All, Yesterday, we have a fascinating discussion/not discussion of the Recommendation below. In all events, it raised interesting questions and ideas. Accordingly, this *Recommendation for TMCH Charter Question #7 is hereby _withdrawn_ from the Working Group//*for review and editing. Please join me in submitting timely Recommendations and proposals, per the outline of the Co-Chairs, on our TMCH Charter Questions. Best, Kathy On 4/10/2017 10:28 AM, Kathy Kleiman wrote:
All,
Clearly the Working Group is ready to move on to Sunrise, TM Claims and Private Purposes, as am I. In an effort to help us complete the current 16 TMCH Charter Questions, I submit the recommendation below on Design Marks for Question #7. In doing so, I am a) removing my hat as Co-Chair and b) attempting to follow the outline set out by Phil Corwin on 4/9 (below).
Best, Kathy
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*I. Design Mark Recommendation for Working Group - for Question #7 of TMCH Charter Questions *
A. Rationale for the proposal – Whereas:
1. The GNSO Council & ICANN Board-adopted recommendations (based on the STI Final Report) were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered MarksThe TC Database should be required to include nationally or multinationally registered “text mark” trademarks, fromall jurisdictions, (including countries where there is no substantive review).”https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
2. The adopted recommendations were also very clear about the Harm that the STI Group saw from putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included inthe TC are text marks because “design marks” provide protection for letters and words only within the contextof their design or logo and the STI was under a mandate not to expand existing trademark rights.)
3. The Applicant Guidebook adopted the same strictures, namely: “3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registeredword marks from all jurisdictions” See our WG document “Selected TMCH Charter Questions compared with AGB & other community-developed materials - 28 Feb 2017.docx”
*4. Nonetheless, **Deloitte is accepting into the TMCH database design marks, figurative marks, trademarks registered with wording that includes designs, fonts and special lettering, colors, **and even disclaimers on the underlying words of the trademark**, provided the word(s) and/or letter(s) are readable and extractable. Deloitte is extracting words and letters from designs and other forms of logo, special lettering and other transformations to put the unadorned words and letters into the TMCH database. *
/B. Harm from the Current Form/
The harm from this acceptance is that it gives too much weight to a word or letters which received a trademark – and gives too many rights to one trademark owner over others in similar businesses, fields and interests. Specifically, a design mark is protection granted solely in conjunction with its design, logo, lettering, patterns and/or colors (as examples). As discussed above, the GNSO's Recommendations clearly felt that such entry into the TMCH would be an unfair advantage for one trademark owner over others in similar fields of goods and services: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” [TC is Trademark Clearinghouse]
In evaluating the harm of entry into the TMCH database, this Working Group should consider the discussion of the US Trademark Office on the subject of design marks and disclaimers. In offering this material, I do not submit it as global law (which is not), but as persuasive in setting out the harms of favoring one competitor over another when it comes to protecting the most basic words of their profession or work:
**
USPTO - https://www.uspto.gov/trademark/laws-regulations/how-satisfy-disclaimer-requ...
“Some words and designs in a mark are not registrable because they are needed by other people/businesses to be able to describe their goods, services, and/or business. A disclaimer in your registration makes clear to others that they may use the disclaimed terms without raising legal objections.
“Typically, portions of a mark that are not registrable and require a disclaimer are the following:
*
*Merely Descriptive*Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services).
*
*Laudatory Words*that describe an alleged superior quality of the goods and/or services (GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon services)
*
*Generic*Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys).
*
*Geographic*Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada).
*
*Business Type Designations*: Designations that merely indicate information about the type or structure of your business, such as "Corporation," "Inc.," "Company," "Ltd.," "Bros."
*
*Informational *Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established.”
* * *
“Descriptive, generic, geographic, or otherwise unregistrable wording, designs, or symbols are needed by other people/businesses to describe or market their goods and/or services (in advertising, on the web, etc.) or to convey a message. Additionally, businesses often include in their mark business identifiers that others may need to use to describe their businesses. Because these words and/or designs need to be used by others, they should not become the proprietary domain of any one party and must be disclaimed.”
100.
/*Recommendation*/
/**/
1.
In the interest of the fairness and balance sought by the original GNSO Council and Board-adopted recommendations and hopefully by this Working Group as well, the Working Group should require that Deloitte (and any future providers of TMCH verification services) accept only trademarks registered as “word marks” per se into the TMCH database – not words, characters and numbers extracted from design marks, transformative, figurative marks and other trademarks from amidst with patterns, logos, special lettering, colors and/or other design, pattern and lettering aspects and features.
