Comments from Publix on STI Report
- To: <sti-report-2009@xxxxxxxxx>
- Subject: Comments from Publix on STI Report
- From: "James B. Lake" <jlake@xxxxxxxxxx>
- Date: Mon, 25 Jan 2010 16:56:32 -0500
I write on behalf of Publix Super Markets, Inc., and Publix Asset Management
Company (collectively "Publix") to identify certain inadequacies in the
Trademark Clearinghouse as proposed by the Specific Trademark Issues Review
Team ("STI"). The clearinghouse is a worthy concept that must be strengthened
in order to avoid chronic infringement and gross inefficiency in the
introduction and operation of new top-level domains.
Founded in 1930, Publix Super Markets, Inc., is the largest and fastest-growing
employee-owned supermarket chain in the United States. Publix is also the
owner of numerous U.S. trademark registrations, including more than 40
registrations for its well-known PUBLIX® word mark and related marks. As a
trademark owner, Publix is concerned about the potential for abusive,
infringing use of new top-level domains. Such misconduct could be more
effectively thwarted through a properly empowered Trademark Clearinghouse.
Unfortunately, the clearinghouse STI describes would be largely ineffective.
The first weakness of the clearinghouse is its limited purpose. The STI
suggests the clearinghouse might be employed only for "sunrise" screening (¶
5.1). Such limited use will render the clearinghouse largely ineffectual,
because no doubt many infringers will seek to register infringing domains after
the sunrise period. Screening will benefit not only trademark owners, but also
registries, registrars, and unwitting registrants by providing them a way to
avoid unnecessary disputes. Therefore, the clearinghouse's services ought not
be limited to sunrise use.
A second flaw in the clearinghouse proposal is its strict matching requirement.
A screening process that identifies only "identical" matches (¶ 4.3) will
reward crafty infringers by allowing them to register domains that, although
not identical to existing trademarks, are confusingly similar. As the
Business Constituency noted in its minority report, the .eu, .tel and .asia
registries have featured screening for non-identical matches. The
clearinghouse ought to do the same.
Third and finally, the STI proposal is ambiguous concerning the allocation of
costs for the clearinghouse. It appears that trademark owners would bear the
entire cost of clearinghouse operations. Thus new registries and registrars
will receive for free the benefits of a screening tool that will reduce their
costs and their potential liability for trademark infringement. The costs of
the clearinghouse should be shared by all beneficiaries.
Thank you for considering these comments.
James B. Lake
Thomas, LoCicero & Bralow PL
Focused on Business Litigation, Media and IP Law
jlake@xxxxxxxxxx | tlblaw.com <http://www.tlolawfirm.com>
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