FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org] So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org> www.icann.org[icann.org]<http://www.icann.org>[icann.org] <Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. 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I agree with John’s points and conclusions below. Thanks, Chris ________________________________ Christopher Thomas Partner [Parker Poe] PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard<http://www.parkerpoe.com/GetVcard?ID=28245> | map<https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601> Visit our website at www.parkerpoe.com<http://www.parkerpoe.com> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. 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I also fully agree with John; this isn't the place to go into European Trade Mark Law, or practice, but the basis is the same. The TMCH can't be called upon to take decisions on how and to whom to grant TMs, of course, and this will only confuse. Marie Sent from my iPhone, sorry for typos
On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas@parkerpoe.com> wrote:
I agree with John’s points and conclusions below.
Thanks, Chris
Christopher Thomas Partner
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard | map
Visit our website at www.parkerpoe.com
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org> www.icann.org[icann.org]<http://www.icann.org>[icann.org]
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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I understand your point Marie but your conclusion presupposes the purpose of the question which is to investigate. We are IMHO too early in the process to conclude that TMCH should not be placed in a position rendering a decision. Paul From: <gnso-rpm-wg-bounces@icann.org> on behalf of Marie Pattullo <marie.pattullo@aim.be> Date: Tuesday, December 6, 2016 at 4:02 PM To: "Thomas, Christopher M." <christhomas@parkerpoe.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I also fully agree with John; this isn't the place to go into European Trade Mark Law, or practice, but the basis is the same. The TMCH can't be called upon to take decisions on how and to whom to grant TMs, of course, and this will only confuse. Marie
Sent from my iPhone, sorry for typos
On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas@parkerpoe.com> wrote:
I agree with John’s points and conclusions below.
Thanks, Chris
Christopher Thomas Partner
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard <http://www.parkerpoe.com/GetVcard?ID=28245> | map <https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601>
Visit our website at www.parkerpoe.com <http://www.parkerpoe.com>
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSh... et.aspx[inta.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBa sics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wr crwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA &m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr 51Qb3RqKsrNZTpY&e=>
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org> www.icann.org[icann.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g& c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfD d3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOP YcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <http://www.icann.org>[icann.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g& c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfD d3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOP YcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=>
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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PRIVILEGED AND CONFIDENTIAL: This electronic message and any attachments are confidential property of the sender. The information is intended only for the use of the person to whom it was addressed. Any other interception, copying, accessing, or disclosure of this message is prohibited. The sender takes no responsibility for any unauthorized reliance on this message. If you have received this message in error, please immediately notify the sender and purge the message you received. Do not forward this message without permission. [ppab_p&c] !DSPAM:5846d21a17627779611108! _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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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/Final-propos... "8.1.2 The Domain Name is generic or descriptive and the Respondent is making fair use of it;" .nz: https://www.dnc.org.nz/resource-library/policies/65 "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 http://www.leap.com/
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), 408.709.6162 (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/Final-prop osed-DRS-Policy.pdf
"8.1.2 The Domain Name is generic or descriptive and the Respondent is making fair use of it;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________ <ACL>
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 (tel), 408.709.6162 (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/Final-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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Would this wording get to the root of the issue without the contention perhaps? Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the words within a trademark can enjoy protection? If so, how? Yours sincerely, Paul On Mon, Dec 12, 2016 at 9:23 PM, Paul Keating <Paul@law.es> wrote:
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 (tel), 408.709.6162 (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/Final-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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Paul, It seems that your question speaks to the eligibility criteria for a particular TLD operator (whether in sunrise or thereafter), not to the TMCH – which again is meant to be a central repository on which registries/RPMs can draw. In that case, also noting the broader RPM and TMCH policy development history, again we must be mindful to avoid the TMCH being in a position of “rendering a decision” on a previously-obtained valid trademark registration. As to the information from Mr. Kirikos, these ccTLD-specific colloquial uses of the term “generic”, notably in the context of respondent defenses, are occurring (as applied to this context) downstream from the TMCH. In other words, we should avoid crafting (restrictive) rules for the TMCH which may already prejudge a particular legal application (here, in the dispute resolution context), but should allow sufficient flexibility for panel assessment of the potential applicability of arguments about the strength of a particular mark in the dispute resolution process itself. Regards, Brian Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Tuesday, December 13, 2016 12:37 AM To: Paul Keating Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Would this wording get to the root of the issue without the contention perhaps? Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the words within a trademark can enjoy protection? If so, how? Yours sincerely, Paul On Mon, Dec 12, 2016 at 9:23 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: 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:408.536.5336> (tel), 408.709.6162<tel:408.709.6162> (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com>
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: http://nominet-prod.s3.amazonaws.com/wp-content/uploads/2016/08/Final-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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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:416-588-0269> http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Agreed Brian, however my intention is to re-work the question as little as possible rather than advocate for or against its flawed or otherwise contentions at this consideration of questions stage. Best regards, Paul On Tue, Dec 13, 2016 at 9:22 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Paul,
It seems that your question speaks to the eligibility criteria for a particular TLD operator (whether in sunrise or thereafter), not to the TMCH – which again is meant to be a central repository on which registries/RPMs can draw. In that case, also noting the broader RPM and TMCH policy development history, again we must be mindful to avoid the TMCH being in a position of “rendering a decision” on a previously-obtained valid trademark registration.
As to the information from Mr. Kirikos, these ccTLD-specific colloquial uses of the term “generic”, notably in the context of respondent defenses, are occurring (as applied to this context) downstream from the TMCH. In other words, we should avoid crafting (restrictive) rules for the TMCH which may already prejudge a particular legal application (here, in the dispute resolution context), but should allow sufficient flexibility for panel assessment of the potential applicability of arguments about the strength of a particular mark in the dispute resolution process itself.
Regards,
Brian
Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 <+41%2022%20338%2082%2047> | E brian.beckham@wipo.int | *www.wipo.int <http://www.wipo.int>*
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ icann.org] *On Behalf Of *Paul Tattersfield *Sent:* Tuesday, December 13, 2016 12:37 AM *To:* Paul Keating *Cc:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Would this wording get to the root of the issue without the contention perhaps?
Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the words within a trademark can enjoy protection? If so, how?
Yours sincerely,
Paul
On Mon, Dec 12, 2016 at 9:23 PM, Paul Keating <Paul@law.es> wrote:
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 (tel), 408.709.6162 (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/Final-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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Paul, I agree, lets try to keep as much of the question as possible and deal with all of this during the discussion. PRK From: Paul Tattersfield <gpmgroup@gmail.com> Date: Tuesday, December 13, 2016 at 11:54 AM To: "Beckham, Brian" <brian.beckham@wipo.int> Cc: Paul Keating <paul@law.es>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Agreed Brian, however my intention is to re-work the question as little as possible rather than advocate for or against its flawed or otherwise contentions at this consideration of questions stage.
Best regards, Paul
On Tue, Dec 13, 2016 at 9:22 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Paul,
It seems that your question speaks to the eligibility criteria for a particular TLD operator (whether in sunrise or thereafter), not to the TMCH – which again is meant to be a central repository on which registries/RPMs can draw. In that case, also noting the broader RPM and TMCH policy development history, again we must be mindful to avoid the TMCH being in a position of “rendering a decision” on a previously-obtained valid trademark registration.
As to the information from Mr. Kirikos, these ccTLD-specific colloquial uses of the term “generic”, notably in the context of respondent defenses, are occurring (as applied to this context) downstream from the TMCH. In other words, we should avoid crafting (restrictive) rules for the TMCH which may already prejudge a particular legal application (here, in the dispute resolution context), but should allow sufficient flexibility for panel assessment of the potential applicability of arguments about the strength of a particular mark in the dispute resolution process itself.
Regards,
Brian
Brian Beckham|Head, Internet Dispute Resolution Section|WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland|T +4122 338 8247 <tel:+41%2022%20338%2082%2047> |E brian.beckham@wipo.int|www.wipo.int <http://www.wipo.int>
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Tattersfield Sent: Tuesday, December 13, 2016 12:37 AM To: Paul Keating Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Would this wording get to the root of the issue without the contention perhaps?
Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the words within a trademark can enjoy protection? If so, how?
Yours sincerely,
Paul
On Mon, Dec 12, 2016 at 9:23 PM, Paul Keating <Paul@law.es> wrote: 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 <tel:408.536.5336> (tel), 408.709.6162 <tel:408.709.6162> (cell) jsevans@adobe.com www.adobe.com <http://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/Final-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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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:416-588-0269> http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Paul, all, A timely post on CircleID speaks to (intentional) confusion on the "generic"/dictionary dichotomy: http://www.circleid.com/posts/20161212_appearing_respondents_called_out_as_c... 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] 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 (tel), 408.709.6162 (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/Final-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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_out_as_c... 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] 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 (tel), 408.709.6162 (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/Final- 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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************
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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_out_as _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] 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 (tel), 408.709.6162 (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/Final- 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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
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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 (tel), 408.709.6162 (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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_out_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] 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 (tel), 408.709.6162 (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/Final- 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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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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 (tel), 408.709.6162 (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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_out_ 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] 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 (tel), 408.709.6162 (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/Final- 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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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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), 408.709.6162 (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 (tel), 408.709.6162 (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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_out _ 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] 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 (tel), 408.709.6162 (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/Final - 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;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_ou 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] 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 (tel), 408.709.6162 (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/Fina >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;" > >.nz: https://www.dnc.org.nz/resource-library/policies/65 > >"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 >http://www.leap.com/ >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
________________________________
<ACL> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Phil? 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 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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_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] 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 (tel), 408.709.6162 (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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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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/Direct 202-559-8750/Fax 202-255-6172/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] 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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_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] 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 (tel), 408.709.6162 (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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Hi Phil, I thank the Chairs for their leadership and hard work in drafting this more detailed and exact question. I think it is faithful to the Charter queries and I fully support this compromise solution. Kind Regards, Ed Morris ---------------------------------------- From: "Phil Corwin" <psc@vlaw-dc.com> Sent: Tuesday, December 13, 2016 1:58 PM To: "J. Scott Evans" <jsevans@adobe.com>, "Paul Keating" <Paul@law.es>, "Jonathan Agmon" <jonathan.agmon@ip-law.legal>, "Beckham, Brian" <brian.beckham@wipo.int>, "George Kirikos" <icann@leap.com>, "gnso-rpm-wg@icann.org" <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/Direct 202-559-8750/Fax 202-255-6172/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] 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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_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] 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 (tel), 408.709.6162 (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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Thank you Ed! 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: Edward Morris [mailto:egmorris1@toast.net] Sent: Tuesday, December 13, 2016 9:15 AM To: J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos; gnso-rpm-wg@icann.org; Phil Corwin Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Hi Phil, I thank the Chairs for their leadership and hard work in drafting this more detailed and exact question. I think it is faithful to the Charter queries and I fully support this compromise solution. Kind Regards, Ed Morris ________________________________ From: "Phil Corwin" <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> Sent: Tuesday, December 13, 2016 1:58 PM To: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, "Paul Keating" <Paul@law.es<mailto:Paul@law.es>>, "Jonathan Agmon" <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>, "Beckham, Brian" <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>, "George Kirikos" <icann@leap.com<mailto:icann@leap.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com>
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 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com>
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<http://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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> [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: http://www.circleid.com/posts/20161212_appearing_respondents_called_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%0b>>>>>>>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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com> > > > > > > > > >On 12/12/16, 10:04 AM, "gnso-rpm-wg-bounces@icann.org on behalf of >George Kirikos<mailto:gnso-rpm-wg-bounces@icann.org%20on%20behalf%20of%0b%3e%3e%3e%3e%3e%3e%3eGeorge%20Kirikos>" <gnso-rpm-wg-bounces@icann.org on behalf of <mailto:gnso-rpm-wg-bounces@icann.org%20on%20behalf%20of%0b>>>>>>>>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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7924 / Virus Database: 4664/13557 - Release Date: 12/08/16
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] 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 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 -----Original Message----- From: 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 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), 408.709.6162 (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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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_called_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] 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 (tel), 408.709.6162 (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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Ive spent the afternoon back reading the threads here and I have to hold my hands up and admit Im confused. We all know that ICANN isnt a legislative body, and we all know that it cant (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. Thats what the TMCH is - a repository of TMs that have been legally granted. No? And unless and until a TM lapses, or is cancelled, its as much a legal property right as any other. It cant 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 wed be on different ground, but given that its the gatekeeper for accessing certain RPMs I cant see under what basis this administrative repository could be allowed to choose which property rights are allowed through the gate and which arent. Im sorry if this is naïve, but I honestly dont understand how the TMCH can be the court of appeal for the legality of TM rights. Isnt 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 Johns 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 isnt that actually discriminating against words that are in TMs against words that arent - dictionary, arbitrary, proper or just plain made up? What are we actually trying to do? Im 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 AIM_logo_EN_RGB Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at <http://www.aim.be/> www.aim.be Follow us on: <http://twitter.com/AIMbrands> cid:image002.png@01CF7513.F273FDB0 <http://www.linkedin.com/company/aim---european-brands-association?trk=compa ny_name> cid:image003.png@01CF7513.F273FDB0 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto: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: <mailto:gnso-rpm-wg-bounces@icann.org> 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; <mailto:gnso-rpm-wg@icann.org> 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/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: <mailto:gnso-rpm-wg-bounces@icann.org> 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; <mailto:gnso-rpm-wg@icann.org> 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), 408.709.6162 (cell) <mailto:jsevans@adobe.com> jsevans@adobe.com <http://www.adobe.com> www.adobe.com On 12/13/16, 4:18 AM, "Paul Keating" < <mailto:Paul@law.es> Paul@law.es> wrote:
Please circulate it prior to the call.
