What she said . . . . 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<mailto:jsevans@adobe.com> www.adobe.com From: Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> Date: Thursday, February 2, 2017 at 2:17 PM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>>, "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [gnso-rpm-wg] TMCH Blog I am lawyer and I work for INTA so I will speak to INTA’s content. Yes, per the information found on the INTA website, the armor has holes, however the legal threshold for contesting an incontestable mark in the U.S. is high. It takes substantial effort and a high burden of proof to partake of the cheese. As noted earlier in the thread, the presumption of validity rests with the trademark owner. That said, none of INTA’s content is intended to be construed as legal advice. We provide information for brand owners and trademark professionals for whom it is incumbent to thoroughly research the merits of any particular action that they may be contemplating. Reading provisions of statutes at face value without understanding the underlying principles and precedents that support the statute or the threshold of evidence required to successfully challenge a trademark registration under the statute can be dangerous because it may over simplify a complex area of the law. With regard to the US efforts to get rid of “dead wood” trademarks, its speaks to the integrity of the US Trademark system in a positive way. The US understands that there is a problem and is taking the necessary steps to correct it. While the statistics are useful to understand the inconsistencies in the US Federal Register, I think it is dangerous to use these statistics to support a theory that a trademark registration is inherently unreliable and such unreliability should be factored into ICANN policies. It undermines carefully constructed national and international trademark regimes. We need to trust that national, regional and global trademark offices are doing their job as they have mechanisms to challenge the validity of a trademark as well as internal checks such as the USPTO is undertaking. It’s clear that we can demonstrate flaws and inconsistencies in almost any system. However, discounting the entire system because of bad actors undermines what we are trying to achieve in terms of taking actions consistent with recognized principles of law and fairness to all parties. If there is a reasonable way to curtail gaming without undermining an international system designed to protect consumers and promote innovation then I am certainly open to discussing it. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] 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, February 02, 2017 3:37 PM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] TMCH Blog J. Scott: I'm not a lawyer, nor am I practising trademark law. I made a reference to INTA's website, and to the USPTO's own research, in furtherance of a discussion we're having on this list. What makes you think I'm not allowed to do so? If you have a problem with the content of my messages, dispute the content, rather than seeking to silence the speaker of that content. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans@adobe.com><mailto:jsevans@adobe.com%3e> wrote:
George:
Are you a trademark attorney? Are you an attorney? If not, I think it would be best if you refrain from practicing law. If you are, I point you to McCarthy on Trademarks & Unfair Competition for US practice and Trademarks Throughout the World for a glimpse of international trademark laws.
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<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com>
On 2/2/17, 12:23 PM, "gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of George Kirikos" <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> on behalf of icann@leap.com><mailto:icann@leap.com%3e> wrote:
Without belabouring the obvious:
1. "Incontestability" is less absolute than it sounds. Since Marc appears to dislike links to Wikipedia, let me choose a reference that he might prefer, namely INTA:
http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUn derstandIt.aspx
"Despite the name, incontestability does not provide the registration with a complete shield against attack. Registrations are subject to cancellation at any time based on any of the following: (1) genericness; (2) functionality; (3) abandonment; (4) fraud on the USPTO; (5) immorality, deception or scandalousness; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications on wines or spirits meeting certain requirements; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent or of a deceased president without the consent of his widow. So the shield of incontestability has been likened to the proverbial armor made of Swiss cheese rather than a coat made of metal."
Let me repeat the "takeaway", namely "armor made of Swiss cheese."
2. As for what is "fact" vs "evidence" re: the meaning of a TM registration, let me remind folks of some alarming statistics posted to this list last August:
http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
"During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
In order to have a balanced and thorough review of the TMCH, we need to keep these things in mind.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky <jonathan.matkowsky@riskiq.net><mailto:jonathan.matkowsky@riskiq.net%3e> wrote:
In US, one of the benefits of registration is a presumption of validity of ownership, and exclusivity with respect to the goods/services covered by the registration. Only by successfully challenging the registration would the owner lose that benefit. After 5 years, assuming certain documents are filed, the registration becomes conclusive evidence in certain respects.
On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman@inta.org><mailto:lschulman@inta.org%3e> wrote:
As a clarification to the point of law, TM rights are presumed until they are challenged. George, to your point, TM rights may certainly be challenged. However, the presumption is with the owner of the TM registration until such challenge prevails. Under U.S. law, TM registrations are proof of right. They are more than a notice of claim. An application is the notice of claim, the resulting registration presumes the right. I certainly welcome trademark practitioners from jurisdictions to weigh in on whether registrations are ³notice of a claim² or considered proof of ownership until otherwise successfully challenged.
Lori
Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:%3e%3e%3e%3e[mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Thursday, February 02, 2017 2:19 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org%3e>
Subject: Re: [gnso-rpm-wg] TMCH Blog
Marc: I used the Wikipedia link as a fairly neutral starting point for the theory of signalling, and not "authoritative". Would you consider the Nobel Prize in Economics for work on signalling to be "authoritative" enough for you?
http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/ press.html
Or should I have provided (like most of the posts to this list) no external references at all, and simply allow people to go to Google on their own? Which aspect of the concept of signalling do you disagree with?
