+1 - Physical property is not the only type of *asset* recognized under international accounting standards <http://www.iasplus.com/en/standards/ias/ias38>. Before someone acquires a domain asset, they are being put on notice that someone may already have a different type of relevant asset, namely a trademark right. It's just a clearinghouse, not an arbiter of rights. <http://riskiq.com/> *jonathan matkowsky*, vp – ip & brand security usa:: 1.347.467.1193 <(347)%20467-1193> | office:: +972-(0)8-926-2766 <+972%208-926-2766> emergency mobile:: +972-(0)54-924-0831 <+972%2054-924-0831> company reg. no. 514805332 <http://havarot.justice.gov.il/CompaniesDetails.aspx?id=514805332> 11/1 nachal chever, modiin israel <https://twitter.com/riskiq> <https://www.facebook.com/pages/RiskIQ/555939994512820> <https://www.linkedin.com/company/riskiq_2> <https://plus.google.com/+Riskiq/posts> On Mon, Dec 19, 2016 at 10:28 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Paul:
I disagree. A trademark is in fact a property right.
Sent from my iPhone
On Dec 18, 2016, at 10:59 PM, Paul@law.es ZIMBRA <paul@law.es> wrote:
I'm replying to a few of the top emails
First, you do t know the use of the domain. That is rather the point. By allowing the T,CH to be used as a preventative tool we must weigh the balances of the exclusive right of use represented un the trademark and the rights of domain registrants to use the domain for any other purpose.
Second, Marie, a trademark is NOT a property right. It is a right of exclusive use granted by governmental authority over the use of a term, word, or other element in association with a specific product or service. AND that right is LIMITED jurisdictionally.
But, again, at this juncture we are getting ahead of ourselves in this discussion.
Paul Keating
On 19 Dec 2016, at 7:16 AM, Jonathan Agmon <jonathan.agmon@ip-law.legal> wrote:
How do you know what the intended use of the domain name will be? How will you ensure the intended use is maintained?
<SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
Jonathan Agmon (胡韩森)
Advocate, Director
Attorney and Counsellor at Law (admitted in New York)
jonathan.agmon@ip-law.legal
www.ip-law.legal
*T* SG +65 6532 2577 <+65%206532%202577>
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*F *IL +972 9 950 5500 <+972%209-950-5500>
Soroker Agmon Nordman Pte Ltd.
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8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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*From:* Reg Levy [mailto:reg@mmx.co <reg@mmx.co>] *Sent:* Monday, December 19, 2016 8:09 AM *To:* Marie Pattullo <marie.pattullo@aim.be> *Cc:* John C. McElwaine <john.mcelwaine@nelsonmullins.com>; Philip S. Corwin <psc@vlaw-dc.com>; J. Scott Evans <jsevans@adobe.com>; Paul Keating <Paul@law.es>; Jonathan Agmon <jonathan.agmon@ip-law.legal>; James Brian Beckham <brian.beckham@wipo.int>; George Kirikos < icann@leap.com>; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I agree. Limiting domain names that match trademarks to only their uses in the offline world (no apple.food) also would violate the stated purpose of the New gTLD Program—to promote competition and consumer choice. If the TMCH is just going to create a carbon copy of .com in every TLD, we’ve all wasted a number of years.
/R
Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 <(310)%20963-7135> S: RegLevy2
Current UTC offset: -8
On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be> wrote:
I’ve spent the afternoon back reading the threads here and I have to hold my hands up and admit I’m confused. We all know that ICANN isn’t a legislative body, and we all know that it can’t (and I very much doubt it would want to!) make law. Various laws in the various jurisdictions around the world include various TM laws, which in turn include rules and practises for how and why TMs are granted. That’s what the TMCH is - a repository of TMs that have been legally granted. No?
And unless and until a TM lapses, or is cancelled, it’s as much a legal property right as any other. It can’t be OK for an independent administrative repository of TMs to decide to ignore some legal property rights, surely? If the TMCH were just a private list with no function then we’d be on different ground, but given that it’s the gatekeeper for accessing certain RPMs I can’t see under what basis this administrative repository could be allowed to choose which property rights are allowed through the gate and which aren’t.
I’m sorry if this is naïve, but I honestly don’t understand how the TMCH can be the court of appeal for the legality of TM rights. Isn’t that why we have actual courts? And holding it out to be some form of appeal body is surely only going to confuse non-TM people, like most registrants, as to its “powers”.
Following that, and John’s questions, what are we trying to do? Limit any DN containing a TM to uses that the TM has in the offline world? But not limiting any other word to uses it may have offline? So isn’t that actually discriminating against words that are in TMs against words that aren’t - dictionary, arbitrary, proper or just plain made up? What are we actually trying to do?
I’m sorry for the TLDR post and sorry also for my confusion. I plead fuzziness of brain brought on by sociable Belgian cold viruses.
Thanks
Marie
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-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of John McElwaine Sent: mardi 13 décembre 2016 16:06 To: Phil Corwin; 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
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 <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
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-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <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 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (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 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (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 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (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 <+65%206532%202577> T
>US +1 212 999 6180 <(212)%20999-6180> T IL +972 9 950 7000 <+972%209-950-7000> F IL +972 9 950 5500 <+972%209-950-5500>
>
>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 <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_calle
>d_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 <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 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (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;"
>>>
>>>
>>>"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 <(416)%20588-0269>
>>>_______________________________________________
>>>gnso-rpm-wg mailing list
>>>gnso-rpm-wg@icann.org
>>
>>
>>________________________________
>>
>><ACL>
>>_______________________________________________
>>gnso-rpm-wg mailing list
>>gnso-rpm-wg@icann.org
>
>
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