All, Just to respond on behalf of this co-chair that I don not believe we cut off discussion of this issue unilaterally. In fact, the mere fact that many are still posting materials related to this topic shows that discussion is ongoing. That said, cut-offs for the draft final report have to be made so we can get materials out to the community to comment on. And therefore: 1. Just as with other recent substantive comments that have come in, we are asking that in the Draft Final Report Public comment period, those with new information (perhaps like this Supreme Court Case, or the comment from the 3 At Large members, etc.) file them as public comments. To treat the Closed Generic issue any differently than others would be unfair to others that have submitted their views on other topics. 1. I agree in part with what Kathy has said, that I am not sure that this discussion of the US Supreme Court changes the fact that from a substantive viewpoint, this Working Group at this point is not in agreement on the treatment of Closed Generics in Subsequent Rounds. There is not even agreement on what the Status Quo would be, or even agreement necessarily from Individual Board members from back in 2013/14 as to whether their decision was to apply only to that round or to others. A per se rule from the USPTO that was potentially invalidated doesn’t change where we are. 1. The part where I don’t agree with Kathy is that additional language be needed from the last version. Some wanted us to state that the Board “banned” closed generics in the last round, others wanted us to state that the board did not opine on what should happen in the next round, and we believe that the compromise position is to take all subjectivity out of the “No Agreement” paragraph and just quote from the actual Board Resolution. Putting in the exact Board language cannot be subjective. It is what it is. Thanks again for continuing this discussion. It would be great if we can get some more good discussion on the 2 remaining issues: Private Resolution of Contention Sets/Auctions and the Predictability Model. Please look at the Proposal #4 in the draft text as well as the e-mails from Jim P., Paul M. and others for the Private Resolution/Auctions discussion. Come ready to discuss, compromise and finalize (in that order). Thanks. Jeff Neuman JJN Solutions, LLC Founder & CEO +1.202.549.5079 Vienna, VA 22180 Jeff@JJNSolutions.com http://jjnsolutions.com<http://jjnsolutions.com/> From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, July 8, 2020 6:15 PM To: McGrady Paul D. <PMcGrady@taftlaw.com>; Kathy Kleiman <kathy@kathykleiman.com>; alexander@schubert.berlin; gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration Hi Paul, First, I need to note that when you copy from some Supreme Court decisions, it comes out really BIG! Second, are we reading the same case :-)? I'm seeing a second level domain name case decided by the Supreme Court -- and one that absolutely reaffirms the traditional principle that the US Trademark Office will not register generic words for generic uses. And we know why -- because it would be utterly unfair to others in the same field. Happy to look at another case if you recommend it... I don't think anything would happen from reopening the discussion, but I do think Closed Generics 2.7.3 needs to be clarified to indicate our stalemate on what to do next. You started the process (tx!) and I'll build on it. Working on this now! Best, Kathy ----- Original Message ----- From: "McGrady Paul D." <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> To: "Kathy Kleiman" <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>>, "alexander@schubert.berlin<mailto:alexander@schubert.berlin>" <alexander@schubert.berlin<mailto:alexander@schubert.berlin>>, "gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>" <gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>> Cc: Sent: Wed, 8 Jul 2020 21:57:00 +0000 Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration Thanks Kathy. I understand what you are saying, but Ginsburg is quite unavoidable: “These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of “Booking.com<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Fears that a <. + generic term> TLD would grant a monopoly resulting in other people no longer being able to use that generic term simply have no basis in the law. All of that said, all of these emails (while good fun) are somewhat moot since the co-chairs unilaterally cut off discussion on this topic. Perhaps the co-chairs will note all the back and forth conversation on this topic and will unilaterally un-cutoff discussions. Clearly there remains lots the WG wants to say on this matter. Best, Paul From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Sent: Wednesday, July 8, 2020 4:28 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration Hi Paul, << The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds >> Happily, the very words of the opinion ensure that this is not the case. The fundamental principle -- that generics belong to all and are not "registerable" to one competitor over another - is absolutely upheld in the very opening paragraphs of Justice Ginsberg's opinion. In the first line of the 2nd paragraph, Justice Ginsberg writes: "A generic name—the name of a class of products or services—is ineligible for federal trademark registration." Let me share the entire paragraph: "A generic name—the name of a class of products or services—is ineligible for federal trademark registration. The word “booking,” the parties do not dispute, is generic for hotel-reservation services. “Booking.com” must also be generic, the PTO maintains, under an encompassing rule the PTO currently urges us to adopt: The combination of a generic word and “.com” is generic." So "booking" remains generic for hotel reservation services; trucking remains generic for various trucking services; search remains generic for various searching services. None of that is changed by this decision. The bar against registrations of generics is, in fact, upheld and further reinforced. Further, Justice Ginsberg points out in the decision (as Anne does in her summary) that this case is a narrow one: looking at the "combination" of a "generic word" and ".com". As you know, Paul, the Supreme Court operates on narrow decisions -- it must decide a case based on the specific facts before it and the legal issues they raise. Chief Justice Roberts summarized this position for graduating Georgetown Law School students in 2006 by saying: "If it's not necessary to decide more to dispose of a case, in my view, it's necessary not to decide more." (Associate Press, 2006) So this is a <generic> + TLD case. Justice Ginsburg further reiterates the concept that generics shall not be registered in the US Trademark Office in their generic sense farther down in the case, including: "See Restatement (Third) of Unfair Competition Sec. 15, p. 142 (1993); Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (CA2 1999) ("[E]veryone may use [generic terms] to refer to the goods they designate.")