| CD Solutions, Inc. received a
final judgment on May 19, 1998 from the United States
District Court for the District of Oregon that its domain
name "cds.com" does not infringe U.S. Trademark
Registration No. 2,006,249 for "CDS." CD
Solutions, Inc. is a business that specialized in the
manufacture and sale of compact discs (also called CDs)
according to Jerald R. Warner, president of the
firm. CD Solutions, Inc. uses the domain name
"cds.com" to market what it does, which is
to manufacture and sell CDs on the
Internet. In fact, according to Mr. Warner,
"the domain name ‘cds.com’ has been integral in
attracting people to our website by describing our
CD-related products and services."
In early 1997, the owner of Trademark Registration No.
2,006,249 accused CD Solutions, Inc. of causing confusion
with its trademark for "CDS". U.S.
Trademark Registration No. 2,006,249 for "CDS"
is limited to desktop publishing services. An
informal complaint was filed by the owner of the U.S.
Trademark Registration No. 2,006,249 in an attempt to
block CD Solutions, Inc.’s use of the domain name
"cds.com" on the Internet. Convinced there
could be no confusion between the parties’ services, CD
Solutions, Inc. fought the attempt to block its domain
name use on the Internet and filed a complaint with the
federal court to obtain a declaration that the domain name
"cds.com" for CD products and services was not
covered by Trademark Registration No. 2,006,249.
D.
Scott Hemingway of Jones,
Day, Reavis, &Pogue in Dallas, Texas, represented
CD Solutions, Inc. and argued before the District of
Oregon that Trademark Registration No. 2,006,249 should
not be used to preclude the everyday use of the term CDs
for compact discs. In response to this argument, the
District of Oregon held that there could be no trademark
infringement from the use of "cds.com" to market
CD products and services, and the Court went on to state
that the attempt to cover CD-related products and services
with Trademark Registration No. 2,006,249 "renders
the mark invalid as being generic". "From
the very beginning of this dispute, we firmly believed
that no one should be allowed to preclude the everyday use
of a term like CDs for compact discs," said Mr.
Hemingway, "and the District of Oregon agreed with us
100%."
Want a transcript of the proceedings as
seen by the court? Here
it is!
For more information check out The
Domain Name Handbook, or contact:
Jerald R. Warner
1-800-860-CDROM (2376)
D.
Scott Hemingway now working at The
Law Offices of D. Scott Hemingway
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