NetNews Usenet Archive 1992 #31/NN_1992_31.iso/spool/comp/os/vms/20251

Internet Message Format | 1993-01-03 | 3.8 KB

Path: sparky!uunet!spool.mu.edu!agate!ucbvax!CU.NIH.GOV!FZC
From: [e-mail] ("Paul Robinson, Contractor")
Newsgroups: comp.os.vms
Subject: The VAX Vacuum
Message-ID: <[e-mail]>
Date: 4 Jan 93 01:44:44 GMT
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The issue of the VAX vacuum vs. VAX computers and the
trademark isn't significant except to the extent Digital
might have wanted to sell their computer in the same
countries as that other company had been selling vacuums.

Until last year, in the U.S. a trademark/servicemark is owned
ONLY by the first party to USE it in a particular country.  This
meant that legally, if DEC had used VAX in the U.S. before that
other company used the term for its vacuum cleaners in the U.S.,
it could prevent that company from selling vacuums under that
name in the U.S.  It does not matter that someone was selling
under that name earlier in the U.K.; only the first user in a
particular country has first rights to the mark.

Recently, the U.S. went to a limited "first to file" which gives
someone ownership of a mark based on filing an application, and
they then have six months to actually use the mark, or to renew
the intent to use application, which they are permitted to do
for up to three years.  But their filing won't mean anything if
someone else was, before they filed, actually using the mark in
the United States.

And first to file has problems too.  A U.S. soldier during World
War II was kind of bored while on leave in various countries, so
he filed trademark applications in the various countries he
visited for some well-known U.S. products.  Those countries had
"first to file" laws, i.e. whoever registers a mark owns the mark
even if they never use it.

When the original owners of these marks started to export into
these foreign countries, they were stopped by customs at the
border, because someone else - that serviceman - owned the mark
in that country, and they were infringing on his registered
mark(s)!  This probably caused some nasty scenes and possibly
some of these companies either paid off the serviceman or paid
off the legislature(s) in these countries, but it shows what
happens when someone else gets there first.

Donald Trump is in a mess of trouble because he named his casino
"The Taj Mahal" after knowing that a guy who owns a restaurant
in Washington, DC, had already registered the identical mark for
his restaurant with the Patent and Trademark office.  Now this
restaurant owner is suing Trump over servicemark infringement.

There is probably no chance of confusing the two; the court might
decide that the PTO was wrong and allow Trump's organization to
register the identical mark and restrict him to use in the New
York/New Jersey/Connecticut area.  They may decide that the mark
should not have been used and order it changed.  Or the
restauranteur may get smart and take a few hundred thousand to
sell his mark to the Trump people.  But they (the Trump people)
should have known better than to try and use an identical
registered mark; he could suffer worse as the courts might
impose punitive damages because of his arrogance.

Suffice to say that a mark is only protected in the countries
where registered or used depending on local law.  Use or
registration in another country is irrelevant except to give
someone the right to use date of registration in another country
on an application filed here.  VAX being used in the U.K. would
have been irrelevant to the use of the term in the U.S.

Probably since the vacuum company wanted to sell here that they
made an agreement over the term, or possibly DEC might have
decided it would want to sell VAX computers in the U.K.
---
Paul Robinson -- [e-mail]
These opinions are mine alone