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

[Cyntia King]

Hi George,
Cool article!I don't believe it applies to the RPM WG, tho.The article is about confusion between similar, but REGISTERED (ie legal) trademarks.The RPMs focus on bad faith actors.
The article supports TM owners acting legally, not bad actors.While interesting, this isn't really pertinent to us.
Cyntia King

-------- Original message --------
From: George Kirikos <icann at leap.com> 
Date: 11/30/17  10:03  (GMT-06:00) 
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:

http://thettablog.blogspot.ca/2017/11/profs-beebe-and-hemphill-scope-of.html

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
http://www.leap.com/
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