one would
> assume
> that the Paris Convention is alive and kicking.
> If, however, the pragmatic position is, 'the only famous marks are US
> marks
> because we have never heard of yours and you have heard of foreign ones',
> then
> it might be interesting if you could subtly indicate it through some
> reference
> to US Court decisions repudiating the Paris Convention.
> Whilst it has always been the interest of sovereign nations to pursue
> their own
> interests, it would be extremely relevant to the proceedings of wg-b if
> they
> were made aware that, for example, the Paris Convention has been extremely
> narrowly applied throughout its history by national (both in the US and
> outside)
> courts' interpretation of the reciprocity feature and the nature of a
> famous
> mark above.
>  << File: Card for Mark R Measday >>

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