Re: New Work Types Problem (Was: Dead Sea Scrolls, Sweat of Brow Once Again)

Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>
> Leah Theriault <wheedle[_at_]uclink4.berkeley.edu> wrote:
> >
> > BTW, does anyone have any thoughts on whether the descriptive use of
> > a descriptive, but famous, trademark (I assume secondary meaning here)
> > survives the dilution provision of the Lanham Act? Apologies if this
> > is inappropriate for this list, but the line between copyright and
> > trademark seems to be blurring more and more these days.
>
> Do you mean "fair use" of the word itself as a descriptor, or
> "non-trademark use" of a term to accurately refer to the trademark
> owner. I think the latter survives, basically because I don't think
> it can constitute blurring (tarnishment is a tougher case).
>
> Re fair use, it may not survive.
>
> Here's my own particular dilution pecadillo: say Delta Airlines and
> Delta Dental both claim their mark "Delta" is famous [not an
> unreasonable claim]. If one is famous, can't they prevent the
> other from using the mark at all? Is there some sort of "status quo
> freezing" that occurs at the time the Act was passed? Alternatively,
> does the fact that two companies could plausibly claim the same word
> to be famous mean that in fact neither of them is famous?

Strange pecadillos they have down in Texas. This one looks like it's related to an armadillo--it might be roadkill.

One of the preliminary questions has to concern possibility of confusion. Unless Delta Airlines starts offering root canals on transcontinental flights (which may be less painful than flight delays or baggage damage), or Delta Dental starts reclassifying some dental anesthesia as "flying" (a not altogether unreasonable change), I don't think there's much chance of confusion between the two. No confusion, no dilution (something like no blood, no harm, no foul). Of course, since this is a fact-based inquiry, there's no neat (or even messy) legal answer.

However, if both apply for the domain name delta.com, we do have a problem. The simple solution is to not allow ANY use of trademarks as domain names UNLESS the trademark is also a registered DBA . . . but this opens its own can of worms.

All of this points out a very strange aspect of trademark law--that words taken out of context have more meaning and value than words taken in context. Example: let's assume that I properly register the trademark "Suquamish" (never mind that it's non-registerable). My business involves providing accounting and risk management services to health care companies in the Pacific Northwest. Shortly thereafter, a certain large manufacturer of microprocessors gets tired of giving its chips numbers instead of names (too impersonal), and decides to call its "P8" chip "Suquamish." The only way one can create a "trademark dispute" here is by taking the mark for the accounting and risk management services out of its context and comparing it to information processing. Which is, in the end, exactly what Delta and Delta are doing above . . .

C.E. Petit
<cepetit[_at_]usa.net> Received on Wed Mar 04 1998 - 14:04:29 GMT