On 12/13/16, 1:10 PM, "J. Scott Evans" < <mailto:jsevans@adobe.com> 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), 408.709.6162 (cell) <mailto:jsevans@adobe.com> jsevans@adobe.com <http://www.adobe.com> www.adobe.com
On 12/13/16, 4:06 AM, "Paul Keating" < <mailto:Paul@law.es> 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" < <mailto:jsevans@adobe.com> 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 (tel), 408.709.6162 (cell) <mailto:jsevans@adobe.com> jsevans@adobe.com <http://www.adobe.com> www.adobe.com
On 12/13/16, 3:44 AM, "Paul Keating" < <mailto:Paul@law.es> 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" < <mailto:jonathan.agmon@ip-law.legal> 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 <mailto:jonathan.agmon@ip-law.legal> jonathan.agmon@ip-law.legal <http://www.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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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: <mailto:gnso-rpm-wg-bounces@icann.org> 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 < <mailto:Paul@law.es> Paul@law.es>; J. Scott Evans < <mailto:jsevans@adobe.com> jsevans@adobe.com>; George Kirikos < <mailto:icann@leap.com> icann@leap.com>; <mailto:gnso-rpm-wg@icann.org> 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> 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: <mailto:gnso-rpm-wg-bounces@icann.org> 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; <mailto:gnso-rpm-wg@icann.org> 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 <mailto:jsevans@adobe.com> 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), 408.709.6162 (cell) <mailto:jsevans@adobe.com> jsevans@adobe.com > <http://www.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 > <mailto:icann@leap.com> 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/> 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;" >> >>.nz: <https://www.dnc.org.nz/resource-library/policies/65> https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >> <http://www.leap.com/> http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >> <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org >> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list > <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org > <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Marie, This stage is only forming the question. The potential responses to the question have not yet been discussed and need not be. The possible results include: Yes and X should be done; Yes, but in reality nothing can be done; or No. However, as noted, we are not there yet. Paul From: Marie Pattullo <marie.pattullo@aim.be> Date: Tuesday, December 13, 2016 at 4:34 PM To: 'John McElwaine' <john.mcelwaine@nelsonmullins.com>, Phil Corwin <psc@vlaw-dc.com>, "'J. Scott Evans'" <jsevans@adobe.com>, Paul Keating <paul@law.es>, 'Jonathan Agmon' <jonathan.agmon@ip-law.legal>, "'Beckham, Brian'" <brian.beckham@wipo.int>, '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
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
Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be <http://www.aim.be/> Follow us on: <http://twitter.com/AIMbrands> <http://www.linkedin.com/company/aim---european-brands-association?trk=compan... _name>
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto: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> [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/Direct 202-559-8750/Fax 202-255-6172/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 <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), 408.709.6162 (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com>
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), 408.709.6162 (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com>
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 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), 408.709.6162 (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> >>>www.adobe.com <http://www.adobe.com> >>> >>> >>> >>> >>> >>> >>> >>> >>>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 <http://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 T > >>>>>>US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> > >>>>>>[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: > >>>>>>http://www.circleid.com/posts/20161212_appearing_respondents_calle > <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> > >>>>>>[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 > >>>>>>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), 408.709.6162 (cell) jsevans@adobe.com >> <mailto:jsevans@adobe.com> >> >>>>>>>www.adobe.com <http://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 <mailto: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/2016/0 >>> 8/ <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;" >>> >>>>>>>> >>> >>>>>>>>.nz: https://www.dnc.org.nz/resource-library/policies/65 >>> <https://www.dnc.org.nz/resource-library/policies/65> >>> >>>>>>>> >>> >>>>>>>>"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 >>> >>>>>>>>http://www.leap.com/ <http://www.leap.com/> >>> >>>>>>>>_______________________________________________ >>> >>>>>>>>gnso-rpm-wg mailing list >>> >>>>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> >>> >>>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> >> >>>>>>> >> >>>>>>> >> >>>>>>>________________________________ >> >>>>>>> >> >>>>>>><ACL> >> >>>>>>>_______________________________________________ >> >>>>>>>gnso-rpm-wg mailing list >> >>>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> >> >>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> > >>>>>> > >>>>>> > >>>>>>_______________________________________________ > >>>>>>gnso-rpm-wg mailing list > >>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > >>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> > >>>>>> > >>>>>>World Intellectual Property Organization Disclaimer: This > >>>>>>electronic message may contain privileged, confidential and > >>>>>>copyright protected information. If you have received this e-mail > >>>>>>by mistake, please immediately notify the sender and delete this > >>>>>>e-mail and all its attachments. Please ensure all e-mail > >>>>>>attachments are scanned for viruses prior to opening or using. > >>>>>>_______________________________________________ > >>>>>>gnso-rpm-wg mailing list > >>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> > >>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> > >>>>>> > >>>>>>****************************************************************** > >>>>>>*** > >>>>>>* > >>>>>>* > >>>>>>* > >>>>>>* > >>>>>>* > >>>>>>********** > >>>>>>This footnote confirms that this email message has been scanned by > >>>>>>PineApp Mail-SeCure for the presence of malicious code, vandals & > >>>>>>computer viruses. > >>>>>>****************************************************************** > >>>>>>*** > >>>>>>* > >>>>>>* > >>>>>>* > >>>>>>* > >>>>>>* > >>>>>>********** > >>>>>> > >>>>>> >>>>> >>>>> >>> > >
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!DSPAM:58500ea517621872078907!
Thanks Marie, I must admit to having a similar assessment. Paul, and others who seem inclined to preferring the question: to try to move the conversation forward, I would like to understand: what exactly is it the Working Group is trying to address with this question? If the concern is "generic” (dictionary) terms being taken in sunrise, then respectfully, the "TMCH scope" is not the place to address it. Why, for example, is this any more a concern than a non-trademark-holder “taking” a domain name during a post-sunrise premium-fee registration scheme? Again, to affirm Marie’s question/concern, ICANN/the TMCH should not re-examine valid trademark registrations. If there is a concern with the grant of the underlying registration, that would be a matter to address through the respective trademark office challenge/invalidation procedure. Brian From: Paul Keating [mailto:Paul@law.es] Sent: Tuesday, December 13, 2016 4:53 PM To: Marie Pattullo; 'John McElwaine'; 'Phil Corwin'; 'J. Scott Evans'; '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 Marie, This stage is only forming the question. The potential responses to the question have not yet been discussed and need not be. The possible results include: Yes and X should be done; Yes, but in reality nothing can be done; or No. However, as noted, we are not there yet. Paul From: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Date: Tuesday, December 13, 2016 at 4:34 PM To: 'John McElwaine' <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "'J. Scott Evans'" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 'Jonathan Agmon' <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>, "'Beckham, Brian'" <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>, '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 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 [AIM_logo_EN_RGB] Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: [cid:image002.png@01CF7513.F273FDB0]<http://twitter.com/AIMbrands> [cid:image003.png@01CF7513.F273FDB0] <http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
www.adobe.com<http://www.adobe.com>
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 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
www.adobe.com<http://www.adobe.com>
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<http://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 T
US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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>
[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:
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>
[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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
>www.adobe.com<http://www.adobe.com>
>
>
>
>
>
>
>
>
>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:
>>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
>>_______________________________________________
>>gnso-rpm-wg mailing list
>>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>
>
>
>________________________________
>
><ACL>
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>gnso-rpm-wg mailing list
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:58500ea517621872078907! World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
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 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
<image007.png>
Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be <http://www.aim.be/> Follow us on: <image008.png> <http://twitter.com/AIMbrands> <image009.png> <http://www.linkedin.com/company/aim---european-brands-association?trk=compan...>
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto: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> [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/Direct 202-559-8750/Fax 202-255-6172/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 <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), 408.709.6162 (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com/>
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 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), 408.709.6162 (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com/>
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 <http://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 T >US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> >[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: >http://www.circleid.com/posts/20161212_appearing_respondents_calle <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> >[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 >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), 408.709.6162 (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> >>www.adobe.com <http://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 <mailto: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/ <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;" >>> >>>.nz: https://www.dnc.org.nz/resource-library/policies/65 <https://www.dnc.org.nz/resource-library/policies/65> >>> >>>"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 >>>http://www.leap.com/ <http://www.leap.com/> >>>_______________________________________________ >>>gnso-rpm-wg mailing list >>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> >>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> >> >> >>________________________________ >> >><ACL> >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> > > >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> > >World Intellectual Property Organization Disclaimer: This >electronic message may contain privileged, confidential and >copyright protected information. If you have received this e-mail >by mistake, please immediately notify the sender and delete this >e-mail and all its attachments. Please ensure all e-mail >attachments are scanned for viruses prior to opening or using. >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> > >****************************************************************** >*** >* >* >* >* >* >********** >This footnote confirms that this email message has been scanned by >PineApp Mail-SeCure for the presence of malicious code, vandals & >computer viruses. >****************************************************************** >*** >* >* >* >* >* >********** > >
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This is partially what Inhave stated always. We need to look at TMCH from a utility perspective not a regulator's perspective. TMCH is a facilitator not a ultimate regulator. There will b intra-geography dynamics involved and the scope of this WG has to be focused as per the charter. -- Vaibhav Aggarwal On December 19, 2016 at 5:38:39 AM, Reg Levy (reg@mmx.co(mailto:reg@mmx.co)) wrote:
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 S: RegLevy2
Current UTC offset: -8
On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be(mailto: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
<image007.png>
Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be(http://www.aim.be/) Follow us on: <image008.png>(http://twitter.com/AIMbrands) <image009.png>(http://www.linkedin.com/company/aim---european-brands-association?trk=compan...)
-----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 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(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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com(mailto:jsevans@adobe.com) www.adobe.com(http://www.adobe.com/)
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 <="" body="">
How do you know what the intended use of the domain name will be? How will you ensure the intended use is maintained? [cid:SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png] Jonathan Agmon (???) Advocate, Director Attorney and Counsellor at Law (admitted in New York) jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto: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 S: RegLevy2 Current UTC offset: -8 On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be<mailto: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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: <image008.png><http://twitter.com/AIMbrands> <image009.png><http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<http://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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> [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: 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> [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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com/> > > > > > > > > >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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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.
From: Reg Levy [mailto: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 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
<image007.png>
Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be Follow us on: <image008.png> <image009.png>
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto: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] 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 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
-----Original Message----- From: 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 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), 408.709.6162 (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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 T >US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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] 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] 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 (tel), 408.709.6162 (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;" >>> >>>.nz: https://www.dnc.org.nz/resource-library/policies/65 >>> >>>"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 >>>http://www.leap.com/ >>>_______________________________________________ >>>gnso-rpm-wg mailing list >>>gnso-rpm-wg@icann.org >>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> >> >>________________________________ >> >><ACL> >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > >World Intellectual Property Organization Disclaimer: This >electronic message may contain privileged, confidential and >copyright protected information. If you have received this e-mail >by mistake, please immediately notify the sender and delete this >e-mail and all its attachments. Please ensure all e-mail >attachments are scanned for viruses prior to opening or using. >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > >****************************************************************** >*** >* >* >* >* >* >********** >This footnote confirms that this email message has been scanned by >PineApp Mail-SeCure for the presence of malicious code, vandals & >computer viruses. >****************************************************************** >*** >* >* >* >* >* >********** > >
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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<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto: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<mailto: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<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto:reg@mmx.co] Sent: Monday, December 19, 2016 8:09 AM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: John C. McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; Philip S. Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>; J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Keating <Paul@law.es<mailto:Paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; 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] 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 S: RegLevy2 Current UTC offset: -8 On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be<mailto: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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: <image008.png><http://twitter.com/AIMbrands> <image009.png><http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<http://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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> [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: 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> [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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com/> > > > > > > > > >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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Sorry to be quippy here but…… No. You may want it to be but it is merely an exclusive right of use. It is no more than a license granted by the United States (or other) government. The trademark crowd has long attempted to include trademarks in the holy confines of IP. Traditionally Intellectual Property was reserved for patents and copyrights – things that required the term. To an extent they have succeeded and there are more than a few courts that have confused things and used the term “property” when discussing trademark rights. The same expansive thinking has been bantered about by the copyright industry in speaking of copyrights as a constitutionally guaranteed right. The Constitution grants no such thing. It merely empowers Congress to make laws about….. This is an error and I would love the day that we return to the correct reference points. Otherwise we will continue to move down the entitlement path in which everything becomes a “property right”. Paul From: "J. Scott Evans" <jsevans@adobe.com> Date: Monday, December 19, 2016 at 9:28 AM To: Paul Keating <paul@law.es> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal>, Reg Levy <reg@mmx.co>, Marie Pattullo <marie.pattullo@aim.be>, "John C. McElwaine" <john.mcelwaine@nelsonmullins.com>, Phil Corwin <psc@vlaw-dc.com>, James Brian Beckham <brian.beckham@wipo.int>, George Kirikos <icann@leap.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016
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, DirectorAttorney and Counsellor at Law (admitted in New York)jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 TIL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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.
