[gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong?

Scott Austin SAustin at vlplawgroup.com
Mon Dec 4 19:52:54 UTC 2017


George:
I concur with Georges and Cyntia's comments. You have to limit the article in its perspective as to time and purpose. John Welch's blog is an excellent resource on trademark law, as is his expertise, so you should consider the comments he makes at the end of the item you linked. First he notes the professors' article revolves around a decision and its doctrine that was handed down by the Federal Circuit in 1992 (Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992)). Clearly a pre-Internet decision. The "Kenner Doctrine" as they refer to it and challenge as overbroad because it uses the word "always" (as in "stronger marks always deserve broader protection") was a doctrine created in an environment of terrestrial based competition and consumers.

John also notes that the doctrine the professors' article questions "disavowed" an even earlier 1988 Federal Circuit decision (B.V.D. Licensing Corp. v. Body Action Design Inc., 6 U.S.P.Q.2d 1719 (Fed. Cir. 1988) ("The better known [a mark] is, the more readily the public becomes aware of even a small difference."). That case, he comments, essentially narrowed the application of a broader doctrine  applied in a 1962 decision (In re General Electric Co., 134 U.S.P.Q. 190 (C.C.P.A. 1962) denying likelihood of confusion because  "the human mind has little difficulty differentiating between the familiar and the unfamiliar."  Clearly all of the decisions that form the basis of the article you shared questioning the scope of protection for "superstrong" marks under the Kenner Doctrine are from a time where confusion was being considered in a terrestrial-based environment of competition and communication under predominantly one language, one culture and one jurisdiction for trademark registration. Internet based concepts like cybersquatting, typo-squatting, initial interest confusion, and hundreds of growing new TLDs, as well as other harms referenced in Georges email, did not exist.

The authors themselves state their claim regarding the relationship between trademark strength and protection was limited:    "To emphasize again, we are not arguing that as trademark strength increases, the positive relation *always* turns negative at some point. We do not wish to make the same mistake as current doctrine by making such a sweeping claim. . . . Instead, our more limited claim is that the traditional confusion-based rationales for the positive relation between trademark strength and scope cannot support the oft-rehearsed all-purpose empirical claim that increased strength should *always* result in an increased scope of protection."

Thus, even the authors agree there are times when stronger marks may in fact be deserving of a broader scope of protection, at least in a non-Internet environment. The real issue the article brings us back to in context, and that we have to deal with on the RPM WG is What is the appropriate scope of protection that applies today, not in a terrestrial-based 1992 competitive environment, but in a post 1992 Internet-based world where likelihood of confusion occurs among consumers in a globally expanded competitive environment of multiple languages, cultures and registration jurisdictions confronting marks and their counterfeits at an ever faster pace.

John's comments from his TTABlog(R) I have relied on are set forth below so that other RPM WG members can reach their own conclusions:

[Begin TTABlog Comment]<<Paul, the article revolves around the Federal Circuit's decision in the PLAY-DOH case (Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992)). Indeed, the authors state (page 1341): "We call the conventional wisdom that stronger marks always merit broader protection the Kenner doctrine, after the case that is most responsible for its perpetuation." Of particular note, the authors do not make a blanket anti-Kenner statement to the effect that their "Inverted U" diagram will *always* apply to what they call "superstrong marks." Instead, they are careful to point out (page 1370):

"To emphasize again, we are not arguing that as trademark strength increases, the positive relation *always* turns negative at some point. We do not wish to make the same mistake as current doctrine by making such a sweeping claim. . . . Instead, our more limited claim is that the traditional confusion-based rationales for the positive relation between trademark strength and scope cannot support the oft-rehearsed all-purpose empirical claim that increased strength should *always* result in an increased scope of protection."

I agree with the authors' basic position. The Federal Circuit's decision in Kenner essentially disavowed a decision issued by that court four years earlier in B.V.D. Licensing Corp. v. Body Action Design Inc., 6 U.S.P.Q.2d 1719 (Fed. Cir. 1988), in which Judge Rich stated, "The fame of a mark cuts both ways with respect to likelihood of confusion. The better known it is, the more readily the public becomes aware of even a small difference."

