Strong trademarks, again (Re: comments on Jim's and Jeff's addenda to the gTLD MOU)

["andi payn" <payn@null.net>]

Me:
>> Of course there is no one set of standards used by every jurisdiction in
the
>> world, but there are some basic principles that are used in most
>> jurisdictions (enough for WIPO to consider them international), and they
are
>> not the principles in use in the MoU (or, for that matter, in Jim's
>> counterproposal).

Jim Dixon:
>Can you elaborate?

That's what the next paragraph is for: to elaborate what I think is a decent
set of basic principles distilled from those in use by a large number of
nationals, US states, and international organizations.

>> If the use of a trademarked name by someone other than the trademark
holder
>> causes confusion, or is meant to mislead, or dilutes a "strong"
trademark,
>> it's a violation. There are exceptions for prior use by the non-holder,
fair
>> use and/or satirical intent by the non-holder, and misuse of the
trademark
>> by the trademark holder. If anyone finds these standards objectionable in
>> some way, please explain to me how.
>
>Just for the record, could you define "strong trademark" and justify
>its special treatment?

So does this mean that we agree about the issue except in terms of strong
trademarks?

This is, as far as I'm concerned, the hardest issue. The problem is that
exceptional cases like Exxon are usually used to justify special treatment
for strong trademarks, while the protection is often applied to cases which
are borderline at best.

The strongest types of trademarks are those which:  are explicitly coined or
created from a combination of lexemes; have a history of extensive use by an
owner, extending across jurisdictions; are recognized by most people and
associated with that owner; and have no history of use by other companies in
any area of business. Exxon is a perfect example. The name was explicitly
coined, and was in fact explicitly designed to be a name that would not be
the same as any word in any language. Exxon, Inc. and various owned and
otherwise related companies around the world have been using the name for
quite some time now, have invested quite heavily in marketing it, and have
had enough press attention (mostly bad) that most people in America, and
many people around the world, know what company, products, and services the
name "Exxon" is associated with. Meanwhile, no other company or person has
used the name Exxon at all as a name.

Names which are simply common words--e.g., Apple--or initials--e.g.,
IBM--are not strong trademarks. Neither are obvious compounds--e.g., Travel
Agency. Names which have established uses by multiple owners in different
regions or lines of business are not strong trademarks. Names which are
unknown to most people are not strong trademarks. The set of true strong
trademarks is very small.

The rationale behind special protection for strong trademarks is that use of
the name by others tends to dilute the name and reduce its value. By the
very nature of the fact that the name is unique and widely known, no one
other than the trademark holder has any reason to use it as a name except
for purposes of confusion--except in satire, reporting, etc.

More importantly, strong trademarks need to be protected in special ways
because many important governments have decided that they do--including the
US government, which used to stand against strong trademark protection.
However, the danger often cited by the US government in the past--that
dilution would be claimed by everyone with a trademark--is still there.
Since we don't want reverse hijacking by every trademark holder, I think we
probably want to insist something like this: A trademark owner cannot claim
dilution by the very existence of a domain name unless at least two national
governments have previously supported a claim for a strong trademark worthy
of dilution protection.

If I call a company IBC Records, people aren't going to immediately assume
that the IBC Root Beer company is behind the label; if I call a company
Exxon Records, people will assume that Exxon is behind the label, or at
least that they approve of it. Since IBC has never sued anyone for trademark
dilution in any country and has never even asked anyone to list its name as
a strong trademark, they clearly shouldn't be able to ask an ACP to take my
name away because of trademark dilution. On the other hand, Exxon should be
able to as this. Of course I can still keep the name if I can show, for
example, a valid satirical use----presumably related to the the sporadic but
definitely documented use of the word "exxon" as a noun and a verb related
to ecological disaster in English and other languages.

This brings up another point. To a certain extent, dilution is inevitable.
It's not the fault of Canon or Micah or anyone else but Xerox's own
marketing team that the word "xerox" has developed as a verb, adjective, and
noun in English and in other languages. People talk about "making a xerox"
or "making a xerox copy" or "xeroxing" using Canon machines. Therefore, the
name "Xerox" should have less protection than the name "Exxon." At some
point it may cease to be a strong trademark, and you'll be able to buy
"Canon xerox machines" as well as "Xerox xerox machines." In fact, you could
argue that it already has.

I think that this type of de-establishment of a strong trademark should be
required to have the same precedents as establishment of a strong trademark.
For example, using the standard above for establishing strong trademarks
(decisions by two national governments) if I wanted to keep a site named
"xerox.firm" on the basis that "xerox" had become a common word and was no
longer a strong trademark, I'd need to show court cases in two countries
which had already upheld this challenge.

While strong trademarks are the most complicated, and interesting, part of
the trademark debate, the vast majority of trademarks are not strong, so
it's even more important to deal appropriately with non-strong trademarks.

Whoever gets apple.firm or ibm.firm first should get to keep it, until Apple
Computers, Apple Records, International Business Machines, etc. can show
that the name is being used in a confusing or intentionally misleading way.
And if the potentially confusing use is a fair use, or a valid reporting or
satirical use, the owner can still keep it. And if Apple Records had been
misusing their own name fraudulently, the owner could use that as a defense.

Also, assume Apple Computers had already applied for the name apple.firm but
I beat then to it. Six months later, Apple Records decides that they want
the name, and claims that I'm using it in a way which will confuse people as
to the origin of goods (the most common trademark challenge). If Apple
Records wins, they still have to show that for some reason they have a
special right to the name, or Apple Computers should get the name, because
they asked for it first. Of course if I'd been intentionally misleading
people into thinking that apple.firm was the site for Apple Records, then
the domain name should go to Apple Records. But not every successful
trademark challenge should end with a direct transfer of the domain name.