All, When we were in the TMCH Charter Questions Subgroup meetings, Phil Corwin mentioned something that stayed with me. He pointed out that Charter Questions are really here to guide the WG to an area of inquiry - not define, limit or shape that discussion. I think this analysis makes sense and I have thought about it often since he said it. I would respectfully submit that this revised Charter Question is designed to start a discussion - -not define, limit or shape them. This is not a "certified question" to a Court which must be narrowly construed. It is a broader question reflecting an issue of importance to the Community, placed in our Charter by the GNSO Council who has asked us to conduct an inquiry into it. (Note: the GNSO Council sent us several questions on this issue.) Thus, it is a "kick off" question to start a discussion/inquiry -- and many more questions and issues may flow from it (as the email discussion shows it will!) So I would ask that we take a deep breath, and accept the question for what it is -- a starting point. A kick off... Best, Kathy On 12/13/2016 10:06 AM, John McElwaine wrote:
Phil,
Thanks for this. I'm just seeking some clarification: Does this question seek whether the TMCH should be limited in its application to Trademark Claims Notices and Sunrise Processes in which the domain name being registered is going to be used in a manner that relates to the goods and services contained in the registration, if the registration consists of a word found in a dictionary?
Kind regards,
John
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, December 13, 2016 8:58 AM To: J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Good day to all. I have been tied up this morning on the call of the WS2 Jurisdiction subgroup.
The proposed compromise language agreed upon by the co-chairs and suggested for your consideration as a path forward so we can get the questions out and get on to the work of reviewing and understanding the answers is as follows:
Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the dictionary term(s) within a trademark are protected? If so, how? In responding to this question, you should note that the original submitters of the related charter questions seem to be been particularly concerned about "generic terms" representing the common or class name for the goods and services.
We hope this proposed formulation will prove acceptable to members of this WG. Thanks for your consideration.
Best to all, Philip
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
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans Sent: Tuesday, December 13, 2016 7:24 AM To: Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Importance: High
Phil?
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, 4:18 AM, "Paul Keating" <Paul@law.es> wrote:
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_o > u > 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/Fin >>> a >>> 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 >> >> ________________________________ >> >> <ACL> >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > World Intellectual Property Organization Disclaimer: This electronic > message may contain privileged, confidential and copyright protected > information. If you have received this e-mail by mistake, please > immediately notify the sender and delete this e-mail and all its > attachments. Please ensure all e-mail attachments are scanned for > viruses > prior to opening or using. > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > ********************************************************************* > * > * > * > * > * > ********** > This footnote confirms that this email message has been scanned by > PineApp Mail-SeCure for the presence of malicious code, vandals & > computer viruses. > ********************************************************************* > * > * > * > * > * > ********** > >
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice
This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure.
If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg