[ifwp] Re: Trademark Searching and Domain Names

["Martin B. Schwimmer" <martys@interport.net>]

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>Date: Mon, 14 Sep 1998 20:00:51 -0400
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>From: "Martin B. Schwimmer" <martys@interport.net>
>Subject: [ifwp] Re: Schwimmers List 
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>A few words on trademark searching BDN (before Domain Names).
>
>Mr. Stefferud's valid criticisms on TM searching falls on potential TM
>owners more heavily than on potential DN users.  There is no conspiracy here.
>
>Part of the probelm is the nature of the beast - while computerized
>dead-hit searching is used as a screening tool, because the standard is
>confusing similarity, not identity, there has to be a human discretionary
>aspect to trademark searching and that increases the price of searching.
>
>It's true that with the whois database the name is there or it isn't, but
>that doesn't mean that the DNS is a better legal system (it's not a legal
>system), it's just because for the DN to achieve its role as a computer
>identifier, the only criteria is uniqueness (it's when a DN functions as a
>system for allocating business identifiers that the trouble begins).
>
>I want to make clear that putting second-comers on notice as to prior
>rights is a fundamental tenet of trademark systems. No one wants to hide
>their rights - that's why they put the little tm or R in a circle or marca
>registrada on their products.   
>
>Mr. Stefferud is certainly correct that searching can be made easier.  It
>may be cold comfort for you to know that widespread use of computerized
>databases has made trademark searching several times cheaper, faster and
>better since when I first got into this profession (which was in 1927).
>
>Incidentally, one more argumentative point - a virtually universal aspect
>of TM systems is the use of notice by publication - gazettes are
>distributed publishing new applications or registrations.  This is to put
>prior TM owners on notice that someone is claiming rights, and in many
>countries the TM owner then has a statutory period (in the US an extendible
>120 days) to oppose the application before the rights are perfected (and
>there can be a certain loss of rights if action is not taken).   In
>contrast, in the DNS, third parties do not learn of a DN registration until
>the DN has been registered, period.
>
>
>To dis-spell notions that there is a monolithic trademark mind-set, it
>should be noted that reasonable people diagree as to what is fair and right
>on this topic.  In the U.S. and the British Law countries (of which Britain
>is no longer one), we recognize common law use - first to use wins. We view
>this as fair because we do not want to erect high barriers to entry for
>small businesses. Nevertheless, it isthe policy that second comers are
>encouraged to search - the existence of a federal registration is deemed to
>be constructive notice - you cannot innocently infringe a registered mark,
>if you didn't search, you're out of luck.
>
> So as a result of recognizing common law rights in the US, searching a
>mark with certainty is impossible - there is always the possibility that
>there is a mom and pop store out there using the desired mark for the
>desired services, whose use is not going to show up in a search report.
>This problem is particularly acute for design marks because they are not as
>searchable by computer (some may recall that NBC had to pay off someone
>using a similar N logo it's search had missed).  So the US trademark owner
>is susceptible to submarine usages (and that is the term of art for that
>situation).
>
>In Europe and most civil law coutnries, their idea of fairness is
>different.  They think the submarine usage problem is unacceptable, so they
>say "we will only recognize registered rights."  The advantage is that you
>can search the register and the mark is or is not there, period, no people
>coming out of the woodwork once you have made a hit (I am over-simplifying).
>
>Incidentally, the fact that most of the world does not recognize rights
>based on use makes US Internet based companies vulnerable to pirates as, in
>theory, the owner of the trademark YAHOO in such a country could enjoin
>Yahoo if Yahoo itself has not filed a TM application (and Yahoo has
>experienced troubles in entering the Chinese and Israeli markets by people
>who "anticipated" Yahoo's arrival).
>
>Now what you say about the expense and difficulty in searching is true to
>an extent - but it is certainly not a conspiracy against domain name owners
>- it is TM owners who bear the brunt of this problem.
>
>However, searching is not the most burdensome process in the world.  In the
>context of searching for a trademark, in the US you could call up Thomson
>and Thomson (1-800-692-8833) - they also have a web site (they were one of
>the CORE 88 registrars!) and order a full search for approx. US$300. (In
>Europe, Thomson and Thomson does business under the Compumark name).  In
>the context of protecting a valauble corporate asset, this does not seem
>horribly burdensome.
>
>Also, the US PTO, at least, does make it easy for someone to file an
>application without a lawyer.  Also, there are self-help books relating to
>starting a business. Also I am starting an IFWP trademark application
>hotline (;]
>
>Also, the trademarkscan database is available - see the Dialog company.
>
>Also, the US PTO will soon (if it has not already) put the US registry on
>the Web.