From: Reg Levy [mailto: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 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
<image007.png>
Marie Pattullo
Senior Trade Marks and Brand Protection Manager
AIM - European Brands Association
9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05
Mobile: + 32 496 61 03 95
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-----Original Message----- From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto: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 <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 <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/Direct
202-559-8750/Fax
202-255-6172/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 <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), 408.709.6162 (cell)
jsevans@adobe.com <mailto:jsevans@adobe.com>
www.adobe.com <http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com <mailto:jsevans@adobe.com>
>>www.adobe.com <http://www.adobe.com/>
>>
>>
>>
>>
>>
>>
>>
>>
>>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), 408.709.6162 (cell) jsevans@adobe.com >> <mailto:jsevans@adobe.com>
>> >>>>www.adobe.com <http://www.adobe.com/>
>> >>>>
>> >>>>
>> >>>>
>> >>>>
>> >>>>
>> >>>>
>> >>>>
>> >>>>
>> >>>>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 <http://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
T
>>>> >>>>>>US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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>
>>>> >>>>>>[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:
>>>> >>>>>>http://www.circleid.com/posts/20161212_appearing_respondents_ca >>>> lle >>>> <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>
>>>> >>>>>>[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), 408.709.6162 (cell) jsevans@adobe.com >>>>> <mailto:jsevans@adobe.com>
>>>>> >>>>>>>www.adobe.com <http://www.adobe.com/>
>>>>> >>>>>>>
>>>>> >>>>>>>
>>>>> >>>>>>>
>>>>> >>>>>>>
>>>>> >>>>>>>
>>>>> >>>>>>>
>>>>> >>>>>>>
>>>>> >>>>>>>
>>>>> >>>>>>>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:
>>>>>> >>>>>>>>http://nominet-prod.s3.amazonaws.com/wp-content/uploads/201 >>>>>> 6/08/ >>>>>> <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;"
>>>>>> >>>>>>>>
>>>>>> >>>>>>>>.nz: https://www.dnc.org.nz/resource-library/policies/65 >>>>>> <https://www.dnc.org.nz/resource-library/policies/65>
>>>>>> >>>>>>>>
>>>>>> >>>>>>>>"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
>>>>>> >>>>>>>>http://www.leap.com/ <http://www.leap.com/>
>>>>>> >>>>>>>>_______________________________________________
>>>>>> >>>>>>>>gnso-rpm-wg mailing list
>>>>>> >>>>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
>>>>>> >>>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
>>>>> >>>>>>>
>>>>> >>>>>>>
>>>>> >>>>>>>________________________________
>>>>> >>>>>>>
>>>>> >>>>>>><ACL>
>>>>> >>>>>>>_______________________________________________
>>>>> >>>>>>>gnso-rpm-wg mailing list
>>>>> >>>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
>>>>> >>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
>>>> >>>>>>
>>>> >>>>>>
>>>> >>>>>>_______________________________________________
>>>> >>>>>>gnso-rpm-wg mailing list
>>>> >>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
>>>> >>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
>>>> >>>>>>
>>>> >>>>>>World Intellectual Property Organization Disclaimer: This
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>>>> >>>>>>by mistake, please immediately notify the sender and delete
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>>>> >>>>>>e-mail and all its attachments. Please ensure all e-mail
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
Dear All, Being a newcomer in this WG I followed the discussion in the last weeks with great interest (but silently) and always wondered what would trigger me to post a comment. Here we are: - First, I might be wrong, but: is it part of the job of this WG to discuss whether the European Court of Justice (and other courts) are right in protecting a trademark as “property”? As you say, many courts (including the ECJ) have confirmed that and they are right. But I feel that this question has nothing to do with the TMCH or the Charter. Correct? - That brings me to the second point (in line with Marie’s comment below): irrespective of how you qualify a trademark (property or not), it is not on the TMCH to decide whether existing rights in a trademark are legal. Courts, trademark offices and maybe even arbitration panels deciding a domain name case may do that, but not the TMCH database. The TMCH is not a super trademark examiner. Indeed, we seem to be in the middle of the discussion already (rather than finalizing the Charter Questions documents), and I look very much forward to this discussion. Best regards Pascal Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz BARDEHLE PAGENBERG Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0 F +49.(0)89.928 05-444 pascal.boehner@bardehle.de | vCard<http://www.bardehle.com/de/team/detail/p/boehner-pascal-1/vcard.vcf> | Profile<http://www.bardehle.com/de/team/detail/person/boehner-pascal-1.html> www.bardehle.com BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152 "Law Firm of the Year" 2016 for Intellectual Property Law – named by Best Lawyers® and Handelsblatt "TOP-KANZLEI Patentrecht 2015" – awarded by WirtschaftsWoche Von: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] Im Auftrag von Paul Keating Gesendet: Montag, 19. Dezember 2016 15:01 An: J. Scott Evans <jsevans@adobe.com> Cc: gnso-rpm-wg@icann.org Betreff: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Sorry to be quippy here but…… No. You may want it to be but it is merely an exclusive right of use. It is no more than a license granted by the United States (or other) government. The trademark crowd has long attempted to include trademarks in the holy confines of IP. Traditionally Intellectual Property was reserved for patents and copyrights – things that required the term. To an extent they have succeeded and there are more than a few courts that have confused things and used the term “property” when discussing trademark rights. The same expansive thinking has been bantered about by the copyright industry in speaking of copyrights as a constitutionally guaranteed right. The Constitution grants no such thing. It merely empowers Congress to make laws about….. This is an error and I would love the day that we return to the correct reference points. Otherwise we will continue to move down the entitlement path in which everything becomes a “property right”. Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Monday, December 19, 2016 at 9:28 AM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>, Reg Levy <reg@mmx.co<mailto:reg@mmx.co>>, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>, "John C. McElwaine" <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 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<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto: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<mailto: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<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 TIL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto:reg@mmx.co] Sent: Monday, December 19, 2016 8:09 AM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: John C. McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; Philip S. Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>; J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Keating <Paul@law.es<mailto:Paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; 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] 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 S: RegLevy2 Current UTC offset: -8 On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be<mailto: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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: <image008.png><http://twitter.com/AIMbrands> <image009.png><http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<http://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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> [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: 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> [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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com/> > > > > > > > > >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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Pascal and all, I too have been largely silent on this list, but wanted to weigh in to support Pascal’s input and second J. Scott’s position. The debate about whether trademarks are property, and the question of whether the TMCH should play some sort of adjudicative function are linked by what I see as an effort to delegitimize the rights of IP owners. Trademarks are rights, which are a form of property granted by the government having all the indicia of other things that are traditionally considered property, such: (i) the right to use something exclusively and exclude others; (ii) the right to assign and dispose of the thing – all of which have long been recognized by courts and property scholars as the pillars of property rights. IP is not a license from the government (a form of contractual right?!) – the government grants rights, including property rights. This is not mere nomenclature, this is a question of how we frame what trademark owners have, versus the interests of others. I have seen this debate play out in the copyright context, generally furthered by those who wish to garner support for narrowing the scope of IP. The TMCH can and should be what its name stands for – a clearing house, not a court house or some other administrative authority. It triggers a notice about the existence of a right. It does not decide who has the superior claim. That is not its job. It can afford to be over-inclusive, because it is not a precise tool. It’s a lighthouse which warns the registrant of potential rocks ahead. If the registrant wishes to proceed, then it does so at its own risk. If it can steer its way around the rocks by determining that APPLE.food is a safe course, then it may do so. If APPLE believes otherwise, it has tools available to press its case. The TMCH has no business deciding ahead of time who should prevail. Bradley From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Pascal Böhner Sent: Monday, December 19, 2016 9:28 AM To: Paul Keating; J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All, Being a newcomer in this WG I followed the discussion in the last weeks with great interest (but silently) and always wondered what would trigger me to post a comment. Here we are: - First, I might be wrong, but: is it part of the job of this WG to discuss whether the European Court of Justice (and other courts) are right in protecting a trademark as “property”? As you say, many courts (including the ECJ) have confirmed that and they are right. But I feel that this question has nothing to do with the TMCH or the Charter. Correct? - That brings me to the second point (in line with Marie’s comment below): irrespective of how you qualify a trademark (property or not), it is not on the TMCH to decide whether existing rights in a trademark are legal. Courts, trademark offices and maybe even arbitration panels deciding a domain name case may do that, but not the TMCH database. The TMCH is not a super trademark examiner. Indeed, we seem to be in the middle of the discussion already (rather than finalizing the Charter Questions documents), and I look very much forward to this discussion. Best regards Pascal Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz BARDEHLE PAGENBERG Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0 F +49.(0)89.928 05-444 pascal.boehner@bardehle.de<mailto:pascal.boehner@bardehle.de> | vCard<http://www.bardehle.com/de/team/detail/p/boehner-pascal-1/vcard.vcf> | Profile<http://www.bardehle.com/de/team/detail/person/boehner-pascal-1.html> www.bardehle.com<http://www.bardehle.com> BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152 "Law Firm of the Year" 2016 for Intellectual Property Law – named by Best Lawyers® and Handelsblatt "TOP-KANZLEI Patentrecht 2015" – awarded by WirtschaftsWoche Von: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] Im Auftrag von Paul Keating Gesendet: Montag, 19. Dezember 2016 15:01 An: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Betreff: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Sorry to be quippy here but…… No. You may want it to be but it is merely an exclusive right of use. It is no more than a license granted by the United States (or other) government. The trademark crowd has long attempted to include trademarks in the holy confines of IP. Traditionally Intellectual Property was reserved for patents and copyrights – things that required the term. To an extent they have succeeded and there are more than a few courts that have confused things and used the term “property” when discussing trademark rights. The same expansive thinking has been bantered about by the copyright industry in speaking of copyrights as a constitutionally guaranteed right. The Constitution grants no such thing. It merely empowers Congress to make laws about….. This is an error and I would love the day that we return to the correct reference points. Otherwise we will continue to move down the entitlement path in which everything becomes a “property right”. Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Monday, December 19, 2016 at 9:28 AM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>, Reg Levy <reg@mmx.co<mailto:reg@mmx.co>>, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>, "John C. McElwaine" <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 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<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto: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<mailto: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<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 TIL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto:reg@mmx.co] Sent: Monday, December 19, 2016 8:09 AM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: John C. McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; Philip S. Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>; J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Keating <Paul@law.es<mailto:Paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; 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] 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 S: RegLevy2 Current UTC offset: -8 On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be<mailto: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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: <image008.png><http://twitter.com/AIMbrands> <image009.png><http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<http://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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> [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: 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> [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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com/> > > > > > > > > >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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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Paul: This is really not the working group to have the discussion as to whether trademarks are property or a right to exclude. The same goes for domain names and whether they are property or mere contractual rights. Be it as it may, putting aside the philosophical or conceptual issues, trademarks and domains names are generally treated as assets regardless of whether you are a trademark owner, a domain name registrant, a domainer etc. I don't think any particular group has the corner on "entitlement," as you say, as each group seeks to obtain the maximum amount protection for its activities. The simple point is that we are talking about the TMCH and seeing these emails makes me think we are getting off track from what we are here to do. I'd love to debate the issue one day over a drink or coffee, but for now we should be focused of the effectiveness and shortcomings of the TMCH, how it functions and whether any changes are needed. From: Paul Keating Sent: Monday, December 19, 2016 9:01 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Sorry to be quippy here but…… No. You may want it to be but it is merely an exclusive right of use. It is no more than a license granted by the United States (or other) government. The trademark crowd has long attempted to include trademarks in the holy confines of IP. Traditionally Intellectual Property was reserved for patents and copyrights – things that required the term. To an extent they have succeeded and there are more than a few courts that have confused things and used the term “property” when discussing trademark rights. The same expansive thinking has been bantered about by the copyright industry in speaking of copyrights as a constitutionally guaranteed right. The Constitution grants no such thing. It merely empowers Congress to make laws about….. This is an error and I would love the day that we return to the correct reference points. Otherwise we will continue to move down the entitlement path in which everything becomes a “property right”. Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Monday, December 19, 2016 at 9:28 AM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>, Reg Levy <reg@mmx.co<mailto:reg@mmx.co>>, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>, "John C. McElwaine" <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 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<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto: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<mailto: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<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 TIL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto:reg@mmx.co] Sent: Monday, December 19, 2016 8:09 AM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: John C. McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; Philip S. Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>; J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Keating <Paul@law.es<mailto:Paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; 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] 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 S: RegLevy2 Current UTC offset: -8 On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be<mailto: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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: <image008.png><http://twitter.com/AIMbrands> <image009.png><http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<http://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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> [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: 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> [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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com/> > > > > > > > > >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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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you are correct. I overstepped. From: Georges Nahitchevansky <ghn@kilpatricktownsend.com> Date: Monday, December 19, 2016 at 4:49 PM To: Paul Keating <paul@law.es>, "J. Scott Evans" <jsevans@adobe.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Paul:
This is really not the working group to have the discussion as to whether trademarks are property or a right to exclude. The same goes for domain names and whether they are property or mere contractual rights. Be it as it may, putting aside the philosophical or conceptual issues, trademarks and domains names are generally treated as assets regardless of whether you are a trademark owner, a domain name registrant, a domainer etc. I don't think any particular group has the corner on "entitlement," as you say, as each group seeks to obtain the maximum amount protection for its activities. The simple point is that we are talking about the TMCH and seeing these emails makes me think we are getting off track from what we are here to do. I'd love to debate the issue one day over a drink or coffee, but for now we should be focused of the effectiveness and shortcomings of the TMCH, how it functions and whether any changes are needed.
From: Paul Keating Sent: Monday, December 19, 2016 9:01 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Sorry to be quippy here but……
No. You may want it to be but it is merely an exclusive right of use. It is no more than a license granted by the United States (or other) government.
The trademark crowd has long attempted to include trademarks in the holy confines of IP. Traditionally Intellectual Property was reserved for patents and copyrights – things that required the term. To an extent they have succeeded and there are more than a few courts that have confused things and used the term “property” when discussing trademark rights.
The same expansive thinking has been bantered about by the copyright industry in speaking of copyrights as a constitutionally guaranteed right. The Constitution grants no such thing. It merely empowers Congress to make laws about…..
This is an error and I would love the day that we return to the correct reference points. Otherwise we will continue to move down the entitlement path in which everything becomes a “property right”.
Paul
From: "J. Scott Evans" <jsevans@adobe.com> Date: Monday, December 19, 2016 at 9:28 AM To: Paul Keating <paul@law.es> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal>, Reg Levy <reg@mmx.co>, Marie Pattullo <marie.pattullo@aim.be>, "John C. McElwaine" <john.mcelwaine@nelsonmullins.com>, Phil Corwin <psc@vlaw-dc.com>, James Brian Beckham <brian.beckham@wipo.int>, George Kirikos <icann@leap.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016
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, DirectorAttorney and Counsellor at Law (admitted in New York)jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 TIL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd.133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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From: Reg Levy [mailto: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 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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Senior Trade Marks and Brand Protection Manager
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-----Original Message----- From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto: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 <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 <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/Direct
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-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org <mailto: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), 408.709.6162 (cell)
jsevans@adobe.com <mailto:jsevans@adobe.com>
www.adobe.com <http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com > <mailto:jsevans@adobe.com>
> >>www.adobe.com <http://www.adobe.com/>
> >>
> >>
> >>
> >>
> >>
> >>
> >>
> >>
> >>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), 408.709.6162 (cell) jsevans@adobe.com >>> <mailto:jsevans@adobe.com>
>>> >>>>www.adobe.com <http://www.adobe.com/>
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>
>>> >>>>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 <http://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 T
>>>>> >>>>>>US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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>
>>>>> >>>>>>[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:
>>>>> >>>>>>http://www.circleid.com/posts/20161212_appearing_respondents_c >>>>> alle >>>>> <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>
>>>>> >>>>>>[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), 408.709.6162 (cell) jsevans@adobe.com >>>>>> <mailto:jsevans@adobe.com>
>>>>>> >>>>>>>www.adobe.com <http://www.adobe.com/>
>>>>>> >>>>>>>
>>>>>> >>>>>>>
>>>>>> >>>>>>>
>>>>>> >>>>>>>
>>>>>> >>>>>>>
>>>>>> >>>>>>>
>>>>>> >>>>>>>
>>>>>> >>>>>>>
>>>>>> >>>>>>>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:
>>>>>>> >>>>>>>>http://nominet-prod.s3.amazonaws.com/wp-content/uploads/20 >>>>>>> 16/08/ >>>>>>> <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;"
>>>>>>> >>>>>>>>
>>>>>>> >>>>>>>>.nz: https://www.dnc.org.nz/resource-library/policies/65 >>>>>>> <https://www.dnc.org.nz/resource-library/policies/65>
>>>>>>> >>>>>>>>
>>>>>>> >>>>>>>>"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
>>>>>>> >>>>>>>>http://www.leap.com/ <http://www.leap.com/>
>>>>>>> >>>>>>>>_______________________________________________
>>>>>>> >>>>>>>>gnso-rpm-wg mailing list
>>>>>>> >>>>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
>>>>>>> >>>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
>>>>>> >>>>>>>
>>>>>> >>>>>>>
>>>>>> >>>>>>>________________________________
>>>>>> >>>>>>>
>>>>>> >>>>>>><ACL>
>>>>>> >>>>>>>_______________________________________________
>>>>>> >>>>>>>gnso-rpm-wg mailing list
>>>>>> >>>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
>>>>>> >>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
>>>>> >>>>>>
>>>>> >>>>>>
>>>>> >>>>>>_______________________________________________
>>>>> >>>>>>gnso-rpm-wg mailing list
>>>>> >>>>>>gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>
>>>>> >>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >>>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
>>>>> >>>>>>
>>>>> >>>>>>World Intellectual Property Organization Disclaimer: This
>>>>> >>>>>>electronic message may contain privileged, confidential and
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>>>>> >>>>>>by mistake, please immediately notify the sender and delete
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>>>>> >>>>>>e-mail and all its attachments. Please ensure all e-mail
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Paul, With all due respect, I disagree. Trademarks are assets (read “property”) that can be created, protected, bought, sold or licensed in the same manner as copyrights or patents. Intellectual Property does include trademarks. Renee From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Monday, December 19, 2016 8:01 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Sorry to be quippy here but…… No. You may want it to be but it is merely an exclusive right of use. It is no more than a license granted by the United States (or other) government. The trademark crowd has long attempted to include trademarks in the holy confines of IP. Traditionally Intellectual Property was reserved for patents and copyrights – things that required the term. To an extent they have succeeded and there are more than a few courts that have confused things and used the term “property” when discussing trademark rights. The same expansive thinking has been bantered about by the copyright industry in speaking of copyrights as a constitutionally guaranteed right. The Constitution grants no such thing. It merely empowers Congress to make laws about….. This is an error and I would love the day that we return to the correct reference points. Otherwise we will continue to move down the entitlement path in which everything becomes a “property right”. Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Monday, December 19, 2016 at 9:28 AM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>, Reg Levy <reg@mmx.co<mailto:reg@mmx.co>>, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>, "John C. McElwaine" <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 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<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto: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<mailto: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<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 TIL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto:reg@mmx.co] Sent: Monday, December 19, 2016 8:09 AM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: John C. McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; Philip S. Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>; J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Keating <Paul@law.es<mailto:Paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; 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] 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 S: RegLevy2 Current UTC offset: -8 On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be<mailto: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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: <image008.png><http://twitter.com/AIMbrands> <image009.png><http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<http://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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> [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: 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> [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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com/> > > > > > > > > >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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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In Argentina, a Trademark is an asset that is part of the actives of the company. For our law, It is property like a house, stocks or a car. On the other hand the legal nature of a domain is not clear. On the other hand, the right to hold a domain name is similar to have a license, the same right that has a licensee on his license rights. Hector Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: <mailto:amanoff@vmf.com.ar> amanoff@vmf.com.ar Web: <http://www.vmf.com.ar/> http://www.vmf.com.ar **************************************************************************************************************************************************** Esta comunicación tiene como destinatario a la persona o empresa a la cual está dirigida y puede contener información confidencial y reservada. Si el lector de este mensaje no es el destinatario o sus empleados o representantes, deberá proceder a reenviar el presente a su remitente. La distribución, diseminación o copiado de este mensaje podría constituir violación a la ley. Gracias. This email and any files transmitted with it are intended only for the use of the individual or entity to which it is addressed, and may contain information that is privileged, confidential, and exempt from disclosure under applicable law. If the reader of this message is not the intended recipient, or the employee or agent responsible for delivering the message to recipient, you are hereby notified that any dissemination, distribution or copying of this communication in error, please notify us immediately by telephone and return the original message to us at the above address. Thank you. **************************************************************************************************************************************************** De: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de Reuter, Renee M Enviado el: lunes, 19 de diciembre de 2016 13:08 Para: Paul Keating; J. Scott Evans CC: gnso-rpm-wg@icann.org Asunto: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Paul, With all due respect, I disagree. Trademarks are assets (read “property”) that can be created, protected, bought, sold or licensed in the same manner as copyrights or patents. Intellectual Property does include trademarks. Renee From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Monday, December 19, 2016 8:01 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Sorry to be quippy here but…… No. You may want it to be but it is merely an exclusive right of use. It is no more than a license granted by the United States (or other) government. The trademark crowd has long attempted to include trademarks in the holy confines of IP. Traditionally Intellectual Property was reserved for patents and copyrights – things that required the term. To an extent they have succeeded and there are more than a few courts that have confused things and used the term “property” when discussing trademark rights. The same expansive thinking has been bantered about by the copyright industry in speaking of copyrights as a constitutionally guaranteed right. The Constitution grants no such thing. It merely empowers Congress to make laws about….. This is an error and I would love the day that we return to the correct reference points. Otherwise we will continue to move down the entitlement path in which everything becomes a “property right”. Paul From: "J. Scott Evans" <jsevans@adobe.com> Date: Monday, December 19, 2016 at 9:28 AM To: Paul Keating <paul@law.es> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal>, Reg Levy <reg@mmx.co>, Marie Pattullo <marie.pattullo@aim.be>, "John C. McElwaine" <john.mcelwaine@nelsonmullins.com>, Phil Corwin <psc@vlaw-dc.com>, James Brian Beckham <brian.beckham@wipo.int>, George Kirikos <icann@leap.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 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) <mailto:jonathan.agmon@ip-law.legal> jonathan.agmon@ip-law.legal <http://www.ip-law.legal> www.ip-law.legal T SG +65 6532 2577 T US +1 212 999 6180 TIL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto: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 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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at <http://www.aim.be/> www.aim.be Follow us on: <http://twitter.com/AIMbrands> <image008.png> <http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> <image009.png> -----Original Message----- From: <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org [ <mailto:gnso-rpm-wg-bounces@icann.org> mailto: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; <mailto:gnso-rpm-wg@icann.org> 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: <mailto:gnso-rpm-wg-bounces@icann.org> 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; <mailto:gnso-rpm-wg@icann.org> 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/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: <mailto:gnso-rpm-wg-bounces@icann.org> 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; <mailto:gnso-rpm-wg@icann.org> 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), 408.709.6162 (cell) <mailto:jsevans@adobe.com> jsevans@adobe.com <http://www.adobe.com/> www.adobe.com On 12/13/16, 4:18 AM, "Paul Keating" < <mailto:Paul@law.es> Paul@law.es> wrote:
Please circulate it prior to the call.
