With all due respect Paul, I disagree. As I have repeatedly stated the use of the term “generic” creates a great amount of confusion. Confusion, IMHO, that some in this debate use to their advantage. In a country that now suffers from an overload of misinformation, I think we owe it to ourselves to be clear. My concern is that many in the ICANN community view all “dictionary terms” as a generic and constantly argue that such “generic terms” do not deserve a heightened level of protection as trademarks. That is incorrect. A “dictionary term” is only a “generic term” in the trademark sense in certain specific circumstances. Given this historical misunderstanding AND its use to bolster a flurry of righteous indignation from those opposed to RPMs because they don’t understand the nuance, I do not agree that the term “generic” should be used. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com www.adobe.com On 12/7/16, 5:48 AM, "Paul Keating" <Paul@law.es> wrote:
J. Scott,
I believe the term “generic” is widely understood. In crude terms it means a word that ultimately defines the thing. I believe you are caught up in the fact that a generic term can ALSO be used in a non-generic sense. While I accept that a generic term can serve as a trademark if used in a non-generic sense, that is not always or even often how it plays out in trademark registrations. While the USPTO is fairly good at preventing generic registrations, its records are rather rife with examples of registered marks that include generic terms which are not themselves disclaimed. Further, in the US there has been a long history of abuse (IMHO) of generic/descriptive terms that have been registered under 2F. Outside the US the registrations are not subject to even the USPTO level of scrutiny. Also, in the EU and elsewhere, use is not required which leads to a laundry list of classifications, most of which include generic uses which are not excluded by disclaimer or otherwise.
My concern is that while the TMCH is a database, its use has far more applied significance in the registration process.
So, I do not have any difficulty with the term “generic” as used in the questions. The issue you point out will be duly sorted out in the context of answering the questions with the ultimate decision being addressed in the context of a UDRP or litigation proceeding depending upon the use to which the domain is placed by the registrant.
Regards,
Paul
On 12/7/16, 2:03 PM, "J. Scott Evans" <gnso-rpm-wg-bounces@icann.org on behalf of jsevans@adobe.com> wrote:
As I repeatedly have stated on this thread, I think nomenclature is VERY important here. I do not and will not agree to use of the term ³generic.²
Having said that, I also recognize George¹s point that there may be multiple users of dictionary terms and other alphanumeric monikers used by different players in the marketplace. The RPMs are designed to prevent infringement and cybersquatting, not guarantee an absolute monopoly. If we find that numerous parties with legitimate rights are being left out of the system or finding it difficult to get protection or to use their moniker, we need to figure out a solution to that problem. However, I am not aware that this massive deficit in domains is harming Internet users. If harm can be demonstrated, not just hypothesized about based on a fundamental dislike of sunrise registrations.
J. Scott
J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com www.adobe.com
On 12/7/16, 4:11 AM, "gnso-rpm-wg-bounces@icann.org on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org on behalf of icann@leap.com> wrote:
Well said, Edward. Let's not get distracted by pedantic criticisms, and instead look at the big picture, namely that a trademark does not entitle its owner to have a right of first refusal or a priority right to that term in every gTLD.
Where there are multiple users of a term (whether it's a dictionary word, acronym, or other frequently used term, or string of alphanumeric characters), those other good faith non-trademark owner users (both actual and prospective) should have equal access to register that term. To do otherwise represents a prior restraint on speech.
If those users *later* abuse that registration by infringing someone's rights, they should face the appropriate consequences.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
³terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.² https://www.uspto.gov/learning-and-resources/glossary#sec-g
The INTA teaches the same ³common knowledge² approach as the USPTO:
³Generic words can be thought of as the common name of the problem or service in question for example, ³clock² is a generic word for timepieces.² Because these are the common names of goods and services, the first rule of trade mark law is that ³[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify² ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott¹s raising of this issue she wrote:
³When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.²
What happens if Registrants can¹t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing ³generic² out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don¹t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as ³generic² mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group¹s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass¹n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term ³generic² from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman¹s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question‹for example, ³clock² is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify."
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthF a c tSheet.aspx[inta.org]
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org>
www.icann.org[icann.org]<http://www.icann.org>[icann.org]
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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