Archive for March, 2008
« Older Entries | Newer Entries »Motion to end Domain Tasting
Tuesday, March 11th, 2008
As an update to an earlier post regarding domain name tasting, ICANN’s GNSO Council invites public comments and constituency impact statements regarding its draft proposal to curb domain tasting. Under the proposal, any gTLD operator that has implemented an add grace period (“AGP”) would be prohibited from offering a refund for any domain name deleted during the AGP that exceeds 10% of its net new registrations for a month, or 50 domain names, whichever is greater. The proposal also provides that an operator may seek an exemption for a particular month, upon documented showing of extraordinary circumstances. As well, the draft proposal states that ICANN staff will monitor implementation and execution of the recommendations. (For more information about domain tasting, see the GNSO Initial Report.)
The period for public comment closes March 28, 2008 and the GNSO Council will incorporate such comments into a further draft motion for the Council’s April 17, 2008 meeting.
Posted in Domain Name Disputes | Comments Off
Change You Can Xerox
Friday, March 7th, 2008
When Hillary Clinton recently accused presidential rival Barack Obama of political plagiarism by describing him as the candidate of “change you can Xerox“, trademark lawyers at Xerox Corporation winced. For years, Xerox has fought against the genericisation of the Xerox brand and trademark. A genericised trademark is a trademark or brand name that has become the colloquial or generic description for a particular class of product or service. The generic use of the term “Xerox” as a verb in place of the word photocopy, diminishes the value of the Xerox trademark in the marketplace and can result in the loss of intellectual property rights by the trademark holder. In the past, Xerox Corporation has attempted to police its brand use by launching advertising campaigns promoting the “Xerox machine” and has been successful in protecting the trademark in Canada and the United States. The brand has, however, become generic in Russia, Bulgaria, Portugal and Romania. Aspirin, Band-Aid and Thermos are also examples of brands which became victims of brand genericisation.
Under Canadian trademark law, a trademark should never be used as a noun (whether in singular, plural or possessive form) or as a verb. Every day phrases such as “I need a Kleenex” should be discouraged as the correct use of the trademark is “I need a Kleenex tissue”. It may seem natural and even beneficial from a marketing perspective to use the trademark as a noun or verb. Many like to have their trademark considered synonymous with the wares or services with which it is associated. However, certain trademarks, through misuse by their owners and others, have passed into the English language by becoming generic terms. The brands Escalator, Jacuzzi, Linoleum and Tabloid were all once trademarks of a specific product but are now generic terms commonly used to describe a product category. The use of a brand name as part of the English language, or any language should always be avoided to prevent genericisation of the trademark.
Posted in Branding | 1 Comment »
Canadian Intellectual Property Office News
Thursday, March 6th, 2008
Good news from the Canadian Intellectual Property Office: in an announcement posted to their website yesterday, CIPO advised that it will soon be making information concerning the status of both Section 45 proceedings and Opposition proceedings available online.
Currently, CIPO’s database provides limited information to the public respecting Trademark Opposition proceedings, setting out only the names of the Opponent and their counsel, and the date the Opposition was filed. The situation for Section 45 (or summary cancellation) proceedings is worse for those, the database indicates only the name of the Section 45 Requestor and their counsel, and does not even indicate when the Section 45 request was issued. In neither case is information about the current stage of the proceeding available through the database; for a member of the public to get such information they would have to perform a manual review of the physical file located at CIPO’s office in Gatineau, Quebec.
The addition of further information relating to these proceedings will permit interested third parties to make better informed decisions concerning the mark(s) at issue, allowing them to consider the impact such proceedings may have on their own interests. While CIPO has a long way to go before matching the standards set by the USPTO Trademark Office and its excellent Trademark Document Retrieval system, this step is an important one and CIPO should be applauded.
Posted in Protection & Enforcement, Registration, Trade-mark Oppositions | Comments Off