On 12/13/16, 1:10 PM, "J. Scott Evans" < <mailto:jsevans@adobe.com> 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), 408.709.6162 (cell) <mailto:jsevans@adobe.com> jsevans@adobe.com
<http://www.adobe.com/> www.adobe.com
On 12/13/16, 4:06 AM, "Paul Keating" < <mailto:Paul@law.es> 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" < <mailto:jsevans@adobe.com> 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 <http://ACETOOLS.COM> 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), 408.709.6162 (cell) <mailto:jsevans@adobe.com> jsevans@adobe.com
<http://www.adobe.com/> www.adobe.com
On 12/13/16, 3:44 AM, "Paul Keating" < <mailto:Paul@law.es> 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"
< <mailto:jonathan.agmon@ip-law.legal> 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
<mailto:jonathan.agmon@ip-law.legal> jonathan.agmon@ip-law.legal
<http://www.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 T
US +1 212 999 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: <mailto:gnso-rpm-wg-bounces@icann.org> 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 < <mailto:Paul@law.es> Paul@law.es>; J. Scott Evans
< <mailto:jsevans@adobe.com> jsevans@adobe.com>; George Kirikos < <mailto:icann@leap.com> icann@leap.com>;
<mailto:gnso-rpm-wg@icann.org> 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> 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: <mailto:gnso-rpm-wg-bounces@icann.org> 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; <mailto:gnso-rpm-wg@icann.org> 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"
< <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org
on
behalf of <mailto:jsevans@adobe.com> 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), 408.709.6162 (cell) <mailto:jsevans@adobe.com> jsevans@adobe.com
> <http://www.adobe.com/> www.adobe.com
>
>
>
>
>
>
>
>
>On 12/12/16, 10:04 AM, " <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org on behalf
>of George Kirikos" < <mailto:gnso-rpm-wg-bounces@icann.org> gnso-rpm-wg-bounces@icann.org on behalf of
> <mailto:icann@leap.com> 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/> 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;"
>>
>>.nz: <https://www.dnc.org.nz/resource-library/policies/65> https://www.dnc.org.nz/resource-library/policies/65
>>
>>"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
>>_______________________________________________
>>gnso-rpm-wg mailing list
>> <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org
>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>
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_______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:58500ea517621872078907! _______________________________________________ gnso-rpm-wg mailing list <mailto:gnso-rpm-wg@icann.org> gnso-rpm-wg@icann.org <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _____ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. --- El software de antivirus Avast ha analizado este correo electrónico en busca de virus. https://www.avast.com/antivirus
WG Members: I’d like to remind everyone is that our current task is reviewing, rationalizing, and consolidating community-submitted questions so that we can move forward. This thread seems to have gotten away from formulating the questions in final form and is instead debating potential answers. That comes later. Best, Philip 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: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Ariel Manoff Sent: Monday, December 19, 2016 3:11 PM To: 'Reuter, Renee M'; 'Paul Keating'; 'J. Scott Evans' Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 In Argentina, a Trademark is an asset that is part of the actives of the company. For our law, It is property like a house, stocks or a car. On the other hand the legal nature of a domain is not clear. On the other hand, the right to hold a domain name is similar to have a license, the same right that has a licensee on his license rights. Hector Héctor Ariel Manoff Vitale, Manoff & Feilbogen Viamonte 1145 10º Piso C1053ABW Buenos Aires República Argentina Te: (54-11) 4371-6100 Fax: (54-11) 4371-6365 E-mail: amanoff@vmf.com.ar<mailto:amanoff@vmf.com.ar> Web: http://www.vmf.com.ar<http://www.vmf.com.ar/> **************************************************************************************************************************************************** Esta comunicación tiene como destinatario a la persona o empresa a la cual está dirigida y puede contener información confidencial y reservada. Si el lector de este mensaje no es el destinatario o sus empleados o representantes, deberá proceder a reenviar el presente a su remitente. La distribución, diseminación o copiado de este mensaje podría constituir violación a la ley. Gracias. This email and any files transmitted with it are intended only for the use of the individual or entity to which it is addressed, and may contain information that is privileged, confidential, and exempt from disclosure under applicable law. If the reader of this message is not the intended recipient, or the employee or agent responsible for delivering the message to recipient, you are hereby notified that any dissemination, distribution or copying of this communication in error, please notify us immediately by telephone and return the original message to us at the above address. Thank you. **************************************************************************************************************************************************** De: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] En nombre de Reuter, Renee M Enviado el: lunes, 19 de diciembre de 2016 13:08 Para: Paul Keating; J. Scott Evans CC: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Asunto: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Paul, With all due respect, I disagree. Trademarks are assets (read “property”) that can be created, protected, bought, sold or licensed in the same manner as copyrights or patents. Intellectual Property does include trademarks. Renee 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 19, 2016 8:01 AM To: J. Scott Evans Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Sorry to be quippy here but…… No. You may want it to be but it is merely an exclusive right of use. It is no more than a license granted by the United States (or other) government. The trademark crowd has long attempted to include trademarks in the holy confines of IP. Traditionally Intellectual Property was reserved for patents and copyrights – things that required the term. To an extent they have succeeded and there are more than a few courts that have confused things and used the term “property” when discussing trademark rights. The same expansive thinking has been bantered about by the copyright industry in speaking of copyrights as a constitutionally guaranteed right. The Constitution grants no such thing. It merely empowers Congress to make laws about….. This is an error and I would love the day that we return to the correct reference points. Otherwise we will continue to move down the entitlement path in which everything becomes a “property right”. Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Monday, December 19, 2016 at 9:28 AM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>, Reg Levy <reg@mmx.co<mailto:reg@mmx.co>>, Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>>, "John C. McElwaine" <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 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<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto: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<mailto: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<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 TIL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto:reg@mmx.co] Sent: Monday, December 19, 2016 8:09 AM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: John C. McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; Philip S. Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>; J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Keating <Paul@law.es<mailto:Paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; 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] 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 S: RegLevy2 Current UTC offset: -8 On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be<mailto: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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 Mobile: + 32 496 61 03 95 EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: <image008.png><http://twitter.com/AIMbrands> <image009.png><http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<http://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 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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> [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: 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> [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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com/> > > > > > > > > >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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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 >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:58500ea517621872078907! _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ CONFIDENTIALITY NOTICE: This e-mail and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed and may contain confidential and privileged information protected by law. If you received this e-mail in error, any review, use, dissemination, distribution, or copying of the e-mail is strictly prohibited. Please notify the sender immediately by return e-mail and delete all copies from your system. ________________________________ [Avast logo]<https://www.avast.com/sig-email?utm_medium=email&utm_source=link&utm_campaig...> El software de antivirus Avast ha analizado este correo electrónico en busca de virus. www.avast.com<https://www.avast.com/sig-email?utm_medium=email&utm_source=link&utm_campaig...> ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7924 / Virus Database: 4739/13617 - Release Date: 12/19/16
+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>
*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>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
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
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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
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>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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Let's also remember that the TMCH is just a registry. The policies that use the TMCH should be discussed separately. On Mon, Dec 19, 2016 at 11:10 AM, jonathan matkowsky < jonathan.matkowsky@riskiq.net> wrote:
+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.
*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>
*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>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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.
*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
<image007.png>
*Marie Pattullo*
*Senior Trade Marks and Brand Protection Manager*
*AIM** - **European Brands Association*
*9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 <+32%202%20736%2003%2005> *
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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
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597 <(202)%20559-8597>/Direct
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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 <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;"
>>>>
>>>>.nz: https://www.dnc.org.nz/resource-library/policies/65
>>>>
>>>>"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
>>
>>
>>_______________________________________________
>>gnso-rpm-wg mailing list
>>gnso-rpm-wg@icann.org
>>
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TMCH is a registry of trademarks but not a “registry” as we understand that word generally in the ICANN context. I agree that, as someone said, we’re a bit in the weeds and off-topic but it strikes me that we should understand what we’re talking about. And while it seems clear that we won’t ever agree on what a trademark is (based on our varied jurisdictions) the fact that we have many different interpretations of that should be borne out in our ongoing conversations. After all, if we’re going to be ensuring the protection of trademarks we need to understand what those are and, if we can’t come to an agreement about what they are, that will need to be taken into account when we decide how best to go about protecting them. /R Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2 Current UTC offset: -8
On 19 Dec 2016, at 08:38, Greg Shatan <gregshatanipc@gmail.com> wrote:
Let's also remember that the TMCH is just a registry. The policies that use the TMCH should be discussed separately.
On Mon, Dec 19, 2016 at 11:10 AM, jonathan matkowsky <jonathan.matkowsky@riskiq.net <mailto:jonathan.matkowsky@riskiq.net>> wrote: +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.
jonathan matkowsky, vp – ip & brand security usa:: 1.347.467.1193 <tel:(347)%20467-1193> | office:: +972-(0)8-926-2766 <tel:+972%208-926-2766> emergency mobile:: +972-(0)54-924-0831 <tel:+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 <mailto: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 <mailto:Paul@law.es> ZIMBRA <paul@law.es <mailto: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 <mailto: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 <mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal <http://www.ip-law.legal/> 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 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
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.
