«

> I don't know what this "subset" is that you are refering to but there is a
> difference between trademark names like "mydogs" and Xerox, Cellotape,
> Google, Coca-Cola etc and that is that "mydogs" is made up of 1 or more
> common english words unlike Xerox, Coca-Cola etc which are made up words
> Which had no meaning when they were introduced. The fact that Xerox has

Someone raised an interesting question regarding trademarks and domain
name entitlement. At the moment "ecommerce" is not trademarked yet, and
it is simly an expression of commerce in the electronical way, similar
to the use of "my" in "dogs"?

The main point is, if someone successfully registered "ecommerce"
trademark in NZ, is this person automatically entitled the use of all
"ecommerce" domain names in NZ? Can they claim the use of
www.ecommerce.govt.nz an infringement? If someone managed to register
"ARMY", doing some army-styled clothing/toys, www.army.mil.nz might then
be in trouble?

Any thoughts? I can't seem to find any official info for or against the
rights of a trademark in cyberspace.

Mark.

On Sun, 03 Aug 2003 01:27:50 GMT, Chris Mayhew <> wrote:


>I don't know what this "subset" is that you are refering to but there is a
>difference between trademark names like "mydogs" and Xerox, Cellotape,
>Google, Coca-Cola etc and that is that "mydogs" is made up of 1 or more
>common english words unlike Xerox, Coca-Cola etc which are made up words
>Which had no meaning when they were introduced. The fact that Xerox has
>become a generic term is mostlikely related to the fact that describes an
>action i.e. it's used as a verb and started to used like this when there
>wern't to many brands of photocopyers on the market. In a case like this
>it is more likely to add to the value of the trade mark (?) on the bases
>that you can't "Coca-Cola" anything - it simply "is it"

You can also "make a xerox copy" of something, which is equally common
usage. How a term is used has little bearing bearing on how famous it
is. That a term has recognition value is an indication it may be a
famous mark, regardless of whether it is trademarked in a particular
jurisdiction.

For information on "famous marks", try "googling" it

Among others, you'll get:
http://www.domainhandbook.com/famous.html
http://www.dnso.org/dnso/dnsocomment.../msg00020.html
http://ipc.songbird.com/famous_marks_paper.html
http://www.pbwt.com/Resources/index-newsletter.html
http://www.iplawky.com/wcsb/tradempr.htm
http://www.alvestrand.no/ietf/famous-marks-position.txt

Also
http://lawcrawler.findlaw.com/script...es=findlaw.com
http://lawcrawler.findlaw.com/script...h&sites=wlegal
http://www.tms.org/pubs/journals/JOM...ters-9904.html

To my mind mydogs isn't a famous mark, not because it's a mixture of 2
words, but because it simply isn't famous. Putting "mydogs" into
Google doesn't bring up anything resembling a commercial page in the
first 5 (they *all* seem to be personal pages)

More importantly, www.mydogs.com brings up a domain parking page! And
the domain is held by a Korean outfit:

Whois info for, mydogs.com:
Registrant:
ARISU TECH
P.O.BOX.5
Unpyong-Gu
Seoul, 122-600
KR
Domain name: MYDOGS.COM

Administrative Contact:
Kim, Sooyong
P.O.BOX.5
Unpyong-Gu
Seoul, 122-600
KR
+82-502-110-1010 Fax: +82-502-808-0101

Technical Contact:
Kim, Sooyong
P.O.BOX.5
Unpyong-Gu
Seoul, 122-600
KR
+82-502-110-1010 Fax: +82-502-808-0101

Registration Service Provider:
ARISU TECH,
+82-502-110-1010
This company may be contacted for domain login/passwords,
DNS/Nameserver changes, and general domain support questions.

Registrar of Record: TUCOWS, INC.
Record last updated on 05-Aug-2002.
Record expires on 23-May-2004.
Record Created on 23-May-2002.

Domain servers in listed order:
NS.NOVANIC.COM 211.169.248.13
NS.CHOIS.COM 211.169.248.14


So, I don't think the OP need be too worried.

[I wrote]
>> IIRC there was a thread on this last year when Google started issuing
>> cease and desistage to all and sundry using their logo, and made
>> noises about not wanting "google" used as a verb, because they didn't
>> want their trademark to lapse through not defending it. IIRC also,
>> there was comment about this being standard practice to establish a
>> defence, but that they didn't intend to actually sue anyone.

>This is another example of what I was trying to say above. Google has
>become a verb as people refer to "googling" as a seach activity - which can
>only improve googles value as a search engine and hence the companies
>value.

The point I was making was not about recognition but about defending a
trademark. Google was willing to forego the recognition factor in
order to protect their trademark. It didn't do any good, as you can't
stop a meme once it's out of the bottle, but they had to be on record
as trying or they would lose any right to legal protection through
abandonment.

I never said the law wasn't crazy!

cheers

mark
--
"Someone's been mean to you! Tell me who it is, so I can punch him tastefully."
- Ralph Bakshi's Mighty Mouse

On Sat, 02 Aug 2003 12:39:22 +0000, Mark Harris wrote:


>>US Website, covered by freedom of speech act in the US. you would not be
>>able to register 'fordsucks.co.nz'
>
> You would be allowed to register it, but you might be buying a fight with
> Ford. If so, they might go after you for defamation, although it's
> debatable whether they'd win, on law, but their pockets would undoubtedly
> be deeper.

They'd be hard pressed. There's precedent already - ford took legal action
against ****generalmotors.com (which redirects to www.ford.com) and lost,
bigtime.

