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Re: [wg-c] Choosing the intial testbed



IAL, IAL, etc.


Bear in mind that the extract from PTO policy below refers to the use of
the TLD suffix in relation to the provision of registration services.  The
registrar might in theory, provide XYZ brand services for (1) providing
registrations in the .xyz TLD; (2) web development; and (3) bubble gum.
The provision below will only refer to number (1) and those goods and
services deemed ancillary to (1) (and parties can fight over what is and
what is not related).  

So Network Solutions Inc., for example, could own a perfectly good
trademark in .COM for bubble gum and maybe web hosting, should they conform
with the other prerequisites of trademark ownership (or could own
trademarks relating to .com registrations if they disclaim rights in the
.com element).

As to an earlier comment that 2-99 is not law, well, it kinda is at this
point (more accurately it is dictum and as my remedies professor once said,
dictum, schmictum, you cite it).  In December the Trademark Trial and
Appeal Board in a case regarding the mark 1-800-MATRESS (sic) said that
2-99 took the correct view. As the appellate tribunal of an "expert
agency", TTAB decisions will be given deference in federal court.  No
federal court, to the best of my knowledge, has specifically ruled on
whether it would enforce 2-99 on this point.

by the way, if a company did obtain a trademark registration for the TLD
suffix for services surrounding (but not covering) domain name registration
services, another company would likely retain a fair use right to describe
its own services (example - company one has a registration for .XYZ for web
hosting, email and other internet-related services, company two could still
likely be able to say "Please buy our Company Two brand .XYZ registration
services."

If you allow multiple registrars, you tend to moot the "Can the TLD be
trademarked" issue.  If a company is given a legal right to be an .xyz
registrar (as in it becomes accredited), there will be an implied legal
right to state that they are a .xyz .tld registrar.

The .ibm hypo seems a little unlikely without IBM's consent.

So how you gonna pick TLDs?


At 11:20 AM 3/23/00 -0400, you wrote:
>
>Hi Bob,
>	Thanks for the reference. VERY useful.
>
>IANAL IANAL IANAL IANAL IANAL IANAL IANAL!!!!! However, I *can* read, :-)
>Some extracts:
>
>"Just as the average person with no special knowledge recognizes "800" or
>"1-800" followed by seven digits or letters as one of the prefixes used for
>every toll-free phone number, the average person familiar with the Internet
>recognizes the format for a domain name and understands that "http," "www,"
>and a TLD are a part of every URL. "
>
>"It is the perception of the ordinary customer that determines whether the
>asserted mark functions as a mark, not the applicant's intent, hope or
>expectation that it do so.
>See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960)."
>---(that is a great quote, because I read it as indicating that even if NSI
>---managed to get a piece of paper from the uspto saying that they had a
>---trademark on ".com", as the ordinary person doesn't consider that a brand,
>---then tough, no valid trademark).
>
>VERY IMPORTANT QUOTE FOLLOWS:
>"D. Marks Comprised Solely of TLDs for Domain Name Registry Services 
>If a mark is composed solely of a TLD for "domain name registry services"
>(e.g., the services currently provided by Network Solutions, Inc. of
>registering .com domain names), registration should be refused under
>Trademark Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, on the
>ground that the TLDwould not be perceived as a mark. The examining attorney
>should include evidence from the NEXIS® database, the Internet, or other
>sources to show that the proposed mark is currently used as a TLD or is
>under consideration as a new TLD.
>If the TLD merely describes the subject or user of the domain space,
>registration should be refused under Trademark Act §2(e)(1), 15 U.S.C.
§2(e)(1),
>on the ground that the TLD is merely descriptive of the registry services."
>---Hey, this seems EXACTLY what we have been looking for for a while now.
>---The answer to the question "can you TM a TLD?". Answer (if I read
>---correctly): NO
>
>That should clear up a LOT of mess wrt blocking by one particular company on
>the basis of holding a TM for the proposed TLD... (Hint: They state they
>have been authorized by IANA to operate).
>
>Yours, John Broomfield.
>
>> At 22:42 22-03-2000 -0500, Milton Mueller wrote:
>> > > a simple constraint for gTLD my be that they are *not* trademarkable
for
>> > > the purpose of being a gTLD.
>> 
>> Dear Milt:  I am commenting on your comment on Rick Wesson's comment on 
>> somebody else's comment;-}
>> 
>> I think you missed Rick's point, Milt.  At least it is my point that the 
>> USPTO has already ruled that a top level domain does not designate the 
>> source of the goods, it is only a part of an address.  An SLD may, under 
>> the right circumstances be trademarked.
>> 
>> Here is the reference:
>> 
>>                               EXAMINATION GUIDE NO. 2-99
>> 
>>                                        September 29, 1999
>> 
>>                 MARKS COMPOSED, IN WHOLE OR IN PART, OF DOMAIN NAMES
>> 
>>          http://www.uspto.gov/web/offices/tac/notices/guide299.htm
>> 
>> Regards, BobC
>> 
>> 
>> 
>> --------------------------------------------------------------------------
>> "I've sawed this board off three times, and it's *still* too short".
>> 
>> "Small choice between rotten apples."  Dr. U.B. Bray
>> 
>
>
>

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