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

On 11/18/98, Daneil J. Schaeffer <daniel_schaeffer[_at_]kirkland.com> wrote:
>
> On Sat, 14 Nov 1998, Carl Oppedahl <carl[_at_]oppedahl.com> wrote:
> >
> > On 11/13/98, Greg Ikonen <gikonen[_at_]venlaw.com> wrote:
> > >
> > [discussing NSI's challenge procedure]
> > > Not only does Kelsey need a registered trademark, but he must
> > > satisfy Internic that he acquired that registration prior to the
> > > date his friendly cybersquatters registered the domain name.
> >
> > No, that's not correct; please reread the NSI procedure. It is enough,
> > to "win" the NSI challenge procedure, that the challenger's trademark
> > registration recite a "date of first use" that precedes the domain name.
>

[quotation from NSI web site]
>
> So the relevant date of the registration is the "effective date"
> of the valid and subsisting trademark registration owned by the
> complainant. There is no discussion of "first use" anywhere in
> the policy. (I suppose you could argue that "effective date" of
> a registration is the date of firsts use, but I see nothing in
> NSI's policy to suggest that interpretation.)

Yes, your statement is correct so far as it goes based on the NSI Fifth Policy that went into effect on February 28, 1998. But what you might not have noticed is that NSI quietly established its Sixth Policy by means of the numerous policy changes posted by it at

   http://www.internic.net/faq/dispute.html

In particular, NSI's Sixth Policy states:

1. What's the effective date of a trademark?

      The Policy refers to a trademark's "effective date" because 
      of the varied nature of effective dates for trademark 
      registrations.  When Network Solutions receives a trademark 
      in support of a complaint, we research to determine the 
      effective date of a trademark based on the accepted practices 
      of the trademark's country of origin. For example, the 
      effective date of United States trademark registrations is 
      the earlier of the filing date or the first use date. 

Now of course, if NSI knew anything about trademark law (which it apparently does not), NSI would know that "the earlier of the filing date or the first use date" is silly. The first use date is *never* later than the filing date. Even with an ITU filing, the first use date is defined as the same as the filing date.

There are many flaws in NSI's policy of which this is probably the least.

Carl Oppedahl
<carl[_at_]oppedahl.com> Received on Fri Nov 20 1998 - 01:06:22 GMT