is the real deal.  Click here.

If you are losing your trademark suit at the trial level, then, as I always advise my clients, the options are settlement or appeal, not murdering the judge.

To the person who came to my site using the Google term “Find Current Addresses Boat Owners Saudi Arabia,” I’m sorry to disappoint you, but as long as you’re here, would you like to file a trademark application?

By the way, the previous item I ran on someone getting here via “Days of the Week Panties” has itself trapped someone else using that term.

And to all you bloggers out there, please use the term MARRIOT SISTERS on your site to take some of the load off my server.

This is an important ECJ decision clarifying the protection of well-known marks.  Davidoff has a famous stylized logo which it uses in part for jewelry.  A Hong Kong company named Gofkid adopted the name DURFFEE and used virtually the same script I cannot find a specimen of the logo on the web.  Davidoff sued, arguing in effect that the DURFFEE logo diluted the DAVIDOFF logo.  Whether dilution protection was available when the goods in question were identical or similar had not previously been clear.  Now it is: Davidiff prevailed.

Click here for the text of the decision and use DAVIDOFF as a search term (unfortunately the decision does not display the marks).

Icann Watch has shamed me into commenting on Singapore’s application to register .SG (the country-code for Singapore) as a trademark, by wondering out loud what the Trademark Blog thinks on this.  I had ignored the time yesterday because, to paraphrase Stephen Daedulus, “Domain Name politics is a nightmare from which I am trying to awake.” 

First, as a matter of disclosure (and credentials, I suppose), I have advised clients on the registrabilty of top level domains as trademarks, and have an active matter on the topic, so I’m going to pull punches and merely set out the issues.

By way of background, there is no divine revelation or treaty as to who should be the manager of a country code.  You have a four way brawl between (1) the sovereign, (2) the incumbent domain manager (which sometimes is a not-for-proft entity and sometimes is a for-profit entity like Verisign or Neulevel), (3) ICANN, and (4) Everyone Else.  If this is of interest to you, you can click here for an unending list of materials on ccTLD management.  Read RFC 1591 first.

So the news of a domain manager or sovereign filing for trademark protection for its ccTLD creates a parade of horribles.  Will trademark protection give it undue power over (1) ICANN; (2) domain managers; (3) users?

My answer: no more power than it already has.

The article expresses and then rebuts the fear that if the country code is trademarked, then the domain name user becomes a licensee subject to control.  But bear in mind that we already have a situation where people use email or promote websites which contain trademarked terms (AOL or HOTMAIL for example).  These trademark owners, when they choose to intervene with content, do so through Terms of Service, not trademark.  If a person uses the email address JOE@AOL.COM in connection with his business, that is understood not to constitute trademark use of AOL.  He would have to actually name the business JOE@AOL.COM for it to rise to trademark use.  That is certainly US and EEC law (and while I invite comment from Singaporean counsel, I would be shocked if if were not the law there as well).

So while Singaporeans may already have concerns over content management by their government (the article mentions that domain name registrants are subject to some sort of TOS), were the government to obtain .SG as a trademark, this would not add to those concerns.  And we’re talking about Singapore.

As to mis-use of a trademark registration as an incumbency hedge, let’s get away from the Singaporean context (because there the domain manager is so closely aligned with the government).  Would trademark registration by either the sovereign or the incumbent domain name manager tilt the balance of power.

If a sovereign already in charge of a ccTLD obtains a registration of that country’s TLD, then the power struggle is already over.

If a sovereign not yet in charge of a ccTLD obtains a registration, then it is going to use its power as a sovereign to obtain control anyway, and trademark law will be an afterthought.

If a domain manager obtains a registration, and then loses its delegation as domain manager, and a new domain manager steps in, then all other things being equal, that country’s court would likely allow the new domain manager to fairly use the TLD to describe the country codes.

I also dimly recall proposed ccTLD best practices requiring the domain manager to renounce intellectual property claims in the TLD itself.

As to this particular application, the article did not state what services were claimed (And I don’t believe there is an online Singaporean database to check), so I hesitate to comment further on that application.

Two asides – this might catch on among other ccTLD managers as a means of policing the registrar network.  My response to that is that that can be accomplished with a simple certifiction logo.  Furthermore the doctrine of trademark exhaustion will limit effectiveness of using a registration in the TLD itself as a policing tool in the re-seller market.

Second – there was an interesting detour some years ago when the operator of the alternative root TLD .WEB tangled with an entity named CORE, which wanted to run a .WEB TLD.  Google IOD CORE .WEB for more on this.

Coverage of Intel’s new CENTRINO brand.

p.s. Intel registered the centrino.com domain name back in February.  It filed trademark applications for CENTRINO and INTEL INSIDE CENTRINO in October.

Branding by carmakers – via cnn.com.

A Mercedes dealership obtains the toll-free number 1-800-MERCEDES in the mid-80’s.  Mercedes complains but doesn’t really do anything about it.  The dealership goes a step further, and licenses the number out to six other Mercedes dealerships around the country (so if calls come from certain area codes, they are routed to those delaerships, otherwise they go to the original dealership).  Where Mercedes is during this, the case doesn’t say.  In 1997 Mercedes terminates the dealership.  It then takes three years to file suit against the dealership, which still, apparently, is licensing out the 1-800-MERCEDES phone number.  The District Court rejects Mercedes on summary judgment. 

On appeal, the Court says “There is no dispute that [the dealership] only licensed the phone number but did not advertise or promote Mercedes’ protected marks.”  Which strikes me as odd.  The Court then says that domain name cases don’t apply here.  It then concludes that:

. . . the licensing of a toll-free telephone number, without more, is not a “use” within the meaning of the Lanham Act, even where one possible alphanumeric translation of such a number might spell-out a protected mark.

And affirms the dismissal.

OK, maybe this decision was right on the record, but I’m skeptical that it is possible to market a service involving routing of calls to 1-800-MERCEDES to MERCEDES dealerships without using the mark MERCEDES, as use is defined in the Lanham Act.  Also, I would have liked to have known how the Court felt about the laches and estoppel issues here.

Decision here.

If anybody gets the number 1-800-TRADEMARK BLOG and markets it to trademark lawyers, I’m coming after them not only on trademark grounds but on unjust enrichment and conversion as well.