RE: 60 day thought

[Michael Dillon <michael@memra.com>]

On Tue, 24 Dec 1996, Robert Frank wrote:

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

> 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. 

> IMHO, I believe that if you remove the publication and opposition
> provisions you will have several adverse repercussions. 

I wasn't suggesting that the US PTO change anything. What I was saying is
that since the IAHC is not a judicial body like the PTO, there is no
point in having a waiting period. Especially so since the IAHC is
expressly not treating this time period as an opposition period. IAHC will
*NOT* listen to complaint and will *NOT* delay domain name registrations
beyond the 60 day waiting period and will *NOT* reject domain names that
are challenged. 

> Everyone's fear is finding their TM registered in 7 (or 50) different places.

My understanding of current US law is that I can pick almost any
registered trademark in the USA and use it for my own products as long as
my product is in a different realm from the trademark holder's product.
And there would be no interference from the existing trademark holder
except that I may have to fight off a legal challenge to the mark but
such a challenge is likely to be quite easy to win. For instance if I
were to run a maid service called EverReady (tm) Maid Services the battery
manufacturer wouldn't have any valid claim against me. 

So the DNS really has no substantive effect whatsoever on the matter
except for the fear of the unknown. And education is the solution to 
fear of the unknown.

> Second, I think you will find court actions all over the place.
> Sue now, ask questions later. 

Good. That's the way it should be. And that's the only way that a mark
holder could stop a new domain during the 60 day waiting period anyway.

> 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.

I understand that there are a very small proportion of trademarks that
are special because they are more famous. Nevertheless I am not aware that
Phillip Morris has taken any action against http://www.marlboro.edu
and I don't see why a non-commercial venue such as the Internet domain
naming system needs to be involved in the trademark process at all.
Obviously the state of Maryland has not been asked to rename the town of
Upper Marlboro nor has New Hampshire been asked to rename the town of
Marlboro. 

The Internet comes on the scene at a time when the power of trademarks is
fading anyway. There are so many marks in existence that the owners need
to invest heavily in advertising to build the power of their mark. And it
is even getting to the point where advertising dollars are no guarantee
that a mark will have any effect at all because it is getting cheaper and
cheaper to advertise therefore more and more marks are being promoted
everywhere from public toilet stalls to the inside of jar labels. And now
the Internet creates a single, flat, easily searchable space for
information. In the future companies are going to find that it is
necessary to search the web first before creating a new brand. It won't be
good enough to make an artificial word because this may exist in one of
the hundreds of languages in use on the web. We cannot stop any of this or
even slow it down. All we can do is step out of the middle and say to the
domain name registrants and trademark owners: here is what is happening
and here is who is doing it; you guys straighten it out amongst
yourselves.

I believe that the 60 day waiting period is a dangerous crack that opens
the door to even more meddling in the DNS by trademark combatants and I
don't believe that they have any place whatsoever in the DNS system. We
will not make your job any easier; the most we will do is promise not to
throw unneccessary barriers in your way.

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