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Re: [wg-b] Reality checks [the grateful dead(hits)]
Hey, they know the law already. Among other times this has come up, I
posted this to the IFWP list back in June:
>Independent dealers who specialize in selling or servicing a particular
>brand of product are generally free to use the mark to truthfully inform
>the public of this fact, so long as the use does not cause confusion about
>the affiliation of the user with the owner of the mark. General Electric
>v. A-ALL Appliance Parts, 224 USPQ 1054 (1984).see Mobil Oil v. Mobile
>Mechanics, 192 USPQ 744 (`976) (MOBILE MECHANICS enjoined for auto repair
>shop).
>
>A third party may use a mark to refer to the owner of the mark, provided
>such use does not attempt to promote or capitalize on consumer confiusion or
>to appropriate the cachet of one product for a different one. Use is fair if
>it does not imply sponsorship or endorsement by the trademark holder. New
>Kids on the Block v. News America Publishing, 971 F.2d 302 (1992)
>(defendant's phone-in poll referred to pop group without falsely implying
>endorsement). See also the Joe Montana poster case.
>
>A seller of replacement parts may legally advertise that the parts are made
>to fit a trademarked product so long as the customer is not confused as to
>the source of the replacement parts. Piper Aircraft v. Wag-Aero, 553
>F.Supp. 136 (1982).
>
>A seller of replacement parts may not give the impression that the
>replacement parts are made or sponsored by the trademark owner. Id.
>
>With compatible products, excessive prominence of the original mark may
>cause confusion as to the source of the products. Plasticolor Molded
>Products v. Ford, 698 F. Supp. 199 (1988).
At 02:47 PM 12/14/99 -0700, you wrote:
>Independent Porsche repair shops may certainly advertise on their website
that
>they repair Porsche automobiles, but they should not be allowed to use the
>trademark "Porsche" in their Internet address as a source of their
services. If
>one accepts the ruling of the Eastern District of Virginia that “a domain
name is
>more than a mere internet address. It also identifies the internet site
to those
>who reach it, much like . . . a company’s name identifies a specific
company.”
>Cardservice International, Inc. v. McGee, 960 F.Supp. 737, 741 (E.D.Va.
1997),
>aff’d, 129 F.3d 1258 (4th Cir. 1997) (enjoining use of trademark
“cardservice,”
>“or any variation thereof, including but not limited to ‘csi’ or
‘csimall’”), one
>must also accept the proposition that it is not fair use to use a
trademark or
>variation of a trademark in a company name. Manny’s Porshop, 972 F.Supp.
at 1131
>(N.D.Ill. 1997) (enjoining use of “Manny’s Porshop” as a business name).
Accord
>Volkswagenwerk Aktiengesellschaft v. Brewer, 170 U.S.P.Q. 560 (D. Ariz.
1971)
>(use of “VOLKCITY SERVICE CENTER” enjoined); Volkswagenwerk
Aktiengesellschaft v.
>Karadizian, 170 U.S.P.Q. 565 (C.D. Cal. 1971) (use of “VOLKSWAGEN
VILLAGE” in
>name enjoined; usage not vitiated by use of the phrase “Used cars only;
not a
>franchised Volkswagen dealer). The FTDA “prohibits even innocuous use” of a
>famous trademark. Manny’s Porshop, 972 F.Supp. at 1132 (citing
Intermatic, Inc.
>v. Toeppen, 947 F.Supp. 1227, 1240 (N.D.Ill. 1996)). In short, it is not
“fair
>use” to use a trademark in a domain name. Brookfield Communications, Inc. v.
>West Coast Entertainment Corp., 1999 WL 232014, * 26 (9th Cir. 1999).
>
>In the real world we don't allow independent repair shops to use the
trademark
>"Porsche" in their business names or on signs, and we don't allow the
independent
>repair shops to list themselves under Porsche in the telephone
directories. The
>same rules should apply to the Internet. Thus, an independent repair shop
may
>advertise in an advertisement or on a website that "We repair Porsche
>automobiles," but shouldn't use one of the world's most famous trademarks to
>indicate the source for its services.
>
>
>KathrynKL@aol.com wrote:
>
>> HartmanS@Nabisco.com writes:
>> > For the sake of completeness, I would add that I can find nothing
improper
>> > on the face of it with Porsche objecting to porschebank.com or
>> > porschelynn.com, or the Academy objecting to theoscars.com. Nothing in
>> these
>> > domain name is a clear message.
>>
>> Based on your message, I fear you are setting an new standard for
protection
>> of marks. Rather than requiring the trademark owner to show infringement
>> (with the shorthand version being proof of "likelihood of confusion") or
>> rather than having the famous mark owner show dilution under by the Paris
>> Convention (shorthand version: that the diluter is using the mark on
>> "identical or similar goods"), you would like the trademark owner to show
>> only that someone is using "their word" and leave the burden of proof to
the
>> domain name holder to prove their innocence e.g, not infringing or
diluting.
>>
>> Such an approach is clean and easy, but it will create tremendous problems
>> with all the independent Porsche Repair Garages and with independent Oreo
>> distributors. Under law, they have rights to use even famous marks and
even
>> in commercial settings. Needless to say, it creates tremendous
problems for
>> free speech by making someone the monitor upfront for what is a legitimate
>> communicative message using the word "oreo" or "porsche" in it.
>>
>> Also, the approach is not consistent with the equities built into current
>> law. The burden of proof, and the showings, under both sovereign laws and
>> treaties, rests with the trademark owner.
>>
>> Kathy Kleiman
>>
>> >
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