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

Thu Nov 30 16:54:58 UTC 2017

Georges: I actually did read the article, thank you very much. It's
another input into our work that should not be dismissed so easily.
Unlike the questionable INTA study that has been presented to this
PDP, this academic article was published in a serious peer reviewed
academic law journal.

It challenges conventional dogma, which might make some uncomfortable
who rely on that dogma, but is a well reasoned work in my view.

Conventional ICANN wisdom is that sunrise periods are needed (indeed,
it's a policy), despite the fact that it's mostly the most famous
brand owners who utilize them --- the ones the article argues need
less protection, not more protection.

For the URS, there have only been less than 1000 cases in total. It
might be interesting to actually measure (by going through all cases
manually) what percentage of the marks are "superstrong", to get a
sense of whether the policy is geared towards those marks that the
authors suggest need fewer protections.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Thu, Nov 30, 2017 at 11:43 AM, Nahitchevansky, Georges
<ghn at kilpatricktownsend.com> wrote:
> George K
>
> You may want to read the article.  The issue they are discussing is somewhat different from what we are considering here in many instances.  The point is really about the protection afforded to a famous work versus a competitor who comes into the marketplace with another mark for a competing product.  A large part of the articles discusses and circles around the well-known Kenner case which concerned the marks PLAY-DOH versus FUNDOH for modeling compounds and the evaluation of likelihood of confusion regarding such.  In the domain name world, by contrast, a huge problem has been the use of domain names based on the identical mark of another and then held or used for profit.  There are well documented abuses involving phishing, fraud, passing off as connected to a brand owner, malware delivery, competitors offering the same services using the brands of others, typosquatting, holding names for resale at exorbitant prices  etc.   The types of abuses in the domain name world often center on the actual use of another's identical or quite similar name or brand.  The RPMs were created to address these types of abuses, which are staggeringly expensive, for brand owners and ultimately consumers.  In that regard, keep in mind that many consumers are defrauded on a daily basis by schemes that involve domain names based on the names and marks of others.  I think Greg and others collected a long list of articles on the issue.  So, in my mind, the RPMs also function as a way to help protect consumers.  This article that you reference, while academically interesting, does not really look at the primary issues we have to deal with in terms of domain name abuses.
>
> Georges N
>
>
> -----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:
>
> 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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