Attachments Best regards, Scott Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com -----Original Message----- From: Scott Austin Sent: Friday, April 14, 2017 5:01 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Text/design marks Importance: High John: Your comments to Rebecca on the ccTLDs and standard character marks reminded me of several questions I wanted to add to the TMCH discussion on design marks v standard character/text/typed form/words only/non-stylized/ (other less articulate terms) marks. First, the USPTO does provide in TMEP Appendix E (Attachment 1) a list of countries “that Have Standard Character Marks or the Equivalent” and lists over 50 countries. Oddly the countries listed many that on its face would not be considered to use standard character sets, including China, Russia, Japan, etc. so at first it appears there may be a broad interpretation of “the Equivalent”. The appendix references, however, TMEP §807.03(f) which clarifies the meaning of the term (highlighted) and may provide a useful definition to apply to the TMCH for standard character set: “For countries on this list, if all letters and words in the mark are in block capital or capital and lowercase Latin characters, all numerals are Roman or Arabic numerals, the mark includes only common punctuation or diacritical marks, and no stylization of lettering and/or numbers is claimed, the examining attorney need not inquire whether the registered mark in the foreign registration is in standard characters or the equivalent, unless the applicant has indicated that the mark is not standard characters or the equivalent.” Second, from the USPTO’s website under their instruction on Trademark Basics and the options for representation of a mark using a “standard character format” when filing an application for US trademark registration, they write: The standard character format means you are able to type your mark into the designated field on the electronic filing form by using characters found within the standard character set (or otherwise create a “typed” drawing for a paper submission). This is used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. Even better they provide a link to the “standard character set” which I have attached in PDF (Attachment 2). As you can see it includes more than just an alphabet/number set, but also many additional characters including punctuations and diacritical marks added to letters such as umlauts, acute accents, grave accents, carons, etc. Reviewing the USPTO’s expansive standard character set raises another issue, however. Question 1. Considering that the only valid characters for a standard (non-Internationalized) domain name are letters, numbers and a hyphen "-" and even simple typed special characters like the underscore "_" or an exclamation mark "!" are NOT permitted in a standard domain name, would even “standard character” US registered marks that include accents or other diacritical marks registered in the TMCH be precluded a beyond the reach of a cybersquatter anyway, or should they be included to provide protection of the essentially identical string being copied, but for the omission of a diacritical mark? (Typosquatting?) And considering the new gTLDS now include numerous IDNs, has the question been raised with Deloitte whether the TMCH accommodates trademark registrations using foreign character marks that require use of the IDNA encoding to be used as domain names? Question 2: Are foreign character marks, whether 1) in ASCII script using accents, umlauts, carons, etc. treated as design marks and 2) are foreign character marks using non ASCII character sets such as Chinese, Japanese, Arabic, Hebrew, Cyrillic, etc. treated as design marks or standard character marks? And doesn’t where you come out on that argument impact how stylized and words plus design marks are treated? Some design marks may never be used in a standard character format for a variety of reasons: 1. From commencement, the owner combined the literal elements of the mark with a logo and never asked for (or couldn’t afford) counsel on the broader protection and flexibility of a words only mark. 2. The mark was not sufficiently distinctive without the addition of a distinctive design to obtain the benefits of principal register status. 3. A substantial design was used strategically after a search, to avoid a conflict with another words only mark and a 2(d) refusal. 4. The marketing director demanded only special fonts be used to have a greater impact on target customers. I am sure there are many more and better examples you or I could come up with in time, but my point is: Question 3. Should the incorporation of a design be grounds to deny protection of the literal elements of a words plus design mark that could be cybersquatted on the basis of those literal elements. Do we intend to err on the side of; 1) prohibiting words plus design marks (whether the words are embedded (e.g., Starbucks) or adjacent (e.g. Nike) to the design and denying notice to brand owners when the literal elements of their marks are used for domain names; or 2) permitting the literal elements of words plus design marks to control and allow their registration on the TMCH and provide notice to brand owners when the literal elements of their words plus design marks are acquired for domain names. Taking a real-world example, if a nascent coffee concern filed only U.S. Trademark Reg. No. 1,815,937, but not 1,452,359 would or should Starbucks be prohibited from registration on the TMCH? Best regards, Scott Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Friday, April 14, 2017 12:19 PM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Text/design marks Rebecca, I was working from the INTA Country Guide database, which contains a summary of filing requirements. Many of the jurisdictions listed state that they require a "depiction of the mark". However, I do not believe that is enough guidance to develop a list to figure out what distinctions are or aren’t available. My point was really that this should be a question for Deloitte. I presume that they looked into this issue to develop their rules. As I mentioned, I do not think that there is any universally accepted term in all countries' trademark offices that equates to a standard character mark in the U.S. Even if the concept is recognized everywhere it is going to be a different field or name in the trademark record, if listed at all (e.g., there are six types of mark in the United States - see http://tmsearch.uspto.gov/bin/gate.exe?f=help&state=4809:nltdl1.1.1#Mark_Dra...); in Chile it is a the "Tipo" field and, I believe, "Palabra " for a word mark). I don't doubt that there are a large number of jurisdictions that track the words in a trademark. As you have identified, it is the proper terms/fields in these countries that we would need to diligence. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, April 14, 2017 2:20 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Text/design marks Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate. Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion. John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available. Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet. Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks. As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH. For US jurisprudence on the limited scope of stylized marks v. standard character marks: Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS). 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