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/
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@icann.org] On Behalf Of George Kirikos Sent: Thursday, November 30, 2017 11:04 AM To: gnso-rpm-wg <gnso-rpm-wg@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/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
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@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@icann.org] On Behalf Of George Kirikos Sent: Thursday, November 30, 2017 11:04 AM To: gnso-rpm-wg <gnso-rpm-wg@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/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner.
________________________________
***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
George K You miss the point. You are taking a square peg and trying to fit it into a round hole so that it fits your narrative. If you read the article, then you understand that the article didn't consider online counterfeiting and the numerous domain name brand abuses that are well documented. The INTA survey, which you obviously loathe because it actually detracts from your narrative, is far more useful in analyzing the RPMs for domain names. But I understand that anything that might show why the RPMs are helpful or useful will always be flawed in your view. If your baseline is to get rid of every RPM, then there can never be anything that remotely supports the need for RPMs to be considered valid. The point on the URS having less than 1000 cases is valid to the extent it shows that people are not using it as much as we might like. Perhaps one reason for that is that it only provides a temporary solution, can be gamed and can ultimately end up in costing as much or more than a UDRP. So perhaps we ought to focus on how to improve the URS and making it more useful. Look, you and I are not going to agree on the basic point that there needs to be RPMs. I have invited you on several occasions to work with me and others to find constructive solutions to improve the system (e.g. to prevent gaming etc.). You have never taken me up on this so I assume your answer is no and that what you want to do is to continue arguing for scrapping the system altogether. So be it, but then we will likely be doing this for months or years to come as opposed to finding creative and useful solutions for improving a system that others spent years debating to put in place. Put another way, this RPM should be about improving the tools that are already in place and not be a forum for re-litigating issues that were discussed ad nauseum years ago (and basically making the same arguments yet again). My sense is that most in the WG would like to move forward and get something done rather than keep on debating the same issue. Georges N -----Original Message----- From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, November 30, 2017 11:55 AM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong? 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@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@icann.org] On Behalf Of George Kirikos Sent: Thursday, November 30, 2017 11:04 AM To: gnso-rpm-wg <gnso-rpm-wg@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-o f.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/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner.
________________________________
***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
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Dear All, I would like to share with you the following thoughts. Although URS dispute numbers are far lower than those of UDRP, such difference is attributable: a) on one hand, to the differences between the two proceedings, in particular to: - the applicability (URS: all new gTLDs, certain legacy gTLDs: .cat, .jobs,.mobi, .pro, .travel, .xxx and some ccTLDs: pw; UDRP: to all gTLDs (legacy e new) as well as to numerous ccTLDs) - the scope (complement the UDRP and not to replace it) - the remedy provided for by the two rulesets (URS: temporary suspension; UDRP: transfer or cancellation) and - certain other provisions of the rules (to be used only in case of clear-cut cases of trademark infringement and the strict burden of proof) b) on the other hand to the fact that, due to the vast number of new extensions available for registration, most of the cybersquatting cases involve domains registered under various strings in which the second-level domain is identical to the Complainants’ trademarks. Therefore, Complainants prefer having the domain name corresponding to their mark in their domain name portfolio instead of having them suspended without possibility to own, control, use or transfer such domains. Notwithstanding certain limitations mentioned above, the URS might be a useful RPM for trademark owners who are in search of an imminent solution against the phenomenon of cybersquatting. I regret that I could not attend the call of this morning (too early for my timezone) and unfortunately I will be traveling during the call of next week. Kind regards. Ivett Ivett Paulovics URS Domain Dispute Case Manager --- MFSD Srl | IP Dispute Resolution Center Via Giorgio Washington, 50 | 20146 Milano (Italy) T +39 02 45506624 | F +39 02 91471087 M +39 329 2596103 urs@mfsd.it <mailto:responsabile@mfsd.it> | https://urs.mfsd.it <https://urs.mfsd.it/> Skype mfsd.urs P. Iva 04810100968 (Italian VAT) ------------------------------------------------------------------------- URS Domain Dispute Resolution Service Provider approved by ICANN .it Domain Dispute Resolution Center accredited by Registry .it IP Mediation Center authorized by Italian Ministry of Justice (no. 903) IP Mediation Training Center authorized by Italian Ministry of Justice (no. 392)
Il giorno 30 nov 2017, alle ore 18:28, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> ha scritto:
George K
You miss the point. You are taking a square peg and trying to fit it into a round hole so that it fits your narrative. If you read the article, then you understand that the article didn't consider online counterfeiting and the numerous domain name brand abuses that are well documented. The INTA survey, which you obviously loathe because it actually detracts from your narrative, is far more useful in analyzing the RPMs for domain names. But I understand that anything that might show why the RPMs are helpful or useful will always be flawed in your view. If your baseline is to get rid of every RPM, then there can never be anything that remotely supports the need for RPMs to be considered valid.
The point on the URS having less than 1000 cases is valid to the extent it shows that people are not using it as much as we might like. Perhaps one reason for that is that it only provides a temporary solution, can be gamed and can ultimately end up in costing as much or more than a UDRP. So perhaps we ought to focus on how to improve the URS and making it more useful.
Look, you and I are not going to agree on the basic point that there needs to be RPMs. I have invited you on several occasions to work with me and others to find constructive solutions to improve the system (e.g. to prevent gaming etc.). You have never taken me up on this so I assume your answer is no and that what you want to do is to continue arguing for scrapping the system altogether. So be it, but then we will likely be doing this for months or years to come as opposed to finding creative and useful solutions for improving a system that others spent years debating to put in place. Put another way, this RPM should be about improving the tools that are already in place and not be a forum for re-litigating issues that were discussed ad nauseum years ago (and basically making the same arguments yet again). My sense is that most in the WG would like to move forward and get something done rather than keep on debating the same issue.
Georges N
-----Original Message----- From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, November 30, 2017 11:55 AM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Is conventional wisdom that the strongest trademarks deserve greater protection simply wrong?
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@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@icann.org] On Behalf Of George Kirikos Sent: Thursday, November 30, 2017 11:04 AM To: gnso-rpm-wg <gnso-rpm-wg@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-o f.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/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner.
________________________________
***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Georges: Not responding to every point, because our mutual positions are clear, however: On Thu, Nov 30, 2017 at 12:28 PM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
George K
The INTA survey, which you obviously loathe because it actually detracts from your narrative, is far more useful in analyzing the RPMs for domain names. But I understand that anything that might show why the RPMs are helpful or useful will always be flawed in your view.
That's not true at all. It's simply a poorly done survey, period, with results that are statistically invalid, due to the small sample size and other reasons that were previously discussed. Had they done a proper survey, the results would be much harder to challenge, and could stand up to scrutiny. A survey of 33, that is also not representative? That's laughable (and I showed the court precedents that laughed along with me at that kind of study). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
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 Please click below to use my booking calendar to schedule: a 15-minute call a 30-minute call a 60-minute call Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com -----Original Message----- From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Thursday, November 30, 2017 11:04 AM To: gnso-rpm-wg <gnso-rpm-wg@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/... 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,ssMKHWaIs54... _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. 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participants (4)
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George Kirikos -
Nahitchevansky, Georges -
Scott Austin -
URS - Uniform Rapid Suspension System - MFSD