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Username: Garry Anderson
Date/Time: Mon, December 31, 2001 at 6:55 AM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows 98
Subject: Please explain this:


Thank you very much for your reply Alex,

Before we start - I notice you did not answer one of my questions:

You know virtually all words are trademarked.

Can any lawyer explain why trademarks should have priority over people for these words? Please explain why this does not abridge peoples right to use these words.

Also please explain why small business, without trademark, cannot use these words - because a trademark took it before them?

Why is both these facts not a violation of First Amendment?

Small businesses cannot now use their name - it is bound to conflict with a trademark.

> 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:

The truth is always to my liking :-)

I have gave nearly ALL these arguments before, in previous posts on this board (check using the search).

Though you are expert in these matters, I have read a lot and believe you are incorrect in some of your answers. Please explain why my assesment is wrong.

G> How can a business - in the business of making 'Business Forms', get the trademark of 'business'?

> 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.

The domains Registrant Organization:  M/s. Business Forms

Afilias, Neulevel and ICANNs UDRP is fatally flawed. If a trademark was awarded for graphics - is it not an abuse, overreaching trademark to use it as a word? It was NOT awarded for the word, probably not allowed - else they would likely have got it as word also.

> 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).

As trademarks (in all countries I looked at) have to be distinctive from others or declared invalid - I cannot see how the word ‘business’ was allowed.

This is why Sunrise (trademark) domains taken cannot show the obvious descriptive use e.g. cannot show computers - but can show socks, as ‘computer’ is trademark of a socks business. Am I right?

G> 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.

Sorry, believe you are wrong. You cannot use registered mark without getting approval for service or goods can you? It is an abuse of the mark.

> 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.

It is easy to use ‘first use’ principle, using date of mark - is it not?

G> 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.

> 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.

Sorry, believe you are wrong. If that is the truth, the intention was fatally flawed. I believe it was bull* propaganda - please see end of this page why (*).

> (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).

Sorry, believe you are wrong. Was ICANN not already on the side of trademark owners first, UDRP, and it was the reason for waiting years for new TLDs.

>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.

Hindsight was not needed, they had much time to plan - all the problems were obvious.

Are you seriously telling me, that if you were asked what problems you could see coming, that you would not have spotted most of them?

> 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).

It appears a requirement of ICANN acreditation that UDRP of some description is essential. It is a fact - trademarks have been given priority over people and small business without trademarks. A violation of First Amendment.

>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.

If people rights are being abused - I call it corrupt - what would you call it?

> 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.

Morality is only half my argument - the Law is the other half.

Sorry, with respect - you have not answered the question. It is illegal - is it not - for trademarks to use mark to dominate over others?

e.g. How can Apple Computers be the only one to be allowed to use their mark - out of thousands of others using word 'apple'?

This given that there is a solution for all marks to use their name without 'consumer confusion', 'trademark conflict' and 'passing off' - !

(*) Why Sunrise Period is bull* propaganda.

The authorities have been using lies and propaganda; As example, ask them to deny this:

THOUSANDs of new 'open' TLDs will not solve any problem - even if every one has 'Sunrise Period'

It will not solve 'consumer confusion', 'trademark conflict' or stop anybody 'passing off'.

Also, as an example on Sunrise, thousands of trademarks using word 'Apple' have no guarantee of being able to use name.

Apple computers will still protect and make claim to every Apple.[anything] - even though they share word with 727 others in the USA alone (plus all those in 200+ countries).


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