2.
Timing [Note: this is a proposal for our WG]: In fairness to the current registrants of such marks, the Working Group recommends that current registration continue in the TMCH Database for a period of no longer than a year – to be canceled during the normal review of TMCH registrations which we understand Deloitte conducts on an annual basis.
3. We urge Deloitte to bring to the Working Group any questions regarding this policy so that the Working Group can facilitate a discussion of rules consistent with this recommendation.
On 4/9/2017 11:50 AM, Phil Corwin wrote:
Some excellent comments on this thread.
It’s not clear to me whether it’s the Board’s policy to require new gTLD registries to offer both a sunrise registration period and a claims notice period of at least 90 days, or a staff implementation decision, but that’s probably not the most important consideration now given that it was the standard practice for the first round. Jon has identified an issue that might have fallen through the cracks otherwise since it is about the relationship between the two TMCH-based RPMs rather than their separate operation.
If there is indeed sentiment to consider modifying that requirement, but if there is also some consensus that the availability of sunrise is more important for TM holders, then a proposal to simply substitute “or” for “and” may not be viable because that would leave the possibility that some new gTLDs in subsequent rounds would choose TM Claims and have no Sunrise period. So maybe a more nuanced approach would be to require Sunrise but leave Claims as a voluntary option. But that could mean no generation of TM Claims at many gTLDs in subsequent rounds.
Please understand that I am not advocating this change, just thinking out loud about the considerations that would come into play if any change was contemplated.
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
·A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
·The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
·If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decisionmaking.
Hope that is helpful.
Best regards
*Philip S. Corwin, Founding Principal*
*Virtualaw LLC*
*1155 F Street, NW*
*Suite 1050*
*Washington, DC 20004*
*202-559-8597/Direct*
*202-559-8750/Fax*
*202-255-6172/Cell***
**
*Twitter: @VlawDC*
*/"Luck is the residue of design" -- Branch Rickey/*
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Paul McGrady *Sent:* Sunday, April 09, 2017 10:57 AM *To:* 'Kathy Kleiman'; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
Thanks Kathy.
I think if we were going to ask the Board to undo their standing policy of “and” we would need a good reason and I haven’t seen any emerge on this list. The more we tinker with what is not broken, the more we risk not only bringing Phase 1 to a halt, but having to reopen the issue of the separation of Phase 2. I don’t think we could get buy-in from the consumer protection community to go along with “or” in Phase 1 if there is any chance that the UDRP will be weakened in Phase 2. Hopefully, we can do what Phil suggested in his recent posts and look to incremental improvements, rather than sea changes.
Best,
Paul
*From:*gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Kathy Kleiman *Sent:* Sunday, April 09, 2017 9:21 AM *To:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* [gnso-rpm-wg] [Renamed] Or or And
I think Jon raises an important point. The recommendations of the STI (as adopted by the GNSO Council and the ICANN Board) were for the New gTLD Registry to choose between a Sunrise Period OR the 90 day TM Claims Notice -- "at registry discretion" (as Jon notes below).
Is this something we should make a note to review -- and accordingly pass on as a question to the Sunrise Period and TM Claims Subgroups: is the right conjunction "or" or "and"? Should we return to the policy of allowing registries to choose Sunrise Period OR TM Claims for their roll-outs and would that provide a more balanced set of protections? /Not a question to be debated now, /but one we might to queue up for the discussions ahead.
(Cue the music for Conjunction Junction from Schoolhouse Rock for those from that generation...)
Best, Kathy
On 4/6/2017 3:46 PM, Jon Nevett wrote:
Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA)<migraham@expedia.com> <mailto:migraham@expedia.com> wrote:
From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
As to points 1 and 2:
1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
Michael R. Graham
MICHAEL R. GRAHAM
SENIOR CORPORATE COUNSEL
GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
Expedia Legal & Corporate Affairs
T +1 425.679.4330 | F +1 425.679.7251
M +1 425.241.1459
Expedia, Inc.
333 108th Avenue NE | Bellevue | WA 98004
MiGraham@Expedia.com <mailto:MiGraham@Expedia.com>
-----Original Message-----
From:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos
Sent: Thursday, April 06, 2017 11:21 AM
To:gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
Hi folks,
On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans<jsevans@adobe.com> <mailto:jsevans@adobe.com> wrote:
Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
(1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
"3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
and,
(2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
not) can challenge alleged misuse of a domain name.
Sincerely,
George Kirikos
416-588-0269
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