From: Reg Levy [mailto:reg@mmx.co <mailto:reg@mmx.co>] Sent: Monday, December 19, 2016 8:09 AM To: Marie Pattullo <marie.pattullo@aim.be <mailto:marie.pattullo@aim.be>> Cc: John C. McElwaine <john.mcelwaine@nelsonmullins.com <mailto:john.mcelwaine@nelsonmullins.com>>; Philip S. Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com>>; J. Scott Evans <jsevans@adobe.com <mailto:jsevans@adobe.com>>; Paul Keating <Paul@law.es <mailto:Paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal <mailto:jonathan.agmon@ip-law.legal>>; James Brian Beckham <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>>; 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] 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 <tel:(310)%20963-7135> S: RegLevy2
Current UTC offset: -8
On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be <mailto: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
<image007.png>
Marie Pattullo
Senior Trade Marks and Brand Protection Manager
AIM - European Brands Association
9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05 <tel:+32%202%20736%2003%2005> Mobile: + 32 496 61 03 95 <tel:+32%20496%2061%2003%2095> EU Transparency register ID no.: 1074382679-01
Visit our web site at www.aim.be <http://www.aim.be/> Follow us on:
<image008.png> <http://twitter.com/AIMbrands> <image009.png> <http://www.linkedin.com/company/aim---european-brands-association?trk=compan...>
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto: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 <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 <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 <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 <http://www.adobe.com/>
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 <tel:(408)%20709-6162> (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> www.adobe.com <http://www.adobe.com/>
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 <tel:(408)%20709-6162> (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> >www.adobe.com <http://www.adobe.com/> >
>
>
>
>
>
>
>
>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 <http://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 <tel:+65%206532%202577> T
>>>US +1 212 999 6180 <tel:(212)%20999-6180> T IL +972 9 950 7000 <tel:+972%209-950-7000> F IL +972 9 950 5500 <tel:+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> >>>[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:
>>>http://www.circleid.com/posts/20161212_appearing_respondents_calle <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> >>>[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 <tel:(408)%20709-6162> (cell) jsevans@adobe.com <mailto:jsevans@adobe.com> >>>>www.adobe.com <http://www.adobe.com/> >>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>
>>>>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:
>>>>>http://nominet-prod.s3.amazonaws.com/wp-content/uploads/2016/08/ <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;"
>>>>>
>>>>>.nz: https://www.dnc.org.nz/resource-library/policies/65 <https://www.dnc.org.nz/resource-library/policies/65> >>>>>
>>>>>"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> >>>>>http://www.leap.com/ <http://www.leap.com/> >>>>>_______________________________________________
>>>>>gnso-rpm-wg mailing list
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>>>>
>>>>________________________________
>>>>
>>>><ACL>
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I'm not sure I understand how a registry in the ICANN context is not just a registry. It doesn't create new rights, just records rights protected under different national laws. As to the second paragraph, perhaps we should start with deciding if we look at the legal or 'popular' definition. Legally speaking it's not really a matter of dispute: http://www.wipo.int/trademarks/en/ [cid: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<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal> T SG +65 6532 2577 T US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 5500 Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. On 20 Dec 2016, at 6:18, Reg Levy <reg@mmx.co<mailto:reg@mmx.co>> wrote: TMCH is a registry of trademarks but not a “registry” as we understand that word generally in the ICANN context. I agree that, as someone said, we’re a bit in the weeds and off-topic but it strikes me that we should understand what we’re talking about. And while it seems clear that we won’t ever agree on what a trademark is (based on our varied jurisdictions) the fact that we have many different interpretations of that should be borne out in our ongoing conversations. After all, if we’re going to be ensuring the protection of trademarks we need to understand what those are and, if we can’t come to an agreement about what they are, that will need to be taken into account when we decide how best to go about protecting them. /R Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2 Current UTC offset: -8 On 19 Dec 2016, at 08:38, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: Let's also remember that the TMCH is just a registry. The policies that use the TMCH should be discussed separately. On Mon, Dec 19, 2016 at 11:10 AM, jonathan matkowsky <jonathan.matkowsky@riskiq.net<mailto:jonathan.matkowsky@riskiq.net>> wrote: +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://safe.riskiq.com/rs/455-NHF-420/images/RiskIQ_Logo_Blue_Vertical.png]<http://riskiq.com/> jonathan matkowsky, vp – ip & brand security usa:: 1.347.467.1193<tel:(347)%20467-1193> | office:: +972-(0)8-926-2766<tel:+972%208-926-2766> emergency mobile:: +972-(0)54-924-0831<tel:+972%2054-924-0831> company reg. no. 514805332<http://havarot.justice.gov.il/CompaniesDetails.aspx?id=514805332> 11/1 nachal chever, modiin israel [http://cdn2.hubspot.net/hub/250381/file-1448744755-png/Email_Signature/twitter_signature_logo.png]<https://twitter.com/riskiq>[http://cdn2.hubspot.net/hub/250381/file-1448719740-png/Email_Signature/facebook_signature_logo.png]<https://www.facebook.com/pages/RiskIQ/555939994512820>[http://cdn2.hubspot.net/hub/250381/file-1448744760-png/Email_Signature/linkedin_signature_logo.png]<https://www.linkedin.com/company/riskiq_2>[http://cdn2.hubspot.net/hub/250381/file-1448719735-png/Email_Signature/google+_signature_logo-1.png]<https://plus.google.com/+Riskiq/posts> On Mon, Dec 19, 2016 at 10:28 AM, J. Scott Evans <jsevans@adobe.com<mailto: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<mailto:Paul@law.es> ZIMBRA <paul@law.es<mailto: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<mailto: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<mailto:jonathan.agmon@ip-law.legal> www.ip-law.legal<http://www.ip-law.legal/> 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<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+972%209-950-5500> Soroker Agmon Nordman Pte Ltd. 133 New Bridge Road, #13-02, 059413 SINGAPORE 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL 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. From: Reg Levy [mailto:reg@mmx.co] Sent: Monday, December 19, 2016 8:09 AM To: Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Cc: John C. McElwaine <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>>; Philip S. Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>; J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Paul Keating <Paul@law.es<mailto:Paul@law.es>>; Jonathan Agmon <jonathan.agmon@ip-law.legal<mailto:jonathan.agmon@ip-law.legal>>; James Brian Beckham <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>>; 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] 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<tel:(310)%20963-7135> S: RegLevy2 Current UTC offset: -8 On 13 Dec 2016, at 07:34, Marie Pattullo <marie.pattullo@aim.be<mailto: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 <image007.png> Marie Pattullo Senior Trade Marks and Brand Protection Manager AIM - European Brands Association 9 avenue des Gaulois B-1040 Brussels Tel : + 32 2 736 03 05<tel:+32%202%20736%2003%2005> Mobile: + 32 496 61 03 95<tel:+32%20496%2061%2003%2095> EU Transparency register ID no.: 1074382679-01 Visit our web site at www.aim.be<http://www.aim.be/> Follow us on: <image008.png><http://twitter.com/AIMbrands> <image009.png><http://www.linkedin.com/company/aim---european-brands-association?trk=compan...> -----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 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<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<http://www.adobe.com/> 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<tel:(408)%20709-6162> (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<tel:(408)%20709-6162> (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com/>
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<http://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<tel:+65%206532%202577> T US +1 212 999 6180<tel:(212)%20999-6180> T IL +972 9 950 7000<tel:+972%209-950-7000> F IL +972 9 950 5500<tel:+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> [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: 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> [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<tel:(408)%20709-6162> (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> >www.adobe.com<http://www.adobe.com/> > > > > > > > > >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: >>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;" >> >>.nz: https://www.dnc.org.nz/resource-library/policies/65 >> >>"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> >>http://www.leap.com/ >>_______________________________________________ >>gnso-rpm-wg mailing list >>gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > >________________________________ > ><ACL> >_______________________________________________ >gnso-rpm-wg mailing list >gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> >https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000<tel:(800)%20237-2000>) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:58500ea517621872078907! _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg = _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
I don't think there's a whole lot of variation in mainstream legal, economic or business thought on what a trademark is, and that's true across jurisdictions as well. There are far, far more similarities than differences in the treatment of trademarks in different jurisdictions. Much of this was harmonized by the Paris Convention and further by the Madrid Convention, which created a nearly worldwide integrated system for filing for trademark protection. The many different interpretations of what a trademark is within our group are of less importance than the largely similar interpretations of what a trademark is outside this group, in statutes, court decisions, etc. I'm all for advancing our common understanding of what a trademark is, but it's not really that malleable a concept. My point regarding the TMCH as a "registry" is that the TMCH is a database. (I was using the word in the trademark context, and not the ICANN context, but no matter.) As a database, it is essentially agnostic about how it's used, as long as it has the right info. RPMs such as claims and sunrise use the TMCH, but they are not the TMCH. We should be talking about claims-related issues when we're talking about claims, and sunrise-related issues when we're talking about sunrise, and not frontload these discussions into our database management discussion of the TMCH. On Mon, Dec 19, 2016 at 5:17 PM, Reg Levy <reg@mmx.co> wrote:
TMCH is a registry of trademarks but not a “registry” as we understand that word generally in the ICANN context.
I agree that, as someone said, we’re a bit in the weeds and off-topic but it strikes me that we should understand what we’re talking about. And while it seems clear that we won’t ever agree on what a trademark is (based on our varied jurisdictions) the fact that we have many different interpretations of that should be borne out in our ongoing conversations. After all, if we’re going to be ensuring the protection of trademarks we need to understand what those are and, if we can’t come to an agreement about what they are, that will need to be taken into account when we decide how best to go about protecting them.
/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 19 Dec 2016, at 08:38, Greg Shatan <gregshatanipc@gmail.com> wrote:
Let's also remember that the TMCH is just a registry. The policies that use the TMCH should be discussed separately.
On Mon, Dec 19, 2016 at 11:10 AM, jonathan matkowsky < jonathan.matkowsky@riskiq.net> wrote:
+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.
*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>
*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>
Soroker Agmon Nordman Pte Ltd.
133 New Bridge Road, #13-02, 059413 SINGAPORE
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@ic ann.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@ic ann.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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Suite 1050
Washington, DC 20004
202-559-8597 <(202)%20559-8597>/Direct
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-----Original Message-----
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.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 <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 <(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;"
>>>>>
>>>>>.nz: https://www.dnc.org.nz/resource-library/policies/65
>>>>>
>>>>>"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>
>>>>>http://www.leap.com/
>>>>>_______________________________________________
>>>>>gnso-rpm-wg mailing list
>>>>>gnso-rpm-wg@icann.org
>>>>
>>>>
>>>>________________________________
>>>>
>>>><ACL>
>>>>_______________________________________________
>>>>gnso-rpm-wg mailing list
>>>>gnso-rpm-wg@icann.org
>>>
>>>
>>>_______________________________________________
>>>gnso-rpm-wg mailing list
>>>gnso-rpm-wg@icann.org
>>>
>>>World Intellectual Property Organization Disclaimer: This
>>>electronic message may contain privileged, confidential and
>>>copyright protected information. If you have received this e-mail
>>>by mistake, please immediately notify the sender and delete this
>>>e-mail and all its attachments. Please ensure all e-mail
>>>attachments are scanned for viruses prior to opening or using.
>>>_______________________________________________
>>>gnso-rpm-wg mailing list
>>>gnso-rpm-wg@icann.org
>>>
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>>>*
>>>*
>>>*
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>>>**********
>>>This footnote confirms that this email message has been scanned by
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All, When we were in the TMCH Charter Questions Subgroup meetings, Phil Corwin mentioned something that stayed with me. He pointed out that Charter Questions are really here to guide the WG to an area of inquiry - not define, limit or shape that discussion. I think this analysis makes sense and I have thought about it often since he said it. I would respectfully submit that this revised Charter Question is designed to start a discussion - -not define, limit or shape them. This is not a "certified question" to a Court which must be narrowly construed. It is a broader question reflecting an issue of importance to the Community, placed in our Charter by the GNSO Council who has asked us to conduct an inquiry into it. (Note: the GNSO Council sent us several questions on this issue.) Thus, it is a "kick off" question to start a discussion/inquiry -- and many more questions and issues may flow from it (as the email discussion shows it will!) So I would ask that we take a deep breath, and accept the question for what it is -- a starting point. A kick off... Best, Kathy On 12/13/2016 10:06 AM, John McElwaine wrote:
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] 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 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
-----Original Message----- From: 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 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), 408.709.6162 (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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 > T US +1 212 999 6180 > T IL +972 9 950 7000 > F IL +972 9 950 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] 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_called_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] 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 (tel), 408.709.6162 (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;" >>> >>> .nz: https://www.dnc.org.nz/resource-library/policies/65 >>> >>> "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 >>> http://www.leap.com/ >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> >> ________________________________ >> >> <ACL> >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > World Intellectual Property Organization Disclaimer: This electronic > message may contain privileged, confidential and copyright protected > information. If you have received this e-mail by mistake, please > immediately notify the sender and delete this e-mail and all its > attachments. Please ensure all e-mail attachments are scanned for > viruses > prior to opening or using. > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > ********************************************************************* > * > * > * > * > * > ********** > This footnote confirms that this email message has been scanned by > PineApp Mail-SeCure for the presence of malicious code, vandals & > computer viruses. > ********************************************************************* > * > * > * > * > * > ********** > >
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice
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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/Direct 202-559-8750/Fax 202-255-6172/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 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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com<http://www.adobe.com> 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
www.adobe.com<http://www.adobe.com>
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 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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
www.adobe.com<http://www.adobe.com>
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<http://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 T
US +1 212 999 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:
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>
[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
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), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com>
>www.adobe.com<http://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<mailto: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
>>_______________________________________________
>>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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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. ----- No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7924 / Virus Database: 4664/13557 - Release Date: 12/08/16
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 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/Direct 202-559-8750/Fax 202-255-6172/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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (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, 4:18 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), 408.709.6162 (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 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), 408.709.6162 (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 T
US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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
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this message cannot be guaranteed on the Internet.-----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 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
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), 408.709.6162 (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 on behalf
>of George Kirikos" <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
>>_______________________________________________
>>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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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DgMFAw&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=T9qKhPa-GaQGizwKSztEcc4Da0WROgr6rrd1YkWLLCI&s=lMRHwUE0QKbT-vkjyYhAqVfK_spZWwtcOw8ezPq4jII&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DgMFAw&c=qmi9WrYRGQEDDOxOwKrAjW7mWovpzN_EKyRbeK_zbP0&r=Kepk-9GEB6JgOj0vUGl8c0hdrRM7FW-8Is-VAQU1VAk&m=T9qKhPa-GaQGizwKSztEcc4Da0WROgr6rrd1YkWLLCI&s=lMRHwUE0QKbT-vkjyYhAqVfK_spZWwtcOw8ezPq4jII&e=> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. ----- No virus found in this message. Checked by AVG - www.avg.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.avg.com&d=DgMFAw&c=q...> Version: 2016.0.7924 / Virus Database: 4664/13557 - Release Date: 12/08/16
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/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: John McElwaine [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 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/Direct 202-559-8750/Fax 202-255-6172/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/Direct 202-559-8750/Fax 202-255-6172/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), 408.709.6162 (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, 4:18 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), 408.709.6162 (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 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), 408.709.6162 (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 T
US +1 212 999 6180 T IL +972 9 950 7000 F IL +972 9 950 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>
[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
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), 408.709.6162 (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 on behalf
>of George Kirikos" <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
>>_______________________________________________
>>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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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> 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 <(202)%20559-8597>/Direct*
*202-559-8750 <(202)%20559-8750>/Fax*
*202-255-6172 <(202)%20255-6172>/Cell*
*Twitter: @VlawDC*
*"Luck is the residue of design" -- Branch Rickey*
*From:* John McElwaine [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 *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 <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 *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 <(202)%20559-8597>/Direct
202-559-8750 <(202)%20559-8750>/Fax
202-255-6172 <(202)%20255-6172>/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: John McElwaine [mailto:john.mcelwaine@nelsonmullins.com <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 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
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597 <(202)%20559-8597>/Direct
202-559-8750 <(202)%20559-8750>/Fax
202-255-6172 <(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 <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 <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> 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 (cell) 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> 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 (cell) 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> 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 <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 <+65%206532%202577> T
>US +1 212 999 6180 <(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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>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 <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.circleid.com_posts_2...>
>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 (cell) 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 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/ <https://urldefense.proofpoint.com/v2/url?u=http-3A__nominet-2Dprod.s3.amazon...>
>>>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;"
>>>
>>>.nz: https://www.dnc.org.nz/resource-library/policies/65 <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.dnc.org.nz_resource...>
>>>
>>>"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>
>>>http://www.leap.com/ <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DgMFAw&c...>
>>>_______________________________________________
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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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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 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>
>_______________________________________________
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_______________________________________________
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World Intellectual Property Organization Disclaimer: This
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copyright protected information. If you have received this e-mail
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Well done! Sincerely, Paul Keating, Esq.
