Please circulate it prior to the call. On 12/13/16, 1:10 PM, "J. Scott Evans" <jsevans@adobe.com> wrote:
The Co-Chairs have a proposed compromise revision drafted by Phil that we will propose to the group.
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 12/13/16, 4:06 AM, "Paul Keating" <Paul@law.es> wrote:
Good suggestion J. Scott.
Can we live with the question as follows?
Should the scope of the TMCH be limited in its application to trademarks containing dictionary terms which are generic or descriptive? If so how?
Paul
On 12/13/16, 12:51 PM, "J. Scott Evans" <jsevans@adobe.com> wrote:
Again, and at the risk of repeating myself. And, as Brian Beckham pointed out this morning, there are quite a few of us in the ICANN community and on the list that understand the nuances of generic, descriptive, arbitrary and fanciful marks as land out in Abercrombie by Learned Hand oh so long ago. However, in the bigger picture policy debate most stakeholders do not understand. They believe that a term is “generic” if it is a WORD with a meaning and are quite frustrated when they find that they cannot own ACETOOLS.COM for their site that is for really cool tools. This misunderstanding is then conflated in the policy debate and causes all kinds of confusion and misunderstanding. Hence, I believe the better term is “dictionary term” which under the Abercrombie factors can be either generic, descriptive or arbitrary depending on the circumstances.
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 12/13/16, 3:44 AM, "Paul Keating" <Paul@law.es> wrote:
Jonathan,
Not to be nit-picky but your definition is incorrect.
Generic: Relating to or characteristic of a whole group or class; general, as opposed to specific or special. (Black’s Law Dictionary)
A ‘generic term” is one which is commonly used as the name or description of a kind of goods and it is generally accepted that a generic term is incapable of achieving trade name protection. For example, any single seller can not have trademark rights in “television” or “oven.” When a seller is given exclusive rights to call something by its recognized name, it would amount to a practical monopoly on selling that type of product. Even established trademarks can lose their protection if they are used generically. For example (in U.S.), thermos and aspirin.
A descriptive term (which many people refer to as a “dictionary term”) is merely that - a term used in its descriptive sense (e.g. “Redbarn” is descriptive for selling red barns but not for hotels).
Treatment in differing jurisdictions complicates matters. For example, the term “donut” is a trademark in Spain for donuts. It was obtained way back when when the registrant saw donuts during a visit to the US, returned to Spain and began producing them and registered the trademark.
Thus, the term has nothing to do with consumer perception of source.
Moreover, most generic terms are by definition “in the dictionary”.
The problem I encounter most with generic/descriptive terms are in the context of figurative marks. Although the USPTO is getting better at requiring disclaimers, they were not so diligent in the future. In my experience, most other jurisdictions do not rigorously impose disclaimer obligations.
Another source of constant frustration is with Section 2(f). Again, while the USPTO appears to becoming more diligent they were simply horrible in the past. Other jurisdictions do not have a similar provision and, for example, France, has a terrible reputation for registering even the most descriptive (and even generic) terms.
I think the question regarding generic marks in the TMCH has merit and should be discussed and this thread is but one example of why. Again, whether we reach conclusions as to the question is a different issue for a different day.
Paul Keating
On 12/13/16, 12:12 PM, "Jonathan Agmon" <jonathan.agmon@ip-law.legal> wrote:
All,
Just to contribute another angle and perhaps a helpful example.
I think that dictionary words and generic terms are two different species. A dictionary word is a word that is defined in the dictionary. For example the word "apple" is defined as "a fruit (as a star apple) or other vegetative growth". A generic term is a legal standard in trademark law denoting a mark whose source cannot be identified by consumers. And if consumers think that a single source exists for that term then by law the term is not generic. Therefore, in this example, APPLE, a dictionary word by all accounts, may be a dictionary word for fruit, is not a generic term and will in all likelihood be considered a strong trademark for computers.
This is just one example and you should consider that the term "generic" as a term of art in trademark law. It has nothing to do with dictionary words. Moreover, some dictionary words can be weak trademarks at one time and strong trademarks at another time.
You can consider for example the marks NYLON or XEROX. You can find both of them in the dictionary. The term NYLON was an invented mark, invented in 1935 by DuPont. It arguably became generic (from a trademark perspective) when consumers all started referring to synthetic polymers from every manufacture (not just DuPont) as Nylon. XEROX invented a photocopying machine. The term came close to turning generic when in the eighties consumers used the verb "Xeroxing" instead of "photocopying". Xeorx, the company changed that and today by all accounts the mark XEROX is not generic but rather a trademark for photocopying machines.
Taking the above into account ,the policies below state "generic or descriptive" not generic or dictionary words. The term descriptive is another term of art in trademark law, which refers to a trademark that describes the goods it is applied to. The examples of "toy, shop, cleaner, lawyer..." are only descriptive for the relevant goods or services they are attached to. Non-lawyers would immediately associate these terms with their respective meaning. But, these terms can serve as trademarks too. It all depends on the circumstances and consumer perception. One last example would be the use of TOY on a yogurt product. Check out the attachment - the term JOY is applied to a yogurt product. While the term JOY can be descriptive of a feeling, it is not descriptive for yogurt products. So long as consumers don’t call any yogurt product JOY, then it is also not generic.
I hope this helps.
Jonathan Agmon(???) Advocate, PARTNER jonathan.agmon@ip-law.legal www.ip-law.legal Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street, 4672408 Herzliya, ISRAEL T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500
This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Beckham, Brian Sent: Tuesday, December 13, 2016 5:42 PM To: Paul Keating <Paul@law.es>; J. Scott Evans <jsevans@adobe.com>; George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Paul, all,
A timely post on CircleID speaks to (intentional) confusion on the "generic"/dictionary dichotomy: http://www.circleid.com/posts/20161212_appearing_respondents_called_ou t _ a s _cybersquatters/
In that post, Mr. Levine notes:
"There's continuing confusion among domain buyers (not likely to be professional investors) that dictionary words are 'generic' therefore available to the first to register them. That's not the case at all. There are numerous trademarks composed of common words; weak perhaps, and vulnerable when combined with other common words but nevertheless protectable with sufficient proof of bad faith."
Brian
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Monday, December 12, 2016 10:24 PM To: J. Scott Evans; George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
But it does show that it is not so much rocket science.
On 12/12/16, 10:11 PM, "J. Scott Evans" <gnso-rpm-wg-bounces@icann.org on behalf of jsevans@adobe.com> wrote:
That don¹t make it right.
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 12/12/16, 10:04 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:
>FYI, re: "generic", both the .uk and the .nz dispute policies >reference "generic" domain names, see: > >.uk: >http://nominet-prod.s3.amazonaws.com/wp-content/uploads/2016/08/Fina >l >- >pro >p >osed-DRS-Policy.pdf > >"8.1.2 The Domain Name is generic or descriptive and the Respondent >is >making fair use of it;" > >.nz: https://www.dnc.org.nz/resource-library/policies/65 > >"Generic Term means a word or phrase that is a common name in >general >public use for a product, service, profession, place or thing. For >example: toy; shop; cleaner; lawyers; Wellington; sparkling-wine" > >"6.1.2. The Domain Name is generic or descriptive and the Respondent >is making fair use of it in a way which is consistent with its >generic >or descriptive character;" > >Sincerely, > >George Kirikos >416-588-0269 >http://www.leap.com/ >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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