I think the larger point is that people are putting trademarks in the TMCH Database, which is exactly what was intended.  Some trademarks have other meanings, some of them as geographical terms, and some don't.  But nobody is putting a "geographic term" as such into the TMCH Database.  By contrast, some people are putting "geographical indications" (GIs) as such into the TMCH Database.

Here's WIPO's definition of a Geographical Indication:

A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.

I don't think it's useful to treat  "Geographic indications, geographic indicators and geographic names" both as "ordinary definitions and terms of art" like one big ball of wax.  The distinctions are important, and their meaning (or lack of meaning) in trademark law is important to distinguish and understand in our discussions.  Nor is it helpful to mash the discussion of these together without realizing the distinctions.  Rather, I think we should try to use the proper vocabulary (while being corrective (without being critical) of attempts that go astray).

"Geographical Indications" is the proper term of art for what's described above in italics.  In casual usage, people (including trademark experts)s may use "geographic indications" or "geographic indicators" when they mean Geographical Indications (GIs).  We may want to avoid using all of these terms interchangeably, and instead use only "Geographical Indications" or "GIs" when that's what we mean.  In part, that is because the other terms may have other,potentially conflicting meanings.  I've seen "geographic indicators" used as if it's synonymous with "geographic terms"; and I've seen "geographic indicators" used (in social sciences and similar data) to mean variables created to describe the area of residence of the subject of a study or a respondent to a survey.

On the other hand "geographic names" and "geographic terms" generally refers to the use of terms in their geographic meaning (i.e., as a place name).  We should use one or the other (or maybe both, I don't want to be too much of a stickler) when we mean place names functioning as such.  Personally, I think "geographic terms" is a bit more precise.

Geographic terms can also function as trademarks, but there is a higher bar to get certain geographic names registered as trademarks (i.e., those that are "primarily geographically descriptive").  Where a registered trademark is also a geographic term, it generally needed to have cleared that higher bar.  At the risk of simplifying too much, the mark needs to acquire secondary meaning (also called "acquired distinctiveness in this context), which means that (in the eye of a consumer) the "string" is functioning as a trademark and not as a geographic term.

There are also times when geographic names function neither as trademarks nor as geographic terms, e.g., "dotted swiss," "Boston baked beans," "Swiss cheese," "Early American design," and "Italian spaghetti" (examples given in the USPTO's Trademark Manual of Examining Procedure).  There are also geographic names that are obscure and thus won't be considered "primarily geographically descriptive").

The details of this area are way, way beyond the scope of this email, and this is both a bit simplified and also US-centric.  If you want to see how the USPTO instructs its trademark examiners to analyze trademark applications containing geographic terms, see https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e8253.html

But my main point is that "Geographical Indications" are a specific type of source-identifying use of geographic terms and that trademarks that are also geographic terms are a different type of source-identifying use, and that neither should be confused with "geographic terms" or "geographic names" functioning as such.

My subsidiary point is that these need to be distinguished when we're analyzing this area, and not mushed together.

Greg


Greg Shatan
C: 917-816-6428
S: gsshatan
gregshatanipc@gmail.com

 

 

On Wed, Feb 8, 2017 at 12:47 PM, Winterfeldt, Brian J. <BWinterfeldt@mayerbrown.com> wrote:

Hi all,

 

I agree with the points raised by Marc and J. Scott.  It is very important to keep these distinctions in mind while discussing TMCH rules.  This is another example of why educational services are so important.

 

Best regards,

 

Brian


Brian J. Winterfeldt

Co-Head of Global Brand Management and Internet Practice

Mayer Brown LLP

bwinterfeldt@mayerbrown.com

1999 K Street, NW

Washington, DC  20006-1101

202.263.3284 direct dial

202.830.0330 fax

 

1221 Avenue of the Americas

New York, New York  10020-1001

212.506.2345 direct dial


On Feb 8, 2017, at 12:30 PM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:

Yes. Let me chime in here. This is where words are important:  “Geographic Indicators” are a specific subset of intellectual property that are similar to trademarks in their protection, but there is a very specific criterion that these indicators must meet to be receive the protection.

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




From: <gnso-rpm-wg-bounces@icann.org> on behalf of Massimo <massimo@origin-gi.com>
Date: Wednesday, February 8, 2017 at 9:16 AM
To: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com>, "kathy@kathykleiman.com" <kathy@kathykleiman.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>
Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications

Thank you Kathy and Marc.

