[gnso-rpm-wg] TMCH review objectives

Doug Isenberg disenberg at gigalawfirm.com
Mon Sep 26 18:43:52 UTC 2016

Whether a trademark is legally “famous” may depend upon the laws of the relevant jurisdiction.  Under U.S. law at least, here is the definition of a “famous” trademark:


a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii) The extent of actual recognition of the mark.


This definition applies to claims under the Anticybersquatting Consumer Protection Act.





From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul at law.es ZIMBRA
Sent: Monday, September 26, 2016 2:37 PM
To: Salvador Camacho Hernández <salvadorcamachohernandez at gmail.com>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] TMCH review objectives




I would like to correct your statement.


A "famous" trademark is one that transcends the specific classes of goods/services for which it was originally registered so as to be a recognized source indicator for other unrelated goods/services.  It may be so famous as to effectively preclude a third party from using the same mark on unrelated goods/services.   Think NIKE registered for sports gear now being applied to cars or Catapillar (tractors) as applied to shoes, pants etc....

Paul Keating

On 26 Sep 2016, at 8:12 PM, Salvador Camacho Hernández <salvadorcamachohernandez at gmail.com <mailto:salvadorcamachohernandez at gmail.com> > wrote:

Hello everybody,


I just want to say that according to Paris Convention a trademark become famous when it's recognized and determined as one from jurisdiction to jurisdiction and no when the rights holder believes or perceives it. Not even a Panelist in a UDRP/LDRP procedure could determine if the trademark is famous or not.


Best regards,





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