Interesting point, Greg. Look forward to the discussion on today’s call (active now). Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Wednesday, December 14, 2016 11:38 AM To: Phil Corwin Cc: John McElwaine; 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 I think we are getting closer to a question that is readable and does not (arguably, for those who think it is arguable) misuse legal terms. As I understand the current phrasing, from Phil's email, is: "Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected?” (new language in Bold) However, this version of the question raises a different problem. Now, the question is no longer about the TMCH. Instead it's about RPMs (e.g., Claims and Sunrise) that use the TMCH. As such, it's not an appropriate question for this list. Like question 9, this question should be moved to questions on TM Claims and Sunrise and further considered at that time, and removed from the TMCH list. Greg On Tue, Dec 13, 2016 at 4:53 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: Thanks John. Hopefully we can get past this one quickly on tomorrow’s call. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: John McElwaine [mailto:john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>] Sent: Tuesday, December 13, 2016 1:17 PM To: Phil Corwin; J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Phil, This revision is very helpful, and I believe, that the question(as revised) is now sufficiently clear for discussion. John From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: Tuesday, December 13, 2016 11:48 AM To: John McElwaine; J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 John: Responding to you and others who have weighed in on this. Much of what the chairs -- and WG members -- are trying to do here is to combine and rationalize related community-submitted questions that are appended to the Charter. I admit that the current phrasing is not the most elegant and we would certainly welcome any suggestions for clarification that don't unduly delay getting the questions out, so that we can collect and analyze the answers and make some decisions. Let's try to parse the question in regard to one of everyone's favorite generic word examples, "apple", which is generic for the fruit but is a well-known trademark for consumer electronics. In that context, the question "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?" would seem to be asking whether (presuming that Apple the electronics manufacturer is the sole TM holder that has registered 'apple" in the TMCH; if others have TM'd "apple" for other purposes and likewise registered that would complicate the analysis), when a potential domain registrant begins to register apple.tld, that individual should only receive a TM Claims Notice when the .TLD is one associated with the goods and services for which the TM is registered (and I guess that the logical extension would be that TM holders would only have a right to sunrise registrations in a TLD that was reasonably related to the goods and services for which the TM has been registered). Given that analysis, the more precise way to phrase the question might be, "Should the scope of the RPMs associated with the TMCH be limited to apply only to TLDs that are related to the categories of goods and services in which the dictionary term(s) within a trademark are protected?” (new language in Bold) Again, this is not the Chairs’ question but is based on one submitted by a community member. If that is a more acceptable version of the question then let’s see if we can concur. My own experience within ICANN is that no matter how precisely you try to frame a question some of those responding will ignore the text and answer the question as they wish it had been phrased. Finally, projecting a bit, and speaking solely in a personal capacity (Chair hat temporarily removed) my own answer to this question would likely be “no”, for two reasons. First, it would be a tremendous administrative burden on the TMCH, and one likely to generate disagreement in specific instances, if for each TM registered in the TMCH it had to determine which of the more than one thousand new gTLD “strings” corresponded to a given class(es) of goods and services associated with the TM. Second, there is no logical connection between the choice of TLD and potential infringement. Someone might register “apple” at a TLD associated with computers, phones, consumer electronics, etc. and use it in a perfectly noninfringing manner, such as a website evaluating the pluses and minuses of various Apple products. Another registrant might register apple at a website associated with food, farming, or nutrition & health (generic meaning related TLDs that are not “protected”) and yet use it in an infringing manner such as selling competing (or counterfeit) electronic products, and use SEO search techniques to drive traffic to it. When it comes to the Claims Notice I am personally more concerned that it conveys a clear message, especially to the unsophisticated registrant, and does not unduly suppress legitimate registrations. When it comes to sunrise registrations I think it’s up to the TM owner to decide which of the new gTLDs merits registration of the company’s trademarks. I hope that helps rather than confuses. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: John McElwaine [mailto:john.mcelwaine@nelsonmullins.com] Sent: Tuesday, December 13, 2016 10:06 AM To: Phil Corwin; J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos; gnso-rpm-wg@icann.org<mailto: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> [mailto: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<mailto: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 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:(202)%20559-8597>/Direct 202-559-8750<tel:(202)%20559-8750>/Fax 202-255-6172<tel:(202)%20255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----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 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<mailto: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<tel:(408)%20536-5336> (tel), 408.709.6162<tel:(408)%20709-6162> (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DgMFAw&c...> On 12/13/16, 4:18 AM, "Paul Keating" <Paul@law.es<mailto:Paul@law.es>> wrote:
Please circulate it prior to the call.
On 12/13/16, 1:10 PM, "J. Scott Evans" <jsevans@adobe.com<mailto: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<tel:(408)%20536-5336> (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
www.adobe.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DgMFAw&c...>
On 12/13/16, 4:06 AM, "Paul Keating" <Paul@law.es<mailto: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<mailto: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<http://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<tel:(408)%20536-5336> (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
www.adobe.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DgMFAw&c...>
On 12/13/16, 3:44 AM, "Paul Keating" <Paul@law.es<mailto: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<mailto: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<mailto:jonathan.agmon@ip-law.legal>
www.ip-law.legal<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.ip-2Dlaw.legal&d=DgM...>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street, 4672408 Herzliya, ISRAEL T SG +65 6532 2577<tel:+65%206532%202577> T
US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000 F IL +972 9 950 5500
This message is confidential. It may also be privileged or
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From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>
[mailto: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<mailto:Paul@law.es>>; J. Scott Evans
<jsevans@adobe.com<mailto:jsevans@adobe.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>>;
gnso-rpm-wg@icann.org<mailto: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:
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>
[mailto: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<mailto: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<mailto:gnso-rpm-wg-bounces@icann.org>
on
behalf of jsevans@adobe.com<mailto: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<tel:(408)%20536-5336> (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
>www.adobe.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.com&d=DgMFAw&c...>
>
>
>
>
>
>
>
>
>On 12/12/16, 10:04 AM, "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>>
>wrote:
>
>>FYI, re: "generic", both the .uk and the .nz dispute policies
>>reference "generic" domain names, see:
>>
>>.uk:
>>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<tel:(416)%20588-0269>
>>_______________________________________________
>>gnso-rpm-wg mailing list
>>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>
>
>
>________________________________
>
><ACL>
>_______________________________________________
>gnso-rpm-wg mailing list
>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>
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