On Dec 13, 2016, at 2:58 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
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/Direct 202-559-8750/Fax 202-255-6172/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] 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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 (tel), 408.709.6162 (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 > T US +1 212 999 6180 > T IL +972 9 950 7000 > F IL +972 9 950 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] 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_called_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] 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 (tel), 408.709.6162 (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;" >>> >>> .nz: https://www.dnc.org.nz/resource-library/policies/65 >>> >>> "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 >>> http://www.leap.com/ >>> _______________________________________________ >>> gnso-rpm-wg mailing list >>> gnso-rpm-wg@icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg >> >> >> ________________________________ >> >> <ACL> >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > World Intellectual Property Organization Disclaimer: This electronic > message may contain privileged, confidential and copyright protected > information. If you have received this e-mail by mistake, please > immediately notify the sender and delete this e-mail and all its > attachments. Please ensure all e-mail attachments are scanned for > viruses > prior to opening or using. > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg > > ********************************************************************* > * > * > * > * > * > ********** > This footnote confirms that this email message has been scanned by > PineApp Mail-SeCure for the presence of malicious code, vandals & > computer viruses. > ********************************************************************* > * > * > * > * > * > ********** > >
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Brian, I agree with you that a great many people (not simply domaines) have that confusion. However, I didn’t thing that is not really what we are talking about with the question. I have enjoyed Levine’s articles although hey seem bit simplistic regarding the issues and have not, as I have yet seen, touched on the real problematic issues in the UDRP. PRK On 12/13/16, 10:41 AM, "Beckham, Brian" <brian.beckham@wipo.int> wrote:
Paul, all,
A timely post on CircleID speaks to (intentional) confusion on the "generic"/dictionary dichotomy: http://www.circleid.com/posts/20161212_appearing_respondents_called_out_as _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] 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 (tel), 408.709.6162 (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/Final-pr o p osed-DRS-Policy.pdf
"8.1.2 The Domain Name is generic or descriptive and the Respondent is making fair use of it;"
.nz: https://www.dnc.org.nz/resource-library/policies/65
"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 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Paul, If I correctly read your suggestion, in this context, the role of the TMCH should be limited to verifying whether a trademark registration certificate has issued; the TMCH should not “render a decision” on a previously-obtained valid trademark registration. This would inter alia risk undermining understandings achieved during the many AGB iterations, e.g., on trademark office examination grounds. Regards, Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 | E brian.beckham@wipo.int<mailto:brian.beckham@wipo.int> | www.wipo.int<http://www.wipo.int/> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Monday, December 12, 2016 6:53 PM To: Marie Pattullo; Thomas, Christopher M. Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I understand your point Marie but your conclusion presupposes the purpose of the question which is to investigate. We are IMHO too early in the process to conclude that TMCH should not be placed in a position rendering a decision. Paul From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Marie Pattullo <marie.pattullo@aim.be<mailto:marie.pattullo@aim.be>> Date: Tuesday, December 6, 2016 at 4:02 PM To: "Thomas, Christopher M." <christhomas@parkerpoe.com<mailto:christhomas@parkerpoe.com>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <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 I also fully agree with John; this isn't the place to go into European Trade Mark Law, or practice, but the basis is the same. The TMCH can't be called upon to take decisions on how and to whom to grant TMs, of course, and this will only confuse. Marie Sent from my iPhone, sorry for typos On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas@parkerpoe.com<mailto:christhomas@parkerpoe.com>> wrote: I agree with John’s points and conclusions below. Thanks, Chris ________________________________ Christopher Thomas Partner [Image removed by sender. Parker Poe] PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard<http://www.parkerpoe.com/GetVcard?ID=28245> | map<https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601> Visit our website at www.parkerpoe.com<http://www.parkerpoe.com> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; 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 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. PRIVILEGED AND CONFIDENTIAL: This electronic message and any attachments are confidential property of the sender. The information is intended only for the use of the person to whom it was addressed. Any other interception, copying, accessing, or disclosure of this message is prohibited. The sender takes no responsibility for any unauthorized reliance on this message. If you have received this message in error, please immediately notify the sender and purge the message you received. Do not forward this message without permission. [ppab_p&c] !DSPAM:5846d21a17627779611108! _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg !DSPAM:5846d21a17627779611108! _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
That’s not what I meant. The only thing I meant was that we are the questions stage only. Whether or not we recommend any change or action of any nature has yet to be discussed. Thus, I meant that Marie was putting the cart before the horse. PRK From: "Beckham, Brian" <brian.beckham@wipo.int> Date: Monday, December 12, 2016 at 7:16 PM To: Paul Keating <paul@law.es>, Marie Pattullo <marie.pattullo@aim.be>, "Thomas, Christopher M." <christhomas@parkerpoe.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Paul,
If I correctly read your suggestion, in this context, the role of the TMCH should be limited to verifying whether a trademark registration certificate has issued; the TMCH should not “render a decision” on a previously-obtained valid trademark registration.
This would inter alia risk undermining understandings achieved during the many AGB iterations, e.g., on trademark office examination grounds.
Regards,
Brian Beckham|Head, Internet Dispute Resolution Section|WIPO Arbitration and Mediation Center 34 chemin des Colombettes, 1211 Geneva 20, Switzerland|T +4122 338 8247|E brian.beckham@wipo.int|www.wipo.int <http://www.wipo.int/>
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Monday, December 12, 2016 6:53 PM To: Marie Pattullo; Thomas, Christopher M. Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I understand your point Marie but your conclusion presupposes the purpose of the question which is to investigate. We are IMHO too early in the process to conclude that TMCH should not be placed in a position rendering a decision.
Paul
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Marie Pattullo <marie.pattullo@aim.be> Date: Tuesday, December 6, 2016 at 4:02 PM To: "Thomas, Christopher M." <christhomas@parkerpoe.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I also fully agree with John; this isn't the place to go into European Trade Mark Law, or practice, but the basis is the same. The TMCH can't be called upon to take decisions on how and to whom to grant TMs, of course, and this will only confuse.
Marie
Sent from my iPhone, sorry for typos
On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas@parkerpoe.com> wrote:
I agree with John’s points and conclusions below.
Thanks, Chris
Christopher Thomas Partner
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard <http://www.parkerpoe.com/GetVcard?ID=28245> | map <https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601>
Visit our website at www.parkerpoe.com <http://www.parkerpoe.com>
From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSh eet.aspx[inta.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkB asics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6 wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87C fSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU 4Grr51Qb3RqKsrNZTpY&e=>
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org> www.icann.org[icann.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g &c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuE fDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBp VOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <http://www.icann.org>[icann.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g &c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuE fDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBp VOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=>
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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Agreed we have to keep in mind that the TMCH is not meant to create new rights, only to record existing ones. Luc On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas@parkerpoe.com<mailto:christhomas@parkerpoe.com>> wrote: I agree with John’s points and conclusions below. Thanks, Chris ________________________________ Christopher Thomas Partner [Parker Poe] PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard<http://www.parkerpoe.com/GetVcard?ID=28245> | map<https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601> Visit our website at www.parkerpoe.com<http://www.parkerpoe.com/> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; 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 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. 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Agree 100% and I made the same point on a call weeks, if not months, ago. Sent from my iPhone
On Dec 6, 2016, at 10:24 AM, Luc SEUFER <lseufer@dclgroup.eu> wrote:
Agreed we have to keep in mind that the TMCH is not meant to create new rights, only to record existing ones.
Luc
On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas@parkerpoe.com<mailto:christhomas@parkerpoe.com>> wrote:
I agree with John’s points and conclusions below.
Thanks, Chris
________________________________ Christopher Thomas Partner
[Parker Poe]
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard<http://www.parkerpoe.com/GetVcard?ID=28245> | map<https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601>
Visit our website at www.parkerpoe.com<http://www.parkerpoe.com/>
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; 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
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=>
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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First, I am sorry that my current work load has prohibited me from participating in the recent calls. Second, with all due respect to John, Chris and Luc, the same analysis John referenced below would be required to refer to a term as ³merely descriptive². I see no difference and I see no reason to remove the term ³generic². We are merely proposing questions to be answered here. Further, the real issue is whether the TMCH is having an unreasonable chilling effect on domain name registrations via the methods in which the database is being used (reservation, sunrise, post sunrise notification, etc). We may all decide there is no issue. I can think of any number of potential ³solutions² should the group decide there is an issue. A few could include adding to the notice provided to the potential registrant advising that the term has generic or descriptive applications or a certification by the trademark holder that it does not. Paul Keating On 12/6/16, 4:23 PM, "Luc SEUFER" <gnso-rpm-wg-bounces@icann.org on behalf of lseufer@dclgroup.eu> wrote:
Agreed we have to keep in mind that the TMCH is not meant to create new rights, only to record existing ones.
Luc
On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas@parkerpoe.com<mailto:christhomas@parkerpoe.com>> wrote:
I agree with John¹s points and conclusions below.
Thanks, Chris
________________________________ Christopher Thomas Partner
[Parker Poe]
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard<http://www.parkerpoe.com/GetVcard?ID=28245> | map<https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601>
Visit our website at www.parkerpoe.com<http://www.parkerpoe.com/>
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; 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
The point that Kiran is making is that words such as ³generic² mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group¹s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass¹n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term ³generic² from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman¹s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonito r.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in questionfor example, ³clock² is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFact Sheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__w ww.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.as px&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf 6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2 c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=>
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann .org><mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann. org><mailto:david.tait@icann.org>
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<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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Paul, Thanks for your email and the proposed solutions. I think your concerns are at a higher level than what kicked-off this discussion. In fact, I believe that a good part of this discussion is caused more by the interpretation of the specific question at issue. The particular question that kicked this all off and led to the legal term "generic" being discussed is referenced in Question 10 or Category 3, Q. 2: 2. Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the generic term(s) within a trademark are protected? If so, how? As an initial matter, I am not exactly sure what this question means; however, I believe that the drafters are saying "should a trademark registration recorded with the TMCH be limited to only providing Claims Notice and Sunrise Eligibility for a domain name where a characteristic or quality of the goods or services related to that domain name would not be considered generic (i.e., a common category or genus of such goods or services)"? Perhaps someone can provide more clarity on this question, or we can reach a better understanding on the call Wednesday. I think that issue will be first up. Best, John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Monday, December 12, 2016 12:51 PM To: Luc SEUFER; Thomas, Christopher M. Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016 First, I am sorry that my current work load has prohibited me from participating in the recent calls. Second, with all due respect to John, Chris and Luc, the same analysis John referenced below would be required to refer to a term as ³merely descriptive². I see no difference and I see no reason to remove the term ³generic². We are merely proposing questions to be answered here. Further, the real issue is whether the TMCH is having an unreasonable chilling effect on domain name registrations via the methods in which the database is being used (reservation, sunrise, post sunrise notification, etc). We may all decide there is no issue. I can think of any number of potential ³solutions² should the group decide there is an issue. A few could include adding to the notice provided to the potential registrant advising that the term has generic or descriptive applications or a certification by the trademark holder that it does not. Paul Keating On 12/6/16, 4:23 PM, "Luc SEUFER" <gnso-rpm-wg-bounces@icann.org on behalf of lseufer@dclgroup.eu> wrote:
Agreed we have to keep in mind that the TMCH is not meant to create new rights, only to record existing ones.
Luc
On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas@parkerpoe.com<mailto:christhomas@parkerpoe.com>> wrote:
I agree with John¹s points and conclusions below.
Thanks, Chris
________________________________ Christopher Thomas Partner
[Parker Poe]
PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601 Office: 919.835.4641 | Fax: 919.834.4564 | vcard<http://www.parkerpoe.com/GetVcard?ID=28245> | map<https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601>
Visit our website at www.parkerpoe.com<http://www.parkerpoe.com/>
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; 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
The point that Kiran is making is that words such as ³generic² mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group¹s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass¹n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term ³generic² from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman¹s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmon ito r.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question<for example, ³clock² is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthF act Sheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A __w ww.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet .as px&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0 bzf 6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl- Vz2 c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=>
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@ic ann .org><mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann. org><mailto:david.tait@icann.org>
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<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.
Thanks for the feedback, John. Perhaps it would be best if at this point in the discussion staff would post the current language of the question, so that we can review any specific suggestions for alteration of its wording. Best to all. 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: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. 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Hi John, Thanks for your contribution. If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here. There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be: US Patent and Trademark Office (USPTO) Glossary generic term: “terms that the relevant purchasing public understands primarily as the common or class name for the goods or services." These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.” https://www.uspto.gov/learning-and-resources/glossary#sec-g The INTA teaches the same “common knowledge” approach as the USPTO: “Generic words can be thought of as the common name of the problem or service in question – for example, “clock” is a generic word for timepieces.” Because these are the common names of goods and services, the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread). The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work. As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote: “When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.” What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to? Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward. John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with. Thanks for considering. Kind Regards, Edward Morris ---------------------------------------- From: "John McElwaine" <john.mcelwaine@nelsonmullins.com> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org] So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org> www.icann.org[icann.org]<http://www.icann.org>[icann.org] <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.
Question 10 is conceptually backwards. A "generic term" (in the common, not legal sense of the word) is absolutely protectable as a trademark and can serve as an indicator of source for an extremely wide range of goods and services. In each of those uses, the term is not a "generic term" in the trademark sense. The term is only a "generic term" when it is applied to the goods or services for which it serves as the common name. So "clock" (to use Ed's example) is not a "generic term" in the trademark sense if it is used as a trademark for restaurants or tires or trombones. These would be called "arbitrary marks" in the legal sense of the word. "Clock" would only be generic (and thus not protectable) in the narrow instance where it is used to refer to timepieces not worn or carried on the person (which are referred to as watches, not clocks). Thus, when a word is used in a trademark, it is not a "generic term." There is no such thing as a "generic term" protected "within a trademark." If the term is protected, it's not a "generic term" within the trademark. When a "generic term" appears within a trademark, the term is not protected; rather, it is disclaimed. If I seek to register "clock trombones" as a trademark for trombones, I won't be able to protect the generic term "trombones," but I will be able to protect the arbitrary term "clock." As such, the question is basically mumbo-jumbo from a legal perspective. I suppose the phrase "generic term" is being use to soft-pedal the actual intent of the statement, which is to put forth the possibility that all trademarks, except "coined" (a/k/a "fanciful") marks, would be magically excluded from the Trademark Clearinghouse. At that point, it would be silly to call it the Trademark Clearinghouse -- perhaps it be called the "Only Trademarks That Are Made-Up Words Clearinghouse" or OTMTAMUWCH -- since the vast majority of trademarks would suddenly be invalidated for TMCH purposes. Of course, this whole discussion about scope of protection ignores a whole slew of concepts that go into a likelihood of confusion analysis. First, and most importantly, trademark protection against infringement is not limited to exact matches -- it encompasses marks that are similar in sight, sound or meaning. This aspect of trademark protectability is not recognized by the TMCH or the processes that flow from it, except for the narrow "TM+50" exception, which does not come anywhere near matching this contour of trademark protection. Question 12 also goes partway in this regard when it refers to expanding TMCH matching rules to include "plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos"; but again, this does not go nearly far enough, since it does not include most "similar" uses. Perhaps Q12 should be expanded to include all "similar" terms, in addition to the narrow types already mentioned there. Also, bad faith is not a requirement for an infringement to be found (although "good faith" may be one of a series of factors to be weighed, on a case by case basis, in a likelihood of confusion analysis). This may not be relevant to discussion of TMCH eligibility in and of itself, but it will be relevant in the URS context, among others. The question also mischaracterizes the scope of goods and services in which a trademarked term is protected -- it is not limited to the "categories of goods and services" in the trademark registration. Generally speaking, a trademark is protected in the same or related fields of use, including natural zones of expansion (and for uses of the same or similar marks -- not only exact matches). The determination of what is "related" is case-specific, and depends on both the mark and the goods and services. Thus, the question overstates the limitation is legally deficient in this instance as well, even if one believes that the underlying proposition is a valid one. Getting back to the issue that started this thread -- using "generic term" to refer to a "protected term" in the question is, well, out of the question. Greg On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the *public *(not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
“terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.” https://www.uspto.gov/learning-and-resources/glossary#sec-g
The INTA teaches the same “common knowledge” approach as the USPTO:
“Generic words can be thought of as the *common name of the problem or service in question – for example, “clock” is a generic word for timepieces.” * Because these are the *common names of goods and services, *the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote:
“When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.”
