[At-Large] - Price caps - was: The Case for Regulatory Capture at ICANN | Review Signal Blog

bzs at theworld.com bzs at theworld.com
Mon Jul 1 20:45:34 UTC 2019

Use isn't limited to some wide, public use. You could have a tm on an
obscure (to most) service, stress-testing domain names as you mention
might qualify as an example, and still expect legal protections if
someone else went into the stress-testing of domain names with a
confusingly similar name.

It's the potential for trade confusion (and dilution of course) which
is important, not the breadth of the audience.

And copyrights are a whole other topic and not all that related to
trademarks or domain names though no doubt some parallels could be
drawn. Copyrights, for example, can apply to two identical (or nearly)
works if it can be shown neither derived from the other (e.g., just a
coincidence) whereas the important test of tm's is their function in
the marketplace.

Registering a tm, even just for intent to use, doesn't really confer
many rights for the registrant per se.

A registration's most important function is it's considered reasonable
notice to anyone else considering a similar mark and the date of the
registration. They should check tm databases.

"First in Time, First in Right".

To assert rights and protections beyond that requires either voluntary
compliance which is common.

If one receives, e.g., a letter informing them that another party
believes you are infringing on their mark, and particularly if your
use is relatively recent, it's worthwhile considering finding another
string unless you suspect the claim is specious. I've been involved in

Or court and other legal proceedings which are much more exciting to
contemplate but something businesses in practice try to avoid other
than those with full-time legal staff looking for something to do

But the point is USPTO or WIPO et al won't do anything to enforce your
rights beyond perhaps cancel an infringing registration if ordered by
a court or voluntary agreement. Their role is primarily to provide
evidence of registration (e.g., dates and other details.)

That's a little different from domains where the registrar is often
also the mechanism for use (e.g., website hoster) tho they will
generally cancel or transfer a registration if ordered by a court of
competent jurisdiction.


Domain names are often represented as embodying trademarks and owners
will demand similar treatment (e.g., UDRP/URS, or courts.)

That some might not represent trademarks isn't a counter-argument,
it's just another topic of discussion.

        -Barry Shein

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