The VAX Vacuum
Paul Robinson, Contractor
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 -- TDA...@MCIMAIL.COM
These opinions are mine alone
Carl J Lydick
>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.
Doesn't make any difference anyway. YOU CAN'T USE AN ADJECTIVE AS A TRADEMARK.
You *CAN* use an implicit noun, however. So DEC has a trademark of "VAX
[computer]," where the "computer" is an implicit noun. The vacuum cleaner
manufacturer's tradmark is "VAX [vacuum cleaner]." Since the trademarks
(including implicit nouns) are different, there's no trademark conflict.
>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.
'Fraid not. Unless DEC were willing to claim that they'd intended that you
hook up a hose to the intake for the cooling fans, and use the computer as a
vacuum cleaner.
--------------------------------------------------------------------------------
Carl J Lydick | INTERnet: CA...@SOL1.GPS.CALTECH.EDU | NSI/HEPnet: SOL1::CARL
Disclaimer: Hey, I understand VAXen and VMS. That's what I get paid for. My
understanding of astronomy is purely at the amateur level (or below). So
unless what I'm saying is directly related to VAX/VMS, don't hold me or my
organization responsible for it. If it IS related to VAX/VMS, you can try to
hold me responsible for it, but my organization had nothing to do with it.
col...@bronco.fnal.gov
> 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.
>
I think the vacuum company has promised not to make computers and
DEC promised not to make anything that sucks. :-)
--
___________________________________________________________________________
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* ** * Fermi Nat'l Acc'l Lab 708-840-8225 Fermilab * * *
*** * * * P.O. Box 500 MS 369 Feynman Computer Center ***** *
* * ** Batavia, Ill. USA 60510 Col...@fnal.fnal.gov * * *****
* Of course I speak for: Fermilab, Congress and the President... NOT!!!
t_w...@vms.eurokom.ie
> 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.
Can't the same name be used for totally different things ? For example,
if you brought out a new computer and called it a MAC, you would probably
have Apple after you. If, however, your new product was a hamburger, you
might get a call from McDonalds.
True story: The makers of the VAX vacuum cleaner brought out a new smaller
model a couple of years ago. They decided to call it ......
the MiniVAX (a major marketing opportunity lost there :-( )
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Paul S. Winalski
In article <930104015...@ucbvax.Berkeley.EDU>,
F...@CU.NIH.GOV ("Paul Robinson, Contractor") writes:
|>
|>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.
However, US trademark law also allows the same word or phrase to be used as a
trademark as long as the marks are used in distinct markets and the proverbial
legal "reasonable person" has no difficulty distinguishing between the two uses.
The VAX vacuum cleaners and VAX computer systems are in such distinct markets
and so there is no problem. If DEC ever decides to manufacture household
cleaning equipment, though, we'll have to choose a different name for it.
--PSW
Michael Nowacki I.T. Database Contractor
This is exactly what happend to Apple Computer last year: release of music
editing software invoked an earlier agreement with Yoko Ono, executor of the
estate of John Lennon, whereby Apple Computer could use the trademark "Apple"
as long as they don't get into the music business. I think it cost Apple
a few million bucks.
FRED W. BACH
#In article <930104015...@ucbvax.Berkeley.EDU>, F...@CU.NIH.GOV ("Paul Robinson, Contractor") writes:
#
#> 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.
#>
#I think the vacuum company has promised not to make computers and
#DEC promised not to make anything that sucks. :-)
Well, then I suppose the 2000 is going to get them sued. ;-)
# ***** * * From the e-net desk of: Rick Colombo CD/DCD/DSG * *
# * ** * Fermi Nat'l Acc'l Lab 708-840-8225 Fermilab * * *
Fred W. Bach , Operations Group | Internet: mu...@erich.triumf.ca
TRIUMF (TRI-University Meson Facility) | Voice: 604-222-1047 loc 327/278
4004 WESBROOK MALL, UBC CAMPUS | FAX: 604-222-1074
University of British Columbia, Vancouver, B.C., CANADA V6T 2A3
These are my opinions, which should ONLY make you read, think, and question.
They do NOT necessarily reflect the views of my employer or fellow workers.
Phill Hallam-Baker
|>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.
|>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.
First to use has the same problem. A certain brewery decided to name it's
product after a famous beer in Chezch. It then went on the be one of the biggest
selling beer substitues in the US, it's called Budwiezer. Only in most of Europe
it can't be sold under that name (apart from the fact that nobody would want to
buy it).
|>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.
Only since the Taj Mahal is a very common name for Indian Restaurants, Trump
probably has had no difficulty in showing prior use.
Most countries are sensible enough to have obvious use clauses. For instance DEC
cannot trademark Alpha, Sinclair could not patent Spectrum. On the other hand
there are common laws against passing off. If I were to put an IBM Pc in an
alpha AXP type box and call it an Alpha I could be done for passing off unless I
made it clear that what I was not what the customer expected by an Alpha.
--
Phill Hallam-Baker