What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
------------------------------ *From*: "John McElwaine" <john.mcelwaine@nelsonmullins.com> *Sent*: Tuesday, December 6, 2016 2:51 PM *To*: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" < gnso-rpm-wg@icann.org> *Subject*: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation *primarily* to refer to that genus of services. *H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc.*, 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. *See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition* § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
*From:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@ic ann.org] *On Behalf Of *David Tait *Sent:* Tuesday, December 06, 2016 5:54 AM *To:* gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
*From: *Kathy Kleiman <kathy@kathykleiman.com> *Date: *Sunday, 4 December 2016 at 19:40 *To: *Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> *Cc: *Mary Wong <mary.wong@icann.org>, Susan Payne < susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" < Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" < kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton < Sarahliannec@gmail.com> *Subject: *Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> *"Generic Words*: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/Tradema rkStrengthFactSheet.aspx[inta.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBa...>
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 <(415)%20419-9138> (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org> <david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776 <+44%207864%20793776>
Email: david.tait@icann.org<mailto:david.tait@icann.org> <david.tait@icann.org>
www.icann.org[icann.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c...>
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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+1, e.g. Apple
On Dec 6, 2016, at 8:11 PM, Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com>> wrote:
Question 10 is conceptually backwards. A "generic term" (in the common, not legal sense of the word) is absolutely protectable as a trademark and can serve as an indicator of source for an extremely wide range of goods and services. In each of those uses, the term is not a "generic term" in the trademark sense. The term is only a "generic term" when it is applied to the goods or services for which it serves as the common name. So "clock" (to use Ed's example) is not a "generic term" in the trademark sense if it is used as a trademark for restaurants or tires or trombones. These would be called "arbitrary marks" in the legal sense of the word. "Clock" would only be generic (and thus not protectable) in the narrow instance where it is used to refer to timepieces not worn or carried on the person (which are referred to as watches, not clocks).
Thus, when a word is used in a trademark, it is not a "generic term." There is no such thing as a "generic term" protected "within a trademark." If the term is protected, it's not a "generic term" within the trademark. When a "generic term" appears within a trademark, the term is not protected; rather, it is disclaimed. If I seek to register "clock trombones" as a trademark for trombones, I won't be able to protect the generic term "trombones," but I will be able to protect the arbitrary term "clock."
As such, the question is basically mumbo-jumbo from a legal perspective. I suppose the phrase "generic term" is being use to soft-pedal the actual intent of the statement, which is to put forth the possibility that all trademarks, except "coined" (a/k/a "fanciful") marks, would be magically excluded from the Trademark Clearinghouse. At that point, it would be silly to call it the Trademark Clearinghouse -- perhaps it be called the "Only Trademarks That Are Made-Up Words Clearinghouse" or OTMTAMUWCH -- since the vast majority of trademarks would suddenly be invalidated for TMCH purposes.
Of course, this whole discussion about scope of protection ignores a whole slew of concepts that go into a likelihood of confusion analysis. First, and most importantly, trademark protection against infringement is not limited to exact matches -- it encompasses marks that are similar in sight, sound or meaning. This aspect of trademark protectability is not recognized by the TMCH or the processes that flow from it, except for the narrow "TM+50" exception, which does not come anywhere near matching this contour of trademark protection. Question 12 also goes partway in this regard when it refers to expanding TMCH matching rules to include "plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos"; but again, this does not go nearly far enough, since it does not include most "similar" uses. Perhaps Q12 should be expanded to include all "similar" terms, in addition to the narrow types already mentioned there.
Also, bad faith is not a requirement for an infringement to be found (although "good faith" may be one of a series of factors to be weighed, on a case by case basis, in a likelihood of confusion analysis). This may not be relevant to discussion of TMCH eligibility in and of itself, but it will be relevant in the URS context, among others.
The question also mischaracterizes the scope of goods and services in which a trademarked term is protected -- it is not limited to the "categories of goods and services" in the trademark registration. Generally speaking, a trademark is protected in the same or related fields of use, including natural zones of expansion (and for uses of the same or similar marks -- not only exact matches). The determination of what is "related" is case-specific, and depends on both the mark and the goods and services. Thus, the question overstates the limitation is legally deficient in this instance as well, even if one believes that the underlying proposition is a valid one.
Getting back to the issue that started this thread -- using "generic term" to refer to a "protected term" in the question is, well, out of the question.
Greg
On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net <mailto:egmorris1@toast.net>> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
“terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM <http://pizza.com/> for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.” https://www.uspto.gov/learning-and-resources/glossary#sec-g <https://www.uspto.gov/learning-and-resources/glossary#sec-g>
The INTA teaches the same “common knowledge” approach as the USPTO:
“Generic words can be thought of as the common name of the problem or service in question – for example, “clock” is a generic word for timepieces.” Because these are the common names of goods and services, the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote:
“When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.”
What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
From: "John McElwaine" <john.mcelwaine@nelsonmullins.com <mailto:john.mcelwaine@nelsonmullins.com>> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org <mailto:david.tait@icann.org>>, "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <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
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com <mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com <mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org <mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org <mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com <mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu <mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com <mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com <mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com <mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es <mailto:paul@law.es>>, "kurt@kjpritz.com <mailto:kurt@kjpritz.com>" <kurt@kjpritz.com <mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com <mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com <mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com <mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com <mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBa...> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 <tel:(415)%20419-9138> (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org <mailto:david.tait@icann.org><mailto:david.tait@icann.org> <mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776 <tel:+44%207864%20793776> Email: david.tait@icann.org <mailto:david.tait@icann.org><mailto:david.tait@icann.org> <mailto:david.tait@icann.org> www.icann.org[icann.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org] <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c...>
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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Exactly. Also, ADOBE. Sent from my iPhone On Dec 7, 2016, at 12:05 AM, Thomas Brackey <tom@bmail.build<mailto:tom@bmail.build>> wrote: +1, e.g. Apple On Dec 6, 2016, at 8:11 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: Question 10 is conceptually backwards. A "generic term" (in the common, not legal sense of the word) is absolutely protectable as a trademark and can serve as an indicator of source for an extremely wide range of goods and services. In each of those uses, the term is not a "generic term" in the trademark sense. The term is only a "generic term" when it is applied to the goods or services for which it serves as the common name. So "clock" (to use Ed's example) is not a "generic term" in the trademark sense if it is used as a trademark for restaurants or tires or trombones. These would be called "arbitrary marks" in the legal sense of the word. "Clock" would only be generic (and thus not protectable) in the narrow instance where it is used to refer to timepieces not worn or carried on the person (which are referred to as watches, not clocks). Thus, when a word is used in a trademark, it is not a "generic term." There is no such thing as a "generic term" protected "within a trademark." If the term is protected, it's not a "generic term" within the trademark. When a "generic term" appears within a trademark, the term is not protected; rather, it is disclaimed. If I seek to register "clock trombones" as a trademark for trombones, I won't be able to protect the generic term "trombones," but I will be able to protect the arbitrary term "clock." As such, the question is basically mumbo-jumbo from a legal perspective. I suppose the phrase "generic term" is being use to soft-pedal the actual intent of the statement, which is to put forth the possibility that all trademarks, except "coined" (a/k/a "fanciful") marks, would be magically excluded from the Trademark Clearinghouse. At that point, it would be silly to call it the Trademark Clearinghouse -- perhaps it be called the "Only Trademarks That Are Made-Up Words Clearinghouse" or OTMTAMUWCH -- since the vast majority of trademarks would suddenly be invalidated for TMCH purposes. Of course, this whole discussion about scope of protection ignores a whole slew of concepts that go into a likelihood of confusion analysis. First, and most importantly, trademark protection against infringement is not limited to exact matches -- it encompasses marks that are similar in sight, sound or meaning. This aspect of trademark protectability is not recognized by the TMCH or the processes that flow from it, except for the narrow "TM+50" exception, which does not come anywhere near matching this contour of trademark protection. Question 12 also goes partway in this regard when it refers to expanding TMCH matching rules to include "plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos"; but again, this does not go nearly far enough, since it does not include most "similar" uses. Perhaps Q12 should be expanded to include all "similar" terms, in addition to the narrow types already mentioned there. Also, bad faith is not a requirement for an infringement to be found (although "good faith" may be one of a series of factors to be weighed, on a case by case basis, in a likelihood of confusion analysis). This may not be relevant to discussion of TMCH eligibility in and of itself, but it will be relevant in the URS context, among others. The question also mischaracterizes the scope of goods and services in which a trademarked term is protected -- it is not limited to the "categories of goods and services" in the trademark registration. Generally speaking, a trademark is protected in the same or related fields of use, including natural zones of expansion (and for uses of the same or similar marks -- not only exact matches). The determination of what is "related" is case-specific, and depends on both the mark and the goods and services. Thus, the question overstates the limitation is legally deficient in this instance as well, even if one believes that the underlying proposition is a valid one. Getting back to the issue that started this thread -- using "generic term" to refer to a "protected term" in the question is, well, out of the question. Greg On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net<mailto:egmorris1@toast.net>> wrote: Hi John, Thanks for your contribution. If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here. There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be: US Patent and Trademark Office (USPTO) Glossary generic term: “terms that the relevant purchasing public understands primarily as the common or class name for the goods or services." These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM<http://pizza.com/> for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.” https://www.uspto.gov/learning-and-resources/glossary#sec-g The INTA teaches the same “common knowledge” approach as the USPTO: “Generic words can be thought of as the common name of the problem or service in question – for example, “clock” is a generic word for timepieces.” Because these are the common names of goods and services, the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread). The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work. As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote: “When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.” What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to? Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward. John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with. Thanks for considering. Kind Regards, Edward Morris ________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org<mailto:david.tait@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <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 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138<tel:(415)%20419-9138> (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. 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Well said Greg! Sent from my iPhone On Dec 6, 2016, at 11:11 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: Question 10 is conceptually backwards. A "generic term" (in the common, not legal sense of the word) is absolutely protectable as a trademark and can serve as an indicator of source for an extremely wide range of goods and services. In each of those uses, the term is not a "generic term" in the trademark sense. The term is only a "generic term" when it is applied to the goods or services for which it serves as the common name. So "clock" (to use Ed's example) is not a "generic term" in the trademark sense if it is used as a trademark for restaurants or tires or trombones. These would be called "arbitrary marks" in the legal sense of the word. "Clock" would only be generic (and thus not protectable) in the narrow instance where it is used to refer to timepieces not worn or carried on the person (which are referred to as watches, not clocks). Thus, when a word is used in a trademark, it is not a "generic term." There is no such thing as a "generic term" protected "within a trademark." If the term is protected, it's not a "generic term" within the trademark. When a "generic term" appears within a trademark, the term is not protected; rather, it is disclaimed. If I seek to register "clock trombones" as a trademark for trombones, I won't be able to protect the generic term "trombones," but I will be able to protect the arbitrary term "clock." As such, the question is basically mumbo-jumbo from a legal perspective. I suppose the phrase "generic term" is being use to soft-pedal the actual intent of the statement, which is to put forth the possibility that all trademarks, except "coined" (a/k/a "fanciful") marks, would be magically excluded from the Trademark Clearinghouse. At that point, it would be silly to call it the Trademark Clearinghouse -- perhaps it be called the "Only Trademarks That Are Made-Up Words Clearinghouse" or OTMTAMUWCH -- since the vast majority of trademarks would suddenly be invalidated for TMCH purposes. Of course, this whole discussion about scope of protection ignores a whole slew of concepts that go into a likelihood of confusion analysis. First, and most importantly, trademark protection against infringement is not limited to exact matches -- it encompasses marks that are similar in sight, sound or meaning. This aspect of trademark protectability is not recognized by the TMCH or the processes that flow from it, except for the narrow "TM+50" exception, which does not come anywhere near matching this contour of trademark protection. Question 12 also goes partway in this regard when it refers to expanding TMCH matching rules to include "plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos"; but again, this does not go nearly far enough, since it does not include most "similar" uses. Perhaps Q12 should be expanded to include all "similar" terms, in addition to the narrow types already mentioned there. Also, bad faith is not a requirement for an infringement to be found (although "good faith" may be one of a series of factors to be weighed, on a case by case basis, in a likelihood of confusion analysis). This may not be relevant to discussion of TMCH eligibility in and of itself, but it will be relevant in the URS context, among others. The question also mischaracterizes the scope of goods and services in which a trademarked term is protected -- it is not limited to the "categories of goods and services" in the trademark registration. Generally speaking, a trademark is protected in the same or related fields of use, including natural zones of expansion (and for uses of the same or similar marks -- not only exact matches). The determination of what is "related" is case-specific, and depends on both the mark and the goods and services. Thus, the question overstates the limitation is legally deficient in this instance as well, even if one believes that the underlying proposition is a valid one. Getting back to the issue that started this thread -- using "generic term" to refer to a "protected term" in the question is, well, out of the question. Greg On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net<mailto:egmorris1@toast.net>> wrote: Hi John, Thanks for your contribution. If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here. There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be: US Patent and Trademark Office (USPTO) Glossary generic term: “terms that the relevant purchasing public understands primarily as the common or class name for the goods or services." These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM<http://PIZZA.COM> for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.” https://www.uspto.gov/learning-and-resources/glossary#sec-g The INTA teaches the same “common knowledge” approach as the USPTO: “Generic words can be thought of as the common name of the problem or service in question – for example, “clock” is a generic word for timepieces.” Because these are the common names of goods and services, the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread). The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work. As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote: “When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.” What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to? Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward. John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with. Thanks for considering. Kind Regards, Edward Morris ________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org<mailto:david.tait@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <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 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138<tel:(415)%20419-9138> (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776<tel:+44%207864%20793776> Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000<tel:(800)%20237-2000>) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ <ACL>
+1. Marie Sent from my iPhone, sorry for typos
On 7 Dec 2016, at 09:17, J. Scott Evans <jsevans@adobe.com> wrote:
Well said Greg!
Sent from my iPhone
On Dec 6, 2016, at 11:11 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:
Question 10 is conceptually backwards. A "generic term" (in the common, not legal sense of the word) is absolutely protectable as a trademark and can serve as an indicator of source for an extremely wide range of goods and services. In each of those uses, the term is not a "generic term" in the trademark sense. The term is only a "generic term" when it is applied to the goods or services for which it serves as the common name. So "clock" (to use Ed's example) is not a "generic term" in the trademark sense if it is used as a trademark for restaurants or tires or trombones. These would be called "arbitrary marks" in the legal sense of the word. "Clock" would only be generic (and thus not protectable) in the narrow instance where it is used to refer to timepieces not worn or carried on the person (which are referred to as watches, not clocks).
Thus, when a word is used in a trademark, it is not a "generic term." There is no such thing as a "generic term" protected "within a trademark." If the term is protected, it's not a "generic term" within the trademark. When a "generic term" appears within a trademark, the term is not protected; rather, it is disclaimed. If I seek to register "clock trombones" as a trademark for trombones, I won't be able to protect the generic term "trombones," but I will be able to protect the arbitrary term "clock."
As such, the question is basically mumbo-jumbo from a legal perspective. I suppose the phrase "generic term" is being use to soft-pedal the actual intent of the statement, which is to put forth the possibility that all trademarks, except "coined" (a/k/a "fanciful") marks, would be magically excluded from the Trademark Clearinghouse. At that point, it would be silly to call it the Trademark Clearinghouse -- perhaps it be called the "Only Trademarks That Are Made-Up Words Clearinghouse" or OTMTAMUWCH -- since the vast majority of trademarks would suddenly be invalidated for TMCH purposes.
Of course, this whole discussion about scope of protection ignores a whole slew of concepts that go into a likelihood of confusion analysis. First, and most importantly, trademark protection against infringement is not limited to exact matches -- it encompasses marks that are similar in sight, sound or meaning. This aspect of trademark protectability is not recognized by the TMCH or the processes that flow from it, except for the narrow "TM+50" exception, which does not come anywhere near matching this contour of trademark protection. Question 12 also goes partway in this regard when it refers to expanding TMCH matching rules to include "plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos"; but again, this does not go nearly far enough, since it does not include most "similar" uses. Perhaps Q12 should be expanded to include all "similar" terms, in addition to the narrow types already mentioned there.
