Re: ICANN to allow commercial gTLDs

[Owen DeLong <owen () delong com>]

On Jun 17, 2011, at 8:39 PM, Jay Ashworth wrote:

> ----- Original Message -----
> > From: "Owen DeLong" <owen () delong com>
>
> > MacDonald's would likely get title to .macdonalds under the new rules,
> > right?
> >
> > Well... Which MacDonald's?
> >
> > 1. The fast food chain
> > 2. O.C. MacDonald's Plumbing Supply
> > 3. MacDonald and Sons Paving Systems
> > 4. MacDonald and Madison Supply Company
> > 5. etc.
> >
> > All of them have legitimate non-conflicting trademarks on the name MacDonald's
> > (or at least could, I admit I made some of them up). I said when this mess
> > first started that mapping trademarks to DNS would only lead to dysfunction.
> > It did. Now the dysfunction is becoming all-encompassing. It will be 
> > interesting to watch the worlds IP lawyers (IP as in Intellectual Property,
> > not Internet Protocol)
> > eat their young over these issues for the next several decades.
>
> Indeed.
>
> It's actually "McDonalds", of course, and the US trademark law system has
> a provision for "famous" marks.  I don't recall what the rules are, but 
> once they've decide your mark is "famous", then it no longer competes only
> in its own line-of-business category; *no one* can register a new mark in 
> any category using your word.

While that is true, there are several McDonalds registered in various spaces
that actually predate even the existance of Mr. Crok's famous burger joints.

> Coca-Cola, Sony, and I think Kodak, are the canonical examples of a
> famous mark.

Let us not also forget the over-extension of that situation, as applied to Jell-O
where there are now very bizarre rules about who can and can't refer to just
any gelatine dessert as Jell-O.

Owen