." And there is more... but I will spare the non-lawyers in the group :-). If anything, this case reiterates everything we have been saying about generic words-- that they must remain open to all in the given business or industry. And that monopolization of a generic term by a single competitor would be a utmost violation of fair competition rules. This case reinforces these basic principles. Thus monopolization of a generic terms -- a .CLOUD, .SEARCH, .BOOK -- by a single competitor of the business or industry class would raise a deep, deep concern for "unfair competition" (as Justice Ginsburg notes above). Best, Kathy ----- Original Message ----- From: "McGrady Paul D." <PMcGrady@taftlawcom<mailto:PMcGrady@taftlaw.com>> To: "alexander@schubert.berlin<mailto:alexander@schubert.berlin>" <alexander@schubert.berlin<mailto:alexander@schubertberlin>>, "gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>" <gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>> Cc: Sent: Wed, 8 Jul 2020 13:31:03 +0000 Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Thanks Alexander. I am not making that argument and so won’t address your variant of an argument I’m not making. The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds. Best, Paul From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander Schubert Sent: Thursday, July 2, 2020 10:48 AM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Paul, I don’t understand: Are you arguing that because Booking.com won the right to deny third parties using the letter combination “booking.com” in connotation with hotel booking services an applicant for a generic string based gTLD could deny public access to the new gTLD namespace? Question: In your opinion; if the domain registration for booking.com would expire, could Booking.com deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “booking.com” TM (once they have it)? Thanks, Alexander From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D. Sent: Donnerstag, 2. Juli 2020 18:13 To: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>>; Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Thanks Justine. Understood. And to be clear, SCOTUS doesn’t address our exact debate (although we are mentioned in the one-man dissent but in that dissent Justice Breyer specifically mentions how new gTLD registries are building brand awareness for their brands, e.g. .club – so again helpful to those who believe <.+generic term> TLDs should remain available as they were in the AGB2012 Guidebook), it just dispatched the fear-of-not-being-able-to-use-the-term argument upon which the <anti-.+ generic term> have built their case and generally takes a big swing at per se rules. Lucky timing, since it gives this WG another chance to actually make Policy as the Board asked us to do rather than just saying “we don’t know.” I understand why those whose position is essentially vitiated by this SCOTUS decision want to push hard to get the topic removed from discussion now that this case it out. Even so, hopefully the Co-chairs will give this the time it was promised. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 11:44 PM To: Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Paul, I wasn't suggesting we dismiss what SCOTUS said, but as we well know, there could be room to distinguish court decisions. But I will read the SCOTUS judgment, thanks to you. Rubens, sorry to not be helpful here - I don't know - but it's not inconceivable to me that a (supreme) court of a different jurisdiction may choose to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 11:53, Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> wrote: Is there a position on generic trademarks in general from WIPO ? Rubens On 2 Jul 2020, at 00:05, Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> wrote: Hi Paul, thanks for the pdf. I can't help but to wonder what might happen if a (supreme) court of another jurisdiction were to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 10:49, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Justine. I’ve attached a PDF for you. I’m not familiar with the contents of the other commentary article you mention, but I think the actual opinion by Ginsburg makes it clear that the per se rule is quite abolished at the USPTO. The Justice writes: “The PTO’s principal concern is that trademark protection for a term like “Booking.com<http://booking.com/>” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “Booking.com<http://booking.com/>.” Rather, the PTO fears that trademark protection for “Booking.com<http://booking.com/>” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com/>” or “hotel-booking.com<http://hotel-booking.com/>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://booking.com/>” as a mark, but to undue control over similar language, i.e., “booking,” that others should remain free to use. That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Ibid. Similarly, “[i]n a ‘crowded’ field of look-alike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004). These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of “Booking.com<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Bookingcom<http://booking.com/> concedes that “Booking.com<http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://booking.com/> recognizes, making it “harder . . . to show a likelihood of confusion.” Id., at 43 Furthermore, because its mark is one of many “similarly worded marks,” Booking.com<http://booking.com/> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://booking.com/> acknowledges that federal registration of “Booking.com<http://booking.com/>” would not prevent competitors from using the word “booking” to describe their own services. Id., at 55.” So, those against <.+ generic term> TLDs are going to have to find some other basis to argue that there will be some sort of harm. This leaves the opponents with (1) being against them because they didn’t apply but their competitors did; (2) they are a registrar that can’t make any money on them; (3) a bias against free speech; (4) a bias against nascent trademarks. None of these are nearly as noble sounding as the fear about competitive harm, but Ginsburg has nicely dispatched that fear. Sure would be nice if the Co-chairs would allow more time, as initially promised, so that we can develop some policy. This decision by SCOTUS is very instructive and we should take the time to understand it and build guardrails around the <.+ generic term> TLDs instead of just throwing our hands up and sending nothing the Board instead of the something they asked us for. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Hi Paul, The link you offered is one behind a paywall, so not very useful for me as a non-subscriber. But I note that Winterfeldt IP Group has also released a client advisory which points to uncertainty and important element(s) not raised in the appeal and therefore not considered by SCOTUS. Kind regards, Justine --- On Wed, 1 Jul 2020 at 10:51, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Anne. All, here is the link to the actual decision: https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Aikman-Scalese, Anne Sent: Tuesday, June 30, 2020 7:12 PM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds BOOKING.COM<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. 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