Re: Open letter to Kelsey Grammer: the Internet is not a trademark-free zone

On Sat, Nov 14, 1998, Thomas Workman <tworkman[_at_]erols.com> wrote:
>
> Kerry L. Konrad <k_konrad[_at_]stblaw.com> wrote:
> >
> > Responding to Rich Wiggins re: the use of Kelsey Grammer's name as
> > a domain name, I believe that NSI, not Internic, would be the entity
> > that would have to reassign the name, and under their dispute
> > resolution procedure (to which registrants must contractually adhere
> > to obtain a domain name) it is essential that the party disputing a
> > prior registration have a registered trademark, registered by some
> > national authority (which is why in the Roadrunner case one of the
> > parties went off to Morocco, where they apparently issue registrations
> > very fast, to obtain a registration and therefore obtain standing to
> > invoke the dispute procedure).
>
> Kelsey has a remedy in federal court. He cannot get a trademark on
> his own name, IMO, under the doctrine that the mark would be primarilly
> a surname, and thus not registrable. The hijacker might be able to
> convince Internic, or NSI, to let them keep the domain name, with a
> foreign trademark (they could not get a US trademark registered without
> Mr. Grammer's permission). I believe that it is in Morocco where you
> can fill out a form, pay money, and instantly get a trademark, with
> effectively no examination other than to insure that exact mark is not
> already taken.
>
> There is a line of cases, beginning with the "Here's Johnny" case
> (for a toilet, opposed by Johnny Carson) that addresses the rights of
> people to the use of their own name, and which punishes those who cash
> in. IMO, the hijackers have done exactly that... and an attorney in IP
> should be able to help Kelsey get his domain name, or make it
> intollerably painful for the hijhackers if they keep it.

I agree with Mr. Workman and would only add that Mr. Grammer probably COULD register his name as a trademark for the services associated with that name, because even if it were "primarily merely a surname", it has certainly acquired secondary meaning.

Bob Cumbow
cumbr[_at_]perkinscoie.com
206-583-8566 Received on Wed Nov 18 1998 - 17:46:24 GMT