>
>As far as searching TM registries in order to clear a DN, NSI's horribly
>flawed policy has made searching effectively impossible - you cannot search
>in all classes in all countries in the world.  I tell people when they
>select a domain name to file at least one TM application for NSI-reasons -
>preferably where they dpo business, but if they are afraid of an imminent
>conflict, they should file in Austria or the Benelux because of the speed
>in which they register applications.
>
>Of course, if someone is effectively going to claim wordlwide rights to do
>business under a certain DN, then they are going to have to accept the fact
>that there are 140+ countries where in one of them someone may have better
>rights.
>
>Filing for a TM is not that mystifying process and if you are mystified
>it's your lawyer's fault.  Also, TM lawyers often charge flat fees to
>process applications (the idea of someone charging $400/hr is offensive to
>me personally because I don't charge that much yet).
>
>Tell me what country you live in and I will recommend a reliable TM
>attorney.  Maybe he or she will give you a special IFWP rate.
>
>p.s. In certain ways the DN has already achieved goals that the TM legal
>system has been struggling to achieve for decades.  For example, how long
>did it take to have a European-wide trademark. The Treaty of Rome was in
>what, 1954?  The Single European Act -1985?  EEC White Paper on trademarks
>- late 80's, talk about the CTM - ealry '90s.  The Community Trademark
>office accepts applications April 1, 1996, finally the first registrations
>are issuing.  Compare that to the DN - immediate worldwide ownership. The
>DN will revolutionize the world TM systems.
>
>p.p.s. Is it time to change the heading of this thread?
>
>
>
>At 02:36 PM 9/14/98 -0700, you wrote:
>>>From your message Mon, 14 Sep 1998 12:05:30 -0400:
>>}
>>[SNIP]...[SNIP]...[SNIP]...[SNIP]...[SNIP]...[SNIP]...[SNIP]...[SNIP]...
>>}................................................, I do not represent the
>>}phantom TM owners who believe they are entitled to all variants of their
>>}name in all (hypothetical) domains.
>>}
>>}In this situation there is a system which is inherently a
>>}telecommunications addressing system which overlaps in certain ways a
>>}trademark allocation system.    The print-out of Mr. Colman's registrations
>>}are evidence of what I believe is the conflict between the two systems.  I
>>}could print-out other such listings but I would be accused of spamming.  I
>>}believe the systems should be harmonized as appropriate to minimize the
>>}conflict.
>>}
>>}When the systems are harmonized, you won't have to speak to trademark
>>}lawyers any more (unless I can interest you in filing for some
>applications).
>>} 
>>
>>In my view, one of the simplest harmonizing tools would be for the TM
>>holders and TM registries and TM LAWYERS to stop hiding the facts of
>>existing trademarks so that when a DNS registrant wants to chose a
>>name, they can find out about potential conclifcts without spending
>>US$500 per considered name!
>>
>>The DNS is totally open for inspection, so that the "submarine" TM
>>holders can find them as soon as they register anywhere in the net,
>>while the whole TM "industry" is hiding its information behind
>>expensive search processes, on he excuse that simple matching is not
>>good enough to prevent conflicts.  This is high hypocracy and close to
>>extortion in my book!
>>
>>Lots of us out here could simply avoid the use of any name that
>>conflicts with any trademark if we could only find out about what is
>>trademarked before we register our new name and spend resources on
>>advertising it, etc, et al, for less than US500 per name considered.
>>
>>It is ludicrous for the TM industry to insist that the DNS industry
>>spend its resources on doing the job that the TM industry wants done
>>but will not do for itself.
>>
>>The next most useful tool would be for DNS registries and Registrars
>>to help DNS registrants find and use simple and inexpensive
>>Trademarking tools to get tradmarks for newly minted DNS names, whcih
>>have been found to not conflict with known trademarks.
>>
>>AS the holder of NMA.COM, I have consdiered trademarking it to get
>>clear of the hated NSI conflcit policy, but every time I look into it,
>>I find a rather incomprehensible process, with thoushands of purveyers
>>of services with no way to determine any kind of measure of
>>reliability or quality of service, short fo paying my corporate lergal
>>counsels regular 400/hour fees for advice on where to go for
>>professional service.
>>
>>All this is a monstrous mismatch, caused by the archane nature of the
>>TL Industry.  This problem is not caused by the DNS industry, and I
>>think it shoudl be upon the TM industry to clean up there own mess for
>>themselves.
>>
>>Cheers...\Stef
>>
>>}
>>}
>>}>Richard, I think he gets it. He's just is banging his head in frustration
>>}>like the rest of us.
>>}>
>>
>>No doubt...  There are a lot of us out here with severe head banging
>>headaches!
>>
>>}>
>>}>Best Regards,
>>}>
>>}>Simon
>>
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