[OT] trademarks (was: Re: Bundling)

Vint Cerf vint at google.com
Sat Dec 12 16:21:09 CET 2009

Mark, et al,

this may not reach you if you are off on holiday but I would point out  
to others on the distribution that ICANN's Uniform Dispute Resolution  
Process does take into account trademark arguments and these often  
factor into the recommendations made in this non-mandatory arbitration  
method. Trademarks are not uniquely assigned, as I think we all know.  
Trademarks for  Mumble-frotz skis and Mumble-frotz butter can be held  
by distinct parties in most trademark jurisdictions. Things get more  
complicated in the case of so-called "famous" marks, I believe.


On Dec 11, 2009, at 5:16 PM, Mark Davis ☕ wrote:

> I talked to her about this. We're leaving on an extended vacation  
> tomorrow, so she doesn't have a lot of time to deal with this. I'm  
> recounting what I heard, so she would probably not have phrased it  
> like this:
> You are right insofar that the key determination for whether  
> trademarks infringe is whether they are "likely to cause confusion".  
> This is determined under national law, not by WIPO. A strong factor  
> is whether they sound the same, but there are other factors (look  
> the same, similarity of goods, channels of trade, etc.). The  
> ultimate decision is made by courts and national trademark offices,  
> so there are not absolute lines. But in German-speaking countries,  
> two phrases differing only by ß vs ss are sufficiently similar as to  
> cause confusion, and one would infringe on the other if the goods  
> provided under the marks were the same.
> Domain names are orthogonal. Registering a domain name doesn't  
> necessarily establish any trademark rights.  It doesn’t necessarily  
> infringe trademark rights. A domain name may infringe on someone  
> else's similar trademark. There is no legal requirement that all  
> characters used in trademarks be represented in domain names.  And  
> the fact that a domain name can infringe a similar mark doesn’t  
> create such a requirement, even as a practical matter.  Lots of  
> symbols used in trademarks are not used in the same trademark  
> owner’s domain name. (As as I said before many common ones cannot  
> be even in IDNA2003, and IDNA2008 reduces them further.)
> Mark
> On Fri, Dec 11, 2009 at 10:13, John C Klensin <klensin at jck.com> wrote:
> --On Friday, December 11, 2009 08:46 -0800 Mark Davis ☕
> <mark at macchiato.com> wrote:
> > Well, my authority for this information *is* an expert in
> > trademark law, a past president of the International Trademark
> > Association (INTA). Full disclosure: she's also my wife, so I
> > pretty much have to go by what she says ;-)
> Mark,
> Mostly out of curiosity, would you mind asking your wife if that
> equivalence is enshrined in a WIPO rule or convention or (at the
> other extreme) if it is mostly local to countries that don't use
> Sharp-S very much?  Could you also confirm my impression that,
> from a trademark perspective, two strings that sound alike can
> be considered infringing even if they are spelled/presented
> rather differently, e.g., that акуву or δισνη (I hope
> I've got those transliterations close enough to make the point)
> would be considered problematic in certain quarters even though
> there are even vaguely visually confusable with the
> sound-similar Latin character strings?
>    john
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