Comments in-line below on Kathy's second point.

Greg

On Wed, May 3, 2017 at 9:50 AM, Kathy Kleiman <kathy@kathykleiman.com> wrote:

Re: the trademark side of the table:

Under Composite Mark definition, in the USA section, there are two case quotes, but the rule itself is not present, and I would ask that it be added: "However, the fundamental rule in this situation is that the marks must be considered in their entireties." http://www.bitlaw.com/source/tmep/1207_01_c_ii.html, USPTO Trademark of Examining Procedure.

Further, as Mary notes under "stylized mark," the Trademark Office confides that its definitions between stylized marks and marks with design elements are distinctions without difference: [from Mary's table] USA: "No clear distinction, for definitional purposes at least, between a mark comprising stylized text only and a mark comprising stylized text with a design element."

GSS: The quoted text is not a statement from the Trademark Office, and it's certainly an instance of the Trademark Office "confiding" anything. What an interesting word choice! Confide is defined by the Oxford English Dictionary as "tell someone about a secret or private matter while trusting them not to repeat it to others." So the reader of this sentence (i.e., the Working Group) is supposed to feel like we're being let in on a little secret by the USPTO -- and that secret is that the USPTO's "definitions of stylized marks and marks with design elements are distinctions without difference." A nice piece of advocacy writing here. Of course, this not a "confidence", it is not a statement by the USPTO, and there is nothing here that says or supports the argument (which is what this is) that the distinctions are "distinctions without differences."

In any event, I don't believe the chart's original statement is correct (and I certainly don't believe that the pretzel twisted out of the original statement is correct). The USPTO does in fact distinguish between marks with stylized fonts only and those containing design elements. I've provided examples to that effect on the list earlier; I don't have time to go back and find them now, but I can if need be. Even the chart acknowledges this in footnote 10 ("But see below for visual depictions of what the USPTO considers a “stylized” mark as compared to a “design” mark.") and the examples referred to in that footnote.

Interestingly, the USPTO's Basic Facts about Trademarks publication (https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf) in the section on "Similarity of Marks" shows the "standard character" mark "T. MARKEY" and the "stylized form" mark "T. MARKEY" (shown on the ICANN chart) as an example of marks that are similar in appearance, with the following statement: "The marks look very similar, even though the one on the right uses a stylized font." (Publication also attached as a PDF)

Greg

The key difference, of course, is the "registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color" and the others don't. I look forward to our discussion today and note again that it is this clear distinction that original rules captured when they created the TMCH Database, TM Claims and Sunrise period.

Best, Kathy

On 5/2/2017 1:01 AM, Mary Wong wrote:
Dear all,

Staff has updated the table of open TMCH questions (on design marks, GIs and TMCH matching rules) with the new proposal on GIs submitted on Friday by Jonathan Agmon (see attached document). Given the ongoing Working Group discussions on the mailing list on some of these topics, we have not attempted to summarize the specific discussion items and sub-topics, but we will be happy to do so if this will be helpful.

Also attached is the staff-prepared glossary of terms relating to design marks and GIs, which we have updated slightly to note the new Amending Regulation in the EU concerning the definition of a trademark. We hope the glossary is helpful to everyone in distinguishing and/or defining many of the terms and usages around design/device/composite/figurative marks, collective and certification marks, GIs and appellations of origin, etc.

You may also wish to note that WIPO maintains a searchable database of the IP laws of many countries, which you can specify the country of search as well as the type of IP right (e.g. copyright, GIs, industrial design, patents, trademarks etc.) for which you are seeking the applicable legislation or treaty: http://www.wipo.int/wipolex/en/.

Thanks and cheers

Mary

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