As for "registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction."
Hmmm, that's not correct, given that TM registrations can be and are disputed and cancelled. Trademark registration is *evidence* and *notice* of a *claim* to a trademark right (perhaps even a strong claim), but are not "proof" of anything as a "fact."
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote:
George,
Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
Regardless I don¹t think your application of this to the TMCH is appropriate and disagree with your description of how the TMCH functions. When trademark holders submit their registrations to the TMCH, they are not trying to prove that their marks are "worthy" of protection. The fact that they have registrations is proof that the marks are not only worthy of protection, but that they are in fact protected under the law of the issuing jurisdiction.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.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, February 02, 2017 12:58 PM To: gnso-rpm-wg Subject: Re: [gnso-rpm-wg] TMCH Blog
To continue the "economics tutorial", this is all directly related to the concept of signalling:
https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wi ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB 7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4 g3JWuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
The classic example comes from the education credentials market. How does a job candidate signal that they're a high quality hire? The
that high quality job candidates can obtain good degrees, and it's much costlier for low quality job candidates to get those same credentials.
Let's apply this to the TMCH -- implicitly, trademark holders are jumping through hoops at present to determine that their marks are "worthy" of protection. The hoops they're jumping through are:
1. pay the TMCH fees, and 2. show evidence of national TM registration in a jurisdiction, and
idea is 3.
show proof of use
However, unlike the academic credentials market above, where "good" and "bad" job candidates face different costs, in the TMCH the "good" and "bad" trademark holders face essentially the SAME costs! (i.e. the fees are the same, one can get a Pakistani TM for under $10, and one can throw up a webpage for free to show "proof of use").
In other words, the mechanisms for signalling are entirely broken in the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a policymaking body, we should understand *why* it's broken, and either (1) make stronger signals to differentiate and distinguish between worthy and unworthy marks, or (2) as I suggested earlier, set an explicit direct price to change the balance and behaviour directly.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIG aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1 c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6 g71cr0vEGbww0X9qgsNDU&e=
On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann@leap.com><mailto:icann@leap.com%3e>
wrote:
Hello,
(and trying to combine multiple responses in one email)
On Thu, Feb 2, 2017 at 12:51 PM, <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com%3e> wrote: > I think you are trying to apply domain speculation thinking where it > is all about monetary value to protection of trademark rights, which is not > necessary focused or valued in terms of specific monetary value. They are > not the same thing. > > If life isn¹t fair is an acceptable justification then why change the > current system because it is not fair that some may have gamed it by using > trademark registrations obtained solely for the purpose of registering > valuable domain names during sunrise? You can¹t have it both ways.
1. The "domain speculation thinking" is your term for what is simply rational economic decision-making. Even for trademark protection, rational trademark holders prioritize enforcement based on a comparison between the economic benefit of stopping the abuse relative to the economic cost of that enforcement.
2. The "life isn't fair" in my statement was referencing the fact that not everyone has the same wealth. That is entirely different from those misusing trademark registrations obtained solely for the purpose of registering valuable domain names -- those TMs would be invalid in jurisdictions requiring use (and thus shouldn't have been granted in the first place).
3. Some folks continue to dance around the issue, and ignore the economics completely. Each and every time you try to add a wrinkle to the procedure (i.e. "tweaks" that seek to give better proof of use, or other modifications), all that does is slightly change the "costs" for some actors, but doesn't change the underlying economics by much. i.e. it attempts to impose a "price" indirectly, rather than explicitly and directly setting a price that would actually change behaviour.
4. For those saying "small" trademark holders would be affected --- fine, change the economics accordingly --- should the quota be 10,000 marks? Should the cost be $1? Once you make the cost explicitly be $1, that just says "Fine, we're going to accept all the gaming behaviour, because we're prepared to look the other way!" That's an invitation to those who are misusing the sunrise periods to continue doing what they're doing.
While some constituencies in the GNSO might be fine with that balance (i.e. accept every TM, and allow all kinds of abuse of the sunrise periods), other constituencies might draw the line for that balance elsewhere.
5. Let me give you an example -- ACPA allows damages of up to $100,000 for cybersquatting. That's an explicit cost on cybersquatters that they take into account, and has a deterrent effect. What if that limit instead was $500? Behaviour would obviously change accordingly, because cybersquatters are rational.
6. A further example -- it costs $1000+ to file a UDRP (on top of legal costs, so a number like $5000 might be more relevant for those who use lawyers). If the total costs were $300, there would be a lot more filings (which would reduce the benefits of cybersquatting, and thus change the economics of abuse).
In conclusion, the economics of all the actors are paramount, and seem to be mostly ignored. By focusing on those economics directly, as policymakers we can precision-target the policies to directly target those behaviours, and reduce all the "collateral damage" on the innocent actors.
Sincerely,
George Kirikos 416-588-0269
https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw
IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz
Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2
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