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Username: LegalEagle
Date/Time: Sun, December 30, 2001 at 10:11 PM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows NT 5.0
Subject: here goes:

Message:
 

 
        Hi Garry

I'll give it a try. Of course, my answers will probably not be to your liking, but remember they are simply my qualified opinion:

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How can a business - in the business of making 'Business Forms', get the trademark of 'business'?
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Without knowing the specifics of this mark and the classes to which it belongs, I'd say that it is probably a design mark (i.e. a distinct/stylized graphical form of the word 'business') which could be trademarked in theory (although I've never seen it tried before).

Afilias and Neulevel's decisions to include designmarks was a policy decision, one which cannot be changed (without a lot of trouble) now.

If Business Form's TM is not a style mark, then certainly this would be one of the most difficult English words to receive as a trademark in a predominently English-speaking country that is a WIPO member, as it is a word that all businesses use. Many other wordmarks are also next to impossible to trademark in many jurisdictions and include superlatives (e.g. best, quickest), city and country names (usually only those within the jurisdiction itself), and the word 'trademark'.

And of course, in most jurisidctions you can't trademark the industry in which you are doing business, e.g. 'computer' if you are in the computer industry (which is why the wordmark 'business' (by itself) would be declined in many offices).

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Surely, this is against unfair competition Law?
Another thing - How can they have a hope in hell of stopping other businesses, making business forms, from using their mark?

* * *

Once again if it is the stylized form of that mark, then they may have claim to that mark. But you raise an interesting point ...

It is of interest to note that just because a company has a trademark, doesn't necessarily mean that they can use that mark in any way that they want. Trademark owners often still have to ensure that their mark doesn't encroach on another TM owner's rights - something that is ultimately 'settled' in legal courts, not in a trademark office.

Accordingly, even though such rules of what can and can't be trademarked exist, some offices may have the tendency to liberally give out marks more than others, knowing that if problems exist, then objections will be made by competitors, or post-registration issues will be settled litigiously. The reason why most TMs take a while to go from filing to registration date is to allow objections to be heard and to allow the TM registrant to demonstrate that they are using the trademark. Of course, in practice, not all potential-objectors know about the mark until it's too late.

Certainly, the founding principles of trademark registrations never foresaw using the marks as a basis for registering a domain name.

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Can any lawyer explain why some trademarks can be allowed to have priority with their mark over others using same word(s) on the Internet? Please explain why this is not against unfair competition law.

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I've offered my opinion to this question in the reponse below (subject: 'not quite').

I think it's important to not lose sight of the original intention of Afilias' Sunrise period, and that was to allow people with obvious trademark rights, to claim their name first so that cybersquatters would not extort their names. (Of course, "Everyone hates cybersquatters", so this is probably how Afilias and Neulevel managed to get ICANN to side with the trademark owners so readily). Of course, as we have seen, apart from the obvious registrants with no TM whatsoever, many companies with trademarks for generic words (mostly designmarks) have used this rule to their advantage. Therein lies the quandry for Afilias. They've made the policy, now they have to stick to it. In hindsight, it may have been best to only allow registrants with a non-common word trademark to have first-rights, but the large trademark owners such as Sun, Apple, Caterpillar (to name but a few) with common wordmarks (Sun, Apple and Cat) would surely have made their objections heard.

Ultimately this was a policy decision by Afilias and as an independent business they simply decided on their policy on who gets priority (rightly or wrongly) in the registration process a long time ago. This was then sanctioned by ICANN (which seems to be swayed more by commercial interests than by individual interests these days). There is no doubt that the intellectual property factions exert a lot of influence over the net: I read yesterday that close to 60% of Internet websites are now run by just 14 companies! Quite a far stretch from where the Internet was just five or six years ago.

You use the word 'corrupt'; I'd tend to say that the rulemakers (politicians et al) tend to favour the parties with the most influence and/or the most money, and in this case, it was the intellectual property owners.

Of course the moral rebuttal to this argument ('why should they be the ones ...') is extremely compelling. However to fight them you need to be prepared to play their own game ... which usually involves legal action and a great deal of time and expense. Rightly or wrongly, this is the status quo.

Regards
Alex

 


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