[gtld-council] Regarding non-commercial interests in the gTLD market

[Schulman, Lori]

You raise a good point between coined phrases and common words that are
associated with specific products.   This is the point that Kathryn
raises regarding "sun" and "apple."   It is a subject of constant debate
in the trademark community.  That's why the classification system is so
important.  Apple in a computer class means something very different
than in an agricultural class.  Apple is arbitrary for computers and
generic for fruit.

Coined terms are global in the sense that they don't mean anything in
any particular language.  Typically, they are not translatable.  When a
coined phrase becomes so popular that the trademark is used as the name
of an item we call it "genericizing" the name.  Trademark owners then
become victims of their own success. There is a point when common usage
demands that otherwise protected marks fall into the public domain.
Famous examples of names that have lost their trademark significance are
"aspirin" and "yo-yo" and "internet."  

In the US there was a trademark registration for the term INTERNET that
was owned by a commercial bank for online banking services.  Trademark
applications were routinely refused if they contained the word internet
in the mark or in the description of services.  That is why you see the
term "global computer network" in so many US registrations.  It took
many years for the US trademark office to catch up with the reality of
the marketplace but they finally cancelled the registration for
INTERNET.

If some sort of gTLD policy were developed to deal with famous, global
marks, it would have to be very narrow in scope and judiciously applied,
assuming that we could we could build any consensus on what "famous"
means within the context of the name space. 

Nike was a Greek goddess by the way.   I believe she was the goddess of
victory.


Lori



-----Original Message-----
From: Mawaki Chango [mailto:ki_chango at yahoo.com] 
Sent: Thursday, June 07, 2007 2:45 PM
To: Schulman, Lori; NCUC-DISCUSS at LISTSERV.SYR.EDU
Subject: RE: Re: [gtld-council] Regarding non-commercial interests in
the gTLD market

Thanks Lori. I think it makes sense that we need to strike some
balance in the debate trademark v. free speech, and highly and
globally recognizable trademarks may need to be acknowledge in
order to protect consumers. For some reasons, I'd tend to think
that most of those trademarks are proper or invented names
(e.g., Coca-cola, Nike (unless it means something in English I
don't knoe?), Google, etc.) In exceptional cases, common names
can reach that level as trademarks, which might be a bit
trickier. [Note: ironically, proper names reaching that level
sometimes become like common names: e.g., Vespa, Frigidaire (in
French for, uh..., fridge), Thermos, etc.] In any case, it'd be
an extreme case of abuse and absurdity when, e.g., a registry
reacts as if they own a gtld string and want to be granted the
translation/transliteration equivalent in other scripts,
arguably for the sake of protecting the consumer.

Mawaki

--- "Schulman, Lori" <LSchulman at marchofdimes.com> wrote:

> Pardon the typos in my posting of this morning.  I am my own
> worst proof
> reader.   Along with my grammar errors, I noticed that I typed
> ISOC
> instead of IOC.  Must have been a Freudian slip.
> 
> My long winded point is that we should at least consider that
> there may
> be some trademarks that have such a high degree of global
> recognition
> that it may be in the public's interest to ensure that any
> gTLD's that
> employ those marks are controlled by the rights holder. 
> Otherwise, the
> public may be misled.  Consumer protection is in the public
> interest.
> 
> Lori Schulman
> 
>