RE: 60 day thought

[Robert Frank <bobf@corsearch.com>]

In response to the below posting:

No.  When you agree to submit a trademark application to the USPTO,
you agree to abide by their rules one of which is that there is a period of
posting and opposition.  Those opposing have an opportunity to
express their concerns prior to the proposed mark being registered, and
avail themselves of the TTAB which is generally faster and less
expensive than the courts. If you miss the opportunity to file your
opposition (30 days from publication) you have to go to the courts.

IMHO, I believe that if you remove the publication and opposition
provisions you will have several adverse repercussions.  First, 
attorneys will be monitoring domain name registrations like crazy.
Everyone's fear is finding their TM registered in 7 (or 50) different places.
This was made quite clear at the Harvard workshop and several
other meetings.  I know it first hand because I deal with these
people *every day* and discuss this matter with them all the
time.  Second, I think you will find court actions all over the place.
Sue now, ask questions later.  When a company finds its most
famous TM registered somewhere else they are going to hit the
courts without checking out the intended usages, etc., especially
of the offender is "using" the mark on the net.  With a posting
and opposition period it gives the owner of the TM and their counsel
a chance to investigate and think about what to do.  Companies that
I deal with generally have no hard and fast rules to that apply to all
perceived infringements.  I suspect (with no knowledge to base this
on) that Pillsbury would be a bit more concerned about pillsbury.food
than pillsbury.cars IF they had the time to _discover_ that pillsbury.cars
was applied for by Joseph Pillsbury who owned a car dealership
called Pillsbury Motors.  However, applied to marks thought to be
more "famous" such as Marlboro or Kodak or Toyota, then I suspect
we might find a different approach.

The above comments are purely my own and reflect absolutely
no conversations with any company whose trademark was mentioned
regarding what they might do in the circumstances presented.
The trademarks so mentioned are purely for illustrative purposes. (phew!)

Robert Frank, President
CORSEARCH, Inc.


----------
From: 	Michael Dillon[SMTP:michael@memra.com]
Sent: 	Sunday, December 22, 1996 8:46 PM
To: 	'iahc-discuss@iahc.org'
Subject: 	RE: 60 day thought

On Mon, 23 Dec 1996, Robert Frank wrote:

> But just in looking at the workload of the US Trademark
> Trial and Appeal Board (where oppositions are filed after publication and
> before registration) alot of disputes are resolved *before* the second-comer
> has a chance to invest alot in a new name and before damage occurs to 
> either party.

Wouldn't the same thing happen without a waiting period if new domain
names were published daily?

Michael Dillon                   -               Internet & ISP Consulting
Memra Software Inc.              -                  Fax: +1-604-546-3049
http://www.memra.com             -               E-mail: michael@memra.com