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Username: sfeibish
Date/Time: Fri, May 4, 2001 at 10:15 PM GMT
Browser: Netscape Communicator V4.7 using Macintosh PowerPC
Subject: "generic" trademarks and .info

Message:
 

 
                I don't have a problem with a trademark holder like IBM
registering domain names that represent the company's
name, products, and services.

I have a problem with the fact that because the
United States Patent and Trademark Office (USPTO)
has allowed generic trademark names to be issued,
trademark holders of names like sex and airlines
will be holding their own private lottery
for these names before the general public gets
a chance to register these names.

What that means is that

-a sock manufacturer in Australia could wind up
with "www.computer.info"

-a bicycle parts manufacturer (Shimano) could wind up with
"airlines.info".

-a clothing manufacturer or equipment manufacturer
could wind up with the name of a city.

-all the "common household names" will be taken by
trademark holders.

-the whole process just becomes a lottery for
trademark holders.

(city names may not be grabbed if ICANN implements
the World Intellectual Property Organization's (WIPO)
recommendation that municpality and geographic region
names be set aside.)


My hope is that  the sunrise eligibility
provision will be modified, by either ICANN or the
Commerce department, to exclude generic trademarks
and city names.

My personal interest is that I'm trying to register
generic names.  I've preregistered for 350-400 names
in the hopes of winding up with a handful in the
"land rush" lottery.

I don't consider myself a squatter.  I will use what
names I get (for their intended purpose).

I've proposed the following modification to sunrise
eligibility to an ICANN board member.

Tests:

1.)  A generic name is a name that does not denote origin,
        or any specific source.

2.)  A generic name is a name that the public regards as
        representing a class of goods or services.

3.)  Municipalities and geographic regions are generic names.
        Where municipalities include, but are not limited to,
        countries, states, provinces, and cities.

Result:

"Any trademark that denotes origin or specific source,
qualifies for sunrise.  Any trademark that the public
regards as representing a class of goods or services or that
does not denote origin or specific source or that identifies
a geographic region or location, does not qualify."


This borrows from a USPTO document
(1209.01(c) Generic Names [R-1]) --
and is sure to have holes in it since
I'm not an attorney.

Under this scheme, IBM could register its name
("International Business Machines"), or one of its
products ("IBM360"); but  the sock manufacturer
could not register a generic name like "computer"
during the sunrise period.


If I'm in error, and generic trademarks are not allowed
during the sunrise period, I'm not a lawyer after all,
well then like Rosana Dana Dana on Saturday Night Live
-- never mind!


Some useful info:


I discovered companies trademarking generic terms
by searching a United States Patent and Trademark
Office database called TESS
(http://tess.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk),

where I found a number of generic terms and city names
trademarked/service marked in one way or another.

Names the patent office says can't be trademarked.

Well, no one trademarked the example they used on
their website -- www.bank.com.  But generic names,
city names, and numbers like the following have
been trademarked.

Generic names, city names, and numbers  like:

411,800,airline,airlines,alexandria,amsterdam,
arlington,ask,athens,atlanta,auto,automobile,
baltimore,banks,barcelona,beach,beijing,berlin,
boca,bombay,bond,bonds,boston,branson,
brussels,buffalo,calcutta,calgary,camera,
canberra,canton,capetown,car,cars,casino,
chicago,china,city,cleveland,clipart,college,
columbus,commodities,company,computer,
concert,condominium,copenhagen,cost,coupon,
cruise,currency,dallas,date,date,dc,dc,delhi,
denver,dictionary,dog,dsl,dublin,dvd,
escort,escorts,europe,exchange,f1,fairfax,
fallschurch,find,flight,florida,food,free,
futures,games,georgetown,get,
hamburg,hannover,havana,hawaii

Now, some service marks might only apply to
a logo and not to the use of the name contained
within the logo.

Again, I'm not a lawyer.


Thank you for listening,

Steve Feibish
President
Priority Software, Inc.

   
     
     
     

 


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