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

George Kirikos icann at leap.com
Thu Nov 30 16:03:33 UTC 2017


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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