[comments-wipo] Treatment of "Famous Names" in new TLDs

["Paul Matus" <paul@rapidtransit.net>]

ICANN and WIPO should tread with extreme caution in granting any kind of blanket protection to "famous" trademarked names.

 

Aside from argument as to what constitutes a "famous" name, the process is open to a great deal of abuse. Where a word mark consists of a word in common usage, "famous name" protection should not exist at all. For example, "Apple Computer" might be viewed as a famous mark, but what of apple alone? What about a grower of apples? Or a processor of apples. Or someone who wants to post an intellectual site about the horticulture of apples.

 

Trademark Law recognizes this by having 42 international classification categories for the registrations of marks. "Cadillac Automobiles" and "Cadillac Dog Food" have managed to coexist for decades.

 

What is the point of adding new top level domains if a handful of powerful mark holders can attempt to pre-capture many of the best second level names?