Re: Trademarks, random strings, sharing, reserved words

[Carl Oppedahl <carl@oppedahl.com>]

At 10:19 PM 01/12/97 +0000, Olivier MJ Crepin-Leblond wrote:

>On Jan 12, 21:47, Carl Oppedahl wrote:
>
>> Your point that "united" is not a coined word, and is in fact a word out of
>> the dictionary, is an important one.  Whoever happens to register
>> "united.com" first should get to keep it if they wish, and no one should be
>> able to take it from them.
>
>We're in complete agreement. And I really believe that this reduces the
>total number of so-called trademark disputes by a large percentage,
>simply because there are already stringent guidelines in place about
>trademarks.

You and I may be in complete agreement on this point, but that's not
dispositive of the issue.  Look at the many cases where trademark owners
seem to show no embarassment at waiting two or more years and then, for the
first time, asserting that mere ownership of a domain name somehow counts
as trademark infringement.  Clue.com, perfection.com, regis.com, juno.com.
Those are the publicly visible cases, and for each of those there are
dozens more that happen not to have reached public view.  Something has to
be done to provide some stability for domain name owners in such cases.

>> >Later on you mention "Pepsi". Pepsi is really "Pepsi-Cola" and the company
>> >is "Pepsico", a coined word. -> pepsi-cola.com or pepsico.com
>> 
>> Here I disagree a little.  "Pepsi" is not "really" "Pepsi-Cola".
>
>Well, this again is a trademark and patent attorney issue, and yes,
>on second thought, and it is explicitely mentioned in trademark
>rules, if the brand is such that it strongly represents a product,
>it will stand-up in court. One would have to be pretty dumb to
>start-up a company and call it Pepsi anyway.
>
>We agree on the Coke issue, although I am not knowledgeable enough about
>that case to comment on whether "Coke (R)" is a registered trademark, or
>whether what's trademarked is really the artwork of "Coke" writing.
>An interesting recent case was the battle fought between Richard Branson's
>"Virgin Cola" which looked too much like "Coca Cola" - just the feel of
>the packaging , the style of the writing etc. was being attacked by the
>Coca Cola Company.
>
>> >You comments about "Pontiac" (a coined word) stand, and I agree with them.
>> 
>> Nope.  Pontiac was the name of a Native American chief, over two centuries
>> ago.  See
>> <http://www.csulb.edu/gc/libarts/am-indian/nae/chapter_1/001_002_1.53.txt>.
>>  Query whether the auto maker obtained rights to the name from the
>> decendants of that person.
>
>That's something for them to sort-out with their lawyers, really, isn't it ?
>
>There is one thing which I would like to add - the case of trademarks held
>by two independent organisations, for different fields of activity. Let me
>take an example: Thomson Holidays, and Thomson Multimedia. Thomson holidays
>is a pretty well known travel agent company in the UK. Thomson Multimedia
>is a pretty large French electronic company (they own RCA).
>The suggestion that the two would clash names on the Internet is, IMHO,
>misguided. One should take thomson-holidays.com and the other should take
>thomson-multimedia.com . And first-come-first-served should take thomson.com.

Yes, that's what you would expect.  And it's what I would expect.  Yet we
see Juno Electric showing no apparent embarassment at trying to deny Juno
Online the use of juno.com, a move which, if successful, would have
rendered seven hundred thousand people unable to receive their email.
Something must be done.


---
Carl Oppedahl, Oppedahl & Larson, patent law firm
http://www.patents.com/ has hundreds of pages of answers to 
frequently asked questions on patent, copyright, and trademark law