60 days - Solving Trademark/Domain Name conflict.

[Betty Schafer <betty.schafer@dir.org>]

Just 8 private replies this time, can we discuss this in public please
....

Jeff - You're right, we’ve just drawn a complete circle, and at it's
center is a compass .... showing the way to a solution!!

Using a compilation of the replies received to my questions:

The basic principle underlying trademark law is that rights are derived
from "use".  With certain caveats, without "use", a company cannot have
rights, and if it does not "use" the mark over a period of years, it
creates a prima facie case of abandonment of that mark in that country.

So what constitutes Use?

In most countries, "use" requires that the mark be placed on hard goods,
for all to see, on a regular/permanent basis. For services, "use" means
regularly publicizing the mark in connection with the provision of those
services.  Consequently, publicity is a component of "use", and can show
the owner's commitment to use of the mark, but actual "use" requires
that hard goods be sold and services provided.

What is the relationship between Trademarks and Domain Names?

If a Trademark Owner has acted diligently and has publicised the fact
that he has the exclusive right to use a mark within a given area and
business activity, then any person infringing or diluting this Right
would be breaking the Law of that jurisdiction. PERIOD.  

Unless a State Legislature is prepared to change the Law to recognize
the proposed "60 or 90 day publication" period it has no legal value.

Under existing law, there is an obligation placed upon all new entrants
to a commercial market to ensure they do not infringe or dilute the
established and State granted rights of another person, at ant time over
the life of the of the granted right.  A Domain Name used to access a
commercial site, all be it on the internet, is no exception to this
established practice.

Conversely, a Trademark Owner cannot use State protection for a recently
granted mark to claim priority, over an existing Domain Name Owner, with
a similar name and competing trading interests.


SOLUTION.

Our solution, is to work with IP specialists, empowering them to promote
the interests of their clients by increasing public awareness of
registered trademarks, by using the TRADEMARK directory.

Domain Name Applicant, before submitting an application, can check with
the TRADEMARK directory to ascertain if a Trademark Owner is "serious"
about protecting their interests.  If in the knowledge that a Trademark
exists and a conflicting Domain Name application is made, the Domain
Name Owner is in an untenable situation.

If a trademark owner neglects to publicize their regionally granted
right to use a specific mark in commerce, it defeats the primary purpose
of being granted a valid trademark.  It is therefore likely that a Court
would find the Trademark holder negligent, and find in favor of the
Domain Name owner.

If the Trademark is in the TRADEMARK directory, and dilution or
infringement takes place, the Domain Name Owner cannot substantiate the
claim, "sorry I didn't know X had a valid trademark because they did not
use it / make the public aware of it" or "there is no conflict as I
thought I was a completely different business to X."

Conversely, the Trademark Owner cannot justify sending "Cease and
Desist" letters to Domain Name Owners, claiming to have rights to use
the mark in industrial classification areas not granted by the PTO and
not specified in the TRADEMARK directory.

Policing and enforcement are made easier, and can be summarised by
Carl's saying "if you snooze, you loose!!"  

Take a look at the TRADEMARK directory which is under development.  The
back door key is:
          http://www.trademark.org/tmindex.html

The databases are not populated so you can enter anything you like to
test our various search engines.  Please do NOT enter existing
trademarks and please keep it abstract!

All comments and contributions are welcome.

Rgds,

Betty.
-- 
__________________________________________________________________
Betty Schafer - Director, Trademark Directory Division.
mailto:betty.schafer@dir.org              http://www.trademark.org
Directory Corporation, Universal House, Nassau, PO N-3401, Bahamas
__________________________________________________________________