The odd thing to me, and something not mentioned by the authors (unless I missed it), is that the reasoning of B.V.D. was essentially just a specialized application of a broader doctrine long employed by the CCPA, namely that people readily distinguish between familiar and the unfamiliar. In In re General Electric Co., 134 U.S.P.Q. 190 (C.C.P.A. 1962), the court found no likelihood of confusion between the marks VULKENE and VULCAN (writing before Star Trek appeared):

"VULCAN is, we think, a name well-known to the American people. Most of them may not know, or remember if they knew, just who Vulcan was (in Roman mythology he was the God of Fire and of the arts of forging and smelting) but we think the name is commonly recognized as the name of some mythological character or deity. Anyone confronted with it, in other words, would recognize it as something already known--it would not impress itself on his consciousness as anything new or strange, but rather as something familiar. VULKENE, on the other hand, is not such a name or word. As the board itself said, VULKENE is 'an arbitrary and coined word.' We consider this to be a point of great significance, and one which neither the examiner nor the board appears to have treated as significant. We entirely agree with appellant that 'the human mind has little difficulty differentiating between the familiar and the unfamiliar.'"

The Board follows this line of cases (of course), and in fact just last week cited General Electric in finding no likelihood of confusion between the marks Q’SAI and SAI in Serial No. 79157321.

I believe the B.V.D. case was simply applying General Electric's broad reasoning to a situation involving a "superstrong mark" (to use the authors’ term). That is, the CCPA believed VULCAN was a “name well-known to the American people” such that consumers would recognize the differences between it and VULKENE. And that’s exactly what Judge Rich was saying in 1988: that B.V.D. was so well recognized that consumers would recognize the differences between it and the mark B.A.D. I think General Electric and its progeny support the authors' contention that a mark can become so ingrained in the public's mind that, under some circumstances, it may mean the universe of conflicting marks contracts.>>[End of TTABlog Comment]

Best regards,
Scott

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Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP
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-----Original Message-----
From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
Sent: Thursday, November 30, 2017 11:04 AM
To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: [gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong?

Hi folks,

There was a very interesting academic article mentioned last week on The TTABlog:

https://linkprotect.cudasvc.com/url?a=http://thettablog.blogspot.ca/2017/11/profs-beebe-and-hemphill-scope-of.html&c=E,1,Fh81x-KiwAAAVz90L8xlZj00MdTzcliCalbTdgZCUMdl2kIRmNh61nRwrJMW9q26jcdDaWteErBn8ukjHlInRGjkQRZ2FdH4_tZvIA,,&typo=1

from the New York University Law Review by Professors Beebe and Hemphill,  "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November
2017) [PDF with the full paper is linked to on the blog] which challenges conventional wisdom that underlies some of our own work.

In their view, the scope of protection for the superstrong marks (e.g.
the most famous ones, which tend to be the greatest beneficiaries of the RPMs created by ICANN, e.g. TMHC, URS, UDRP, etc.) should be **lower***, not higher.

"n this article, we challenge this conventional wisdom. We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks. If we are correct, then numerous trademark disputes involving the best-known marks should be resolved differently—in favor of defendants. Our approach draws support from case law of the Federal Circuit—developed but then suppressed by that court—and numerous foreign jurisdictions."

These fresh insights should be kept in mind as we do our work, particularly as they draw from cutting edge research and cases from outside the USA.

Sincerely,

George Kirikos
416-588-0269
https://linkprotect.cudasvc.com/url?a=http://www.leap.com/&c=E,1,ssMKHWaIs5477EhfFqs1URcaYyOpqzHQQ6xdzMaas_ebn1TZNgckBtyB7GWkiPusF6OmSrSDtevXCM4oCDbIHYhuO-LkomtIoNXBAlTDIBp-C8TO&typo=1
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