On Sat, 4 Jun 2005, Larry Seltzer wrote:
A five-second search on uspto.gov shows that DomainKeys was registered by
Yahoo over a year ago.
The question is about these people (http://www.domainkeys.com/) who claim to
have been using the term since 1999. The creation date for that domain is
02-sep-1999. I guess maybe they never actually registered the trademark, and
I don't know the law in cases like this.
It all depends on the reasons USPTO gave Yahoo for declining to register
their trademark and how they formulated the response. If domainkeys.com
use was one of primary reasons (I suspect it was) and there is nobody else
that used the term prior to yahoo's filing then it would be seen in the
eyes of USPTO that yahoo is trying to steal the name by means of trademark
application and it would open the door for domainkeys.com to file their
own trademark application on the same name which may well be granted and
trademark registered, given all this history.
So that it is not registered right now, does not mean it can not be and
as such this is a time-bomb and and their statement on the site should be
taken very seriously. But obviously IANAL and its up to lawyers for IETF
and yahoo to decide what to do with this situation. I would however
encourage yahoo to give us more details and make email responses by USPTO
office attorney(s) public so we would be aware of what considerations
should be given to if domainkeys can be considered common term or not.
--
William Leibzon
Elan Networks
william(_at_)elan(_dot_)net