 

I agree with Marc, the 3 marks listed by Kathy are not being used as geographical indications. The interest of question 8 for me is to enquire on those marks filed under paragraph 2.4.1 of the TMCH guidelines (marks protected by Statute or Treaty) : “For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin”.

 

Best,

 

Massimo

 

From: trachtenbergm@gtlaw.com [mailto:trachtenbergm@gtlaw.com]
Sent: 08 February 2017 17:58
To: kathy@kathykleiman.com; Massimo <Massimo@origin-gi.com>; gnso-rpm-wg@icann.org
Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications

 

Kathy,

 

I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators.  Rather, they are registered in connection with the following goods/services:

 

Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer

 

class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles

 

Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging]

 

As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context.  In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word.  In other contexts, the word can have generic or descriptive meaning.  For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples.  Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture.

 

Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.

 

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 | www.gtlaw.com

 

Greenberg Traurig

 

 

From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman
Sent: Wednesday, February 08, 2017 10:24 AM
To: massimo@origin-gi.com; gnso-rpm-wg@icann.org
Subject: [gnso-rpm-wg] [renamed] Geographic indications

 

Massimo,

Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8).

Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for:

- Munich  --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE

- Muenchen   --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE

- Munchen  --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE

- Tahiti  - French trademark

-  Ireland -- UK trademark

He notes that the registrants were using the domain names in geographically descriptive ways.

Best, Kathy

 

On 2/7/2017 11:04 AM, Massimo wrote:

Dear Mary,

 

I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements".

 

I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8.

 

Best,

 

Massimo

 

 

 

Mr Massimo Vittori

Managing Director – oriGIn

1, rue de Varembé 1202, Geneva, Switzerland

Telephone: +41 (0) 22 755 07 32

E-mail: massimo@origin-gi.com  

www.origin-gi.com 

 

 

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CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any.

 

 

 

 

From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong
Sent: 06 February 2017 15:50
To: gnso-rpm-wg@icann.org
Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up

 

Dear all,

 

Following on the circulation of the previous summary table of the questions, input and discussions so far on TMCH Charter Questions categories 1 and 2 (below), please find attached a similar summary table for the remaining categories (3 – 6). As the Working Group has yet to begin discussing these, staff has taken the liberty of adding what we believe to be relevant background information from the community comments to the TMCH that were provided for the 2015 RPM Paper.

 

We will post both tables to the Working Group wiki for your easy reference as well.

 

Thanks and cheers

Mary

 

From: Mary Wong <mary.wong@icann.org>
Date: Thursday, February 2, 2017 at 18:18
To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org>
Subject: Table summarizing TMCH Charter questions, WG follow up questions, and input from Deloitte and Registry Operators

 

Dear all,

 

As discussed at the end of the Working Group call yesterday, staff has begun to compile a table that combines the agreed TMCH Charter questions with the relevant Working Group follow up questions, Deloitte response (if any), and (where applicable) input that was received from various registry operators and the Registries Stakeholder Group (note that the Registries SG is the only community group so far that has provided us with a response to our initial solicitation for input from all the various Supporting Organizations, Advisory Committees and GNSO Stakeholder Groups and Constituencies).

 

Attached is the compilation we have done for TMCH Categories 1 (Education) and 2 (Verification and Updating of TMCH Data). As Kathy and others noted on the call, not all questions have direct responses, and in some cases we have inserted what we thought might be relevant information even if it is not an actual reply. Do let us know if you spot any inaccuracies or omissions.

 

We hope you find the document useful. If we may, we suggest that you review it with a view toward identifying the following:

·         What additional data or follow up input is needed, and from whom, to complete our review of these aspects of the TMCH?

·         What additional data or follow up input should we request from Deloitte, including for our expected discussion with them at ICANN58?

 

Please note that we have not yet included any information from the Analysis Group’s review of the TMCH, as we understand that a Final Report will be forthcoming from them shortly, and possibly before ICANN58. We will incorporate any relevant data once the Final Report is out, and will in the meantime continue working on a table for the remaining TMCH Charter categories and questions.

 

The full Deloitte response to the TMCH Data Gathering questions and the three responses we received to the set of Registry-directed questions can be found here: https://community.icann.org/x/_pHRAw.

 

The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://community.icann.org/download/attachments/59643854/RySG%20RPM%20Response_05JUL16.pdf?version=1&modificationDate=1468352438000&api=v2.

 

Thanks and cheers

Mary

 

 

Mary Wong

Senior Policy Director

Internet Corporation for Assigned Names and Numbers (ICANN)

Telephone: +1-603-5744889

 

 

 



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