> While US law does not automatically set precedent in NZ, the Courts here
> are aware of decisions in other jurisdictions and do note them in their
> arguments and judgements.

Indeed, and it'd get even more interesting if the registrant is outside NZ.

Who remembers bastards.co.nz and the standover tactics on wisenet over it?

Chris Mayhew wrote:
> (Mark Harris) wrote in
> news::
>
>
>>On Thu, 31 Jul 2003 23:13:02 +1200, "T.N.O" <> wrote:
>>
>>ObDisclaimer: IANAL
>>
>>
>>>"Mark" wrote
>>>| Something like cocacola.co.nz or xerox.co.nz might be a
>>>| little tougher to hold on to..
>>>
>>>but who is to say that "mydogs" is not as good of a marketing name as
>>>"coke" or "xerox" all this is is personal opinion.
>>>
>>
>>There is a subset of trademark law that deals with "famous marks" -
>>coke or coca-cola might fall under that, as they are much better known
>>than "mydogs". I believe "xerox" (like cellotape or jello) does not,
>>as they were not initially defended and so lost their "famous mark"
>>status and now cannot be counted as a trademark, except in
>>circumstances of someone passing themselves off as the original. Xerox
>>is now used a generic term for a photocopy.
>>
>
> I don't know what this "subset" is that you are refering to but there is a
> difference between trademark names like "mydogs" and Xerox, Cellotape,
> Google, Coca-Cola etc and that is that "mydogs" is made up of 1 or more
> common english words unlike Xerox, Coca-Cola etc which are made up words
> Which had no meaning when they were introduced. The fact that Xerox has
> become a generic term is mostlikely related to the fact that describes an
> action i.e. it's used as a verb and started to used like this when there
> wern't to many brands of photocopyers on the market. In a case like this
> it is more likely to add to the value of the trade mark (?) on the bases
> that you can't "Coca-Cola" anything - it simply "is it"

Rolls-Royce have always gone to court over the none authorised
use of their name in adverts. It is used as an adjective or adverb
not a verb.

http://www.marketingprofs.com/2/dsouza5.asp
http://www.baldwins.co.nz/articles/website_issue.html

BTW in the UK nearly everyone says "photocopy" I have only
heard Americans and American wannabes use the term "Xerox". What
do most people says in in NZ?
Americans "vacume", Brits "hover", what do Kiwis do?
Strangly, the Germans have invented a new English word usage for "handy"
as the name for a "cell" or "mobile" phone. What is it called in NZ?

On Mon, 04 Aug 2003 02:27:32 +0000, "Uncle StoatWarbler"
<alanb+> wrote:
>On Sat, 02 Aug 2003 12:39:22 +0000, Mark Harris wrote:
>
>Indeed, and it'd get even more interesting if the registrant is outside NZ.
>
>Who remembers bastards.co.nz and the standover tactics on wisenet over it?

IIRC the domain was www.c**t.co.nz and either Telecom or LTSA objected
to it being redirected to their website

DPF
--
Blog: http://www.kiwiblog.co.nz
E-mail:
ICQ: 29964527
MSN:

On Mon, 04 Aug 2003 17:12:42 +1200, pbs
<> wrote:

[snip>
>BTW in the UK nearly everyone says "photocopy" I have only
>heard Americans and American wannabes use the term "Xerox". What
>do most people says in in NZ?

Both. I'd say photocopy is a little ahead, but I've used both
interchangebly.

>Americans "vacume", Brits "hover", what do Kiwis do?

Both, and lux as well (Electrolux was a big seller here)> Personally,
I do the vacuuming, and so does my wife (English born, but here since
aged 10).

>Strangly, the Germans have invented a new English word usage for "handy"
>as the name for a "cell" or "mobile" phone. What is it called in NZ?
>
cellphone, mobile, "turn that frickin' thing off!" (when in cinemas

--
"Someone's been mean to you! Tell me who it is, so I can punch him tastefully."
- Ralph Bakshi's Mighty Mouse

DPF wrote:
> On Mon, 04 Aug 2003 02:27:32 +0000, "Uncle StoatWarbler"
> <alanb+> wrote:
>
>>On Sat, 02 Aug 2003 12:39:22 +0000, Mark Harris wrote:
>>
>>Indeed, and it'd get even more interesting if the registrant is outside NZ.
>>
>>Who remembers bastards.co.nz and the standover tactics on wisenet over it?
>
>
> IIRC the domain was www.c**t.co.nz and either Telecom or LTSA objected
> to it being redirected to their website

The privatised British Electricity utility now called Powergen UK Plc,
back in June, had to deny that it was in any way connected to a battery
manufacturer of the same name in Italy who had chosen to call their web
site: http://www.powergenitalia.com
See: http://www.snopes.com/business/names/powergen.asp

Andrew wrote:
> Dont Telecom have "yellow"

Well they have "yellow pages", and they only have the colour yellow when
it's related to the paper of printed telephone directories.

Guess that depends on the program your using to read with.... with outlook
its easy

"Uncle StoatWarbler" <alanb+> wrote in message
news.. .
> On Fri, 08 Aug 2003 08:34:11 +1200, Andrew wrote:
>
> > Dont Telecom have "yellow"
>
> They have a trademark on the _colour_ yellow.
>
> "Yellow pages" is a trademark of Brutish Telecom
>
>
> BTW, don't top post, it's hard to read.
>
>

On Fri, 08 Aug 2003 08:34:11 +1200, Andrew wrote:

> Dont Telecom have "yellow"

They have a trademark on the _colour_ yellow.

"Yellow pages" is a trademark of Brutish Telecom


BTW, don't top post, it's hard to read.