Brand Prophylaxis or Trademark “Protection” Racket?

CaptureI’m back from the International Trademark Association (INTA) Annual Meeting in beautiful (if a bit cloudy and windy) San Diego, which featured the usual array of client meetings, networking with counsel from around the world, and seeing the sights.  The convention center area, the USS Midway, and the street of the Gas Lamp Quarter were temporarily overrun with the nearly 10,000 trademark (with a smattering of patent) professionals proudly displaying their INTA badges and ribbons.

This was also the perfect opportunity for the folks at Vox Populi, also known as the .Sucks registry, to engage the trademark bar. And so they did, with gusto:


As discussed previously in our .Sucks blog post from a few weeks ago, Vox Populi came under heavy fire from brand owners over what appears to be a calculated attempt to force companies to pay absurdly high prices to register their domain names during the .Sucks trademark sunrise period.  This backlash culminated in a letter to ICANN from the Intellectual Property Constituency.  ICANN responded, in what some might regard as a “too-little-too-late” fashion, by reaching out to the U.S. Federal Trade Commission (FTC) and the Canadian Office of Consumer Affairs (OCA) for guidance as to whether the .Sucks registry’s pricing scheme violates any laws or regulations enforced by those agencies.  If it does, then Vox Populi may be in breach of its registry agreement.  It seems unlikely that ICANN will take any action without the imprimatur of at least one of these two agencies.

Vox Populi’s public position with respect to brand owners is that they have the opportunity to leverage a branded .sucks domain name in order to address customer criticism head-on.  Said John Berard, head of Vox Populi, in an interview with the World Intellectual Property Review:  “From a corporate perspective it allows companies to curate, collaborate, to create a space to draw criticism and complaints, the opportunity to respond, to refute what’s wrong, to learn what’s right.”

The .Sucks presence at the Annual Meeting, on the other hand, seemed designed to do little more than poke a finger in the eyes of the attendees.   First, as depicted above, there was the INTA.SUCKS banner truck, which you could generally find near the convention center and host hotels during the day.  Vox Populi also had promoters with signs stationed at street corners near the convention center:

I asked these sign-holders what  .Sucks was all about.  “It’s for the convention,” said one. “It’s for protecting your brand,” smiled the other, charmingly ignorant, I supposed, of the cries of brand extortion laid at the feet of Vox Populi.  Another .Sucks promoter (again with the “Protect your brand!” mantra) was handing out what I assumed to be mints, but which were actually .Sucks branded condoms:


Protect yourself, indeed!  The combined message of these promotional activities seemed to be that .Sucks exists to protect trademarks, which of course makes very little sense outside of the ongoing and overpriced trademark sunrise period, where brand owners are facing the hard choice of whether to pay Vox Populi’s hefty annual “protection” fee.  And as it seems unlikely that either the FTC or OCA will opine on the legality of the .Sucks pricing scheme before the Trademark Sunrise period ends on May 29, 2015 (if ever), and even less likely that ICANN would terminate the .Sucks registry agreement. In any event, the result appears to be another gTLD that brand owners will just have to get used to, even if it .Sucks.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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