Also, bad faith is not a requirement for an infringement to be found (although "good faith" may be one of a series of factors to be weighed, on a case by case basis, in a likelihood of confusion analysis). This may not be relevant to discussion of TMCH eligibility in and of itself, but it will be relevant in the URS context, among others.
The question also mischaracterizes the scope of goods and services in which a trademarked term is protected -- it is not limited to the "categories of goods and services" in the trademark registration. Generally speaking, a trademark is protected in the same or related fields of use, including natural zones of expansion (and for uses of the same or similar marks -- not only exact matches). The determination of what is "related" is case-specific, and depends on both the mark and the goods and services. Thus, the question overstates the limitation is legally deficient in this instance as well, even if one believes that the underlying proposition is a valid one.
Getting back to the issue that started this thread -- using "generic term" to refer to a "protected term" in the question is, well, out of the question.
Greg
On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
“terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.” https://www.uspto.gov/learning-and-resources/glossary#sec-g
The INTA teaches the same “common knowledge” approach as the USPTO:
“Generic words can be thought of as the common name of the problem or service in question – for example, “clock” is a generic word for timepieces.” Because these are the common names of goods and services, the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote:
“When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.”
What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
From: "John McElwaine" <john.mcelwaine@nelsonmullins.com> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org> www.icann.org[icann.org]<http://www.icann.org>[icann.org]
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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I disagree. I have been in this debate for 18 years. Many stakeholders conflate "generic term" with "dictionary term". They do not understand that a "dictionary term" can be "generic" and "arbitrary" depending on the goods snd services. This type of nuance is lost on the general public. For this reason, I cannot nor will not (in my non-Chair capacity) agree to the use of the term "generic" in these questions. Sent from my iPhone On Dec 6, 2016, at 8:14 PM, Edward Morris <egmorris1@toast.net<mailto:egmorris1@toast.net>> wrote: Hi John, Thanks for your contribution. If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here. There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be: US Patent and Trademark Office (USPTO) Glossary generic term: “terms that the relevant purchasing public understands primarily as the common or class name for the goods or services." These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM<http://PIZZA.COM> for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.” https://www.uspto.gov/learning-and-resources/glossary#sec-g The INTA teaches the same “common knowledge” approach as the USPTO: “Generic words can be thought of as the common name of the problem or service in question – for example, “clock” is a generic word for timepieces.” Because these are the common names of goods and services, the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread). The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work. As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote: “When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.” What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to? Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward. John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with. Thanks for considering. Kind Regards, Edward Morris ________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com<mailto:john.mcelwaine@nelsonmullins.com>> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org<mailto:david.tait@icann.org>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <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 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. Tait Policy Specialist (Solicitor qualified in Scotland, non-practicing) Internet Corporation for Assigned Names and Numbers (ICANN) Mobile: + 44-7864-793776 Email: david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org> www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http://www.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx> Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ <ACL>
Well said, Edward. Let's not get distracted by pedantic criticisms, and instead look at the big picture, namely that a trademark does not entitle its owner to have a right of first refusal or a priority right to that term in every gTLD. Where there are multiple users of a term (whether it's a dictionary word, acronym, or other frequently used term, or string of alphanumeric characters), those other good faith non-trademark owner users (both actual and prospective) should have equal access to register that term. To do otherwise represents a prior restraint on speech. If those users *later* abuse that registration by infringing someone's rights, they should face the appropriate consequences. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
“terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.” https://www.uspto.gov/learning-and-resources/glossary#sec-g
The INTA teaches the same “common knowledge” approach as the USPTO:
“Generic words can be thought of as the common name of the problem or service in question – for example, “clock” is a generic word for timepieces.” Because these are the common names of goods and services, the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote:
“When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.”
What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org>
www.icann.org[icann.org]<http://www.icann.org>[icann.org]
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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As I repeatedly have stated on this thread, I think nomenclature is VERY important here. I do not and will not agree to use of the term ³generic.² Having said that, I also recognize George¹s point that there may be multiple users of dictionary terms and other alphanumeric monikers used by different players in the marketplace. The RPMs are designed to prevent infringement and cybersquatting, not guarantee an absolute monopoly. If we find that numerous parties with legitimate rights are being left out of the system or finding it difficult to get protection or to use their moniker, we need to figure out a solution to that problem. However, I am not aware that this massive deficit in domains is harming Internet users. If harm can be demonstrated, not just hypothesized about based on a fundamental dislike of sunrise registrations. 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 On 12/7/16, 4:11 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:
Well said, Edward. Let's not get distracted by pedantic criticisms, and instead look at the big picture, namely that a trademark does not entitle its owner to have a right of first refusal or a priority right to that term in every gTLD.
Where there are multiple users of a term (whether it's a dictionary word, acronym, or other frequently used term, or string of alphanumeric characters), those other good faith non-trademark owner users (both actual and prospective) should have equal access to register that term. To do otherwise represents a prior restraint on speech.
If those users *later* abuse that registration by infringing someone's rights, they should face the appropriate consequences.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
³terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.² https://www.uspto.gov/learning-and-resources/glossary#sec-g
The INTA teaches the same ³common knowledge² approach as the USPTO:
³Generic words can be thought of as the common name of the problem or service in question for example, ³clock² is a generic word for timepieces.² Because these are the common names of goods and services, the first rule of trade mark law is that ³[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify² ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott¹s raising of this issue she wrote:
³When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.²
What happens if Registrants can¹t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing ³generic² out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don¹t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as ³generic² mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group¹s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass¹n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term ³generic² from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman¹s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question‹for example, ³clock² is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify."
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFac tSheet.aspx[inta.org]
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org>
www.icann.org[icann.org]<http://www.icann.org>[icann.org]
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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J. Scott, I believe the term “generic” is widely understood. In crude terms it means a word that ultimately defines the thing. I believe you are caught up in the fact that a generic term can ALSO be used in a non-generic sense. While I accept that a generic term can serve as a trademark if used in a non-generic sense, that is not always or even often how it plays out in trademark registrations. While the USPTO is fairly good at preventing generic registrations, its records are rather rife with examples of registered marks that include generic terms which are not themselves disclaimed. Further, in the US there has been a long history of abuse (IMHO) of generic/descriptive terms that have been registered under 2F. Outside the US the registrations are not subject to even the USPTO level of scrutiny. Also, in the EU and elsewhere, use is not required which leads to a laundry list of classifications, most of which include generic uses which are not excluded by disclaimer or otherwise. My concern is that while the TMCH is a database, its use has far more applied significance in the registration process. So, I do not have any difficulty with the term “generic” as used in the questions. The issue you point out will be duly sorted out in the context of answering the questions with the ultimate decision being addressed in the context of a UDRP or litigation proceeding depending upon the use to which the domain is placed by the registrant. Regards, Paul On 12/7/16, 2:03 PM, "J. Scott Evans" <gnso-rpm-wg-bounces@icann.org on behalf of jsevans@adobe.com> wrote:
As I repeatedly have stated on this thread, I think nomenclature is VERY important here. I do not and will not agree to use of the term ³generic.²
Having said that, I also recognize George¹s point that there may be multiple users of dictionary terms and other alphanumeric monikers used by different players in the marketplace. The RPMs are designed to prevent infringement and cybersquatting, not guarantee an absolute monopoly. If we find that numerous parties with legitimate rights are being left out of the system or finding it difficult to get protection or to use their moniker, we need to figure out a solution to that problem. However, I am not aware that this massive deficit in domains is harming Internet users. If harm can be demonstrated, not just hypothesized about based on a fundamental dislike of sunrise registrations.
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
On 12/7/16, 4:11 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:
Well said, Edward. Let's not get distracted by pedantic criticisms, and instead look at the big picture, namely that a trademark does not entitle its owner to have a right of first refusal or a priority right to that term in every gTLD.
Where there are multiple users of a term (whether it's a dictionary word, acronym, or other frequently used term, or string of alphanumeric characters), those other good faith non-trademark owner users (both actual and prospective) should have equal access to register that term. To do otherwise represents a prior restraint on speech.
If those users *later* abuse that registration by infringing someone's rights, they should face the appropriate consequences.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
³terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.² https://www.uspto.gov/learning-and-resources/glossary#sec-g
The INTA teaches the same ³common knowledge² approach as the USPTO:
³Generic words can be thought of as the common name of the problem or service in question for example, ³clock² is a generic word for timepieces.² Because these are the common names of goods and services, the first rule of trade mark law is that ³[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify² ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott¹s raising of this issue she wrote:
³When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.²
What happens if Registrants can¹t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing ³generic² out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don¹t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as ³generic² mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group¹s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass¹n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term ³generic² from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman¹s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question‹for example, ³clock² is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify."
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFa c tSheet.aspx[inta.org]
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org>
www.icann.org[icann.org]<http://www.icann.org>[icann.org]
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message.
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With all due respect Paul, I disagree. As I have repeatedly stated the use of the term “generic” creates a great amount of confusion. Confusion, IMHO, that some in this debate use to their advantage. In a country that now suffers from an overload of misinformation, I think we owe it to ourselves to be clear. My concern is that many in the ICANN community view all “dictionary terms” as a generic and constantly argue that such “generic terms” do not deserve a heightened level of protection as trademarks. That is incorrect. A “dictionary term” is only a “generic term” in the trademark sense in certain specific circumstances. Given this historical misunderstanding AND its use to bolster a flurry of righteous indignation from those opposed to RPMs because they don’t understand the nuance, I do not agree that the term “generic” should be used. 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 On 12/7/16, 5:48 AM, "Paul Keating" <Paul@law.es> wrote:
J. Scott,
I believe the term “generic” is widely understood. In crude terms it means a word that ultimately defines the thing. I believe you are caught up in the fact that a generic term can ALSO be used in a non-generic sense. While I accept that a generic term can serve as a trademark if used in a non-generic sense, that is not always or even often how it plays out in trademark registrations. While the USPTO is fairly good at preventing generic registrations, its records are rather rife with examples of registered marks that include generic terms which are not themselves disclaimed. Further, in the US there has been a long history of abuse (IMHO) of generic/descriptive terms that have been registered under 2F. Outside the US the registrations are not subject to even the USPTO level of scrutiny. Also, in the EU and elsewhere, use is not required which leads to a laundry list of classifications, most of which include generic uses which are not excluded by disclaimer or otherwise.
My concern is that while the TMCH is a database, its use has far more applied significance in the registration process.
So, I do not have any difficulty with the term “generic” as used in the questions. The issue you point out will be duly sorted out in the context of answering the questions with the ultimate decision being addressed in the context of a UDRP or litigation proceeding depending upon the use to which the domain is placed by the registrant.
Regards,
Paul
On 12/7/16, 2:03 PM, "J. Scott Evans" <gnso-rpm-wg-bounces@icann.org on behalf of jsevans@adobe.com> wrote:
As I repeatedly have stated on this thread, I think nomenclature is VERY important here. I do not and will not agree to use of the term ³generic.²
Having said that, I also recognize George¹s point that there may be multiple users of dictionary terms and other alphanumeric monikers used by different players in the marketplace. The RPMs are designed to prevent infringement and cybersquatting, not guarantee an absolute monopoly. If we find that numerous parties with legitimate rights are being left out of the system or finding it difficult to get protection or to use their moniker, we need to figure out a solution to that problem. However, I am not aware that this massive deficit in domains is harming Internet users. If harm can be demonstrated, not just hypothesized about based on a fundamental dislike of sunrise registrations.
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
On 12/7/16, 4:11 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:
Well said, Edward. Let's not get distracted by pedantic criticisms, and instead look at the big picture, namely that a trademark does not entitle its owner to have a right of first refusal or a priority right to that term in every gTLD.
Where there are multiple users of a term (whether it's a dictionary word, acronym, or other frequently used term, or string of alphanumeric characters), those other good faith non-trademark owner users (both actual and prospective) should have equal access to register that term. To do otherwise represents a prior restraint on speech.
If those users *later* abuse that registration by infringing someone's rights, they should face the appropriate consequences.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
³terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.² https://www.uspto.gov/learning-and-resources/glossary#sec-g
The INTA teaches the same ³common knowledge² approach as the USPTO:
³Generic words can be thought of as the common name of the problem or service in question for example, ³clock² is a generic word for timepieces.² Because these are the common names of goods and services, the first rule of trade mark law is that ³[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify² ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott¹s raising of this issue she wrote:
³When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.²
What happens if Registrants can¹t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing ³generic² out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don¹t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as ³generic² mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group¹s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass¹n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term ³generic² from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman¹s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question‹for example, ³clock² is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify."
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthF a c tSheet.aspx[inta.org]
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org>
www.icann.org[icann.org]<http://www.icann.org>[icann.org]
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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I appreciate the spirited and informative discussion on this matter -- although I am somewhat surprised by its intensity, given that not all that long ago the ICANN community debated whether "closed generic" gTLDs should be permitted within the new gTLD program, and reached a general conclusion that they should not -- and during that entire debate I don't recall hearing objections that we should be discussing "closed dictionary word" gTLDs (but perhaps memory is faulty). I think any concerns that the question's wording is designed to steer toward a conclusion that trademark protections should be diluted or even eliminated are way overblown. In any event, the Co-Chairs are discussing this matter in advance of today's call and may have a proposal to move us forward so that we can get the questions out promptly, and reserve future debates for the conclusions to be drawn and policy recommendations to be based upon the answers received. 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 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans Sent: Wednesday, December 07, 2016 9:46 AM To: Paul Keating; 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 With all due respect Paul, I disagree. As I have repeatedly stated the use of the term “generic” creates a great amount of confusion. Confusion, IMHO, that some in this debate use to their advantage. In a country that now suffers from an overload of misinformation, I think we owe it to ourselves to be clear. My concern is that many in the ICANN community view all “dictionary terms” as a generic and constantly argue that such “generic terms” do not deserve a heightened level of protection as trademarks. That is incorrect. A “dictionary term” is only a “generic term” in the trademark sense in certain specific circumstances. Given this historical misunderstanding AND its use to bolster a flurry of righteous indignation from those opposed to RPMs because they don’t understand the nuance, I do not agree that the term “generic” should be used. 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 On 12/7/16, 5:48 AM, "Paul Keating" <Paul@law.es> wrote:
J. Scott,
I believe the term “generic” is widely understood. In crude terms it means a word that ultimately defines the thing. I believe you are caught up in the fact that a generic term can ALSO be used in a non-generic sense. While I accept that a generic term can serve as a trademark if used in a non-generic sense, that is not always or even often how it plays out in trademark registrations. While the USPTO is fairly good at preventing generic registrations, its records are rather rife with examples of registered marks that include generic terms which are not themselves disclaimed. Further, in the US there has been a long history of abuse (IMHO) of generic/descriptive terms that have been registered under 2F. Outside the US the registrations are not subject to even the USPTO level of scrutiny. Also, in the EU and elsewhere, use is not required which leads to a laundry list of classifications, most of which include generic uses which are not excluded by disclaimer or otherwise.
My concern is that while the TMCH is a database, its use has far more applied significance in the registration process.
So, I do not have any difficulty with the term “generic” as used in the questions. The issue you point out will be duly sorted out in the context of answering the questions with the ultimate decision being addressed in the context of a UDRP or litigation proceeding depending upon the use to which the domain is placed by the registrant.
Regards,
Paul
On 12/7/16, 2:03 PM, "J. Scott Evans" <gnso-rpm-wg-bounces@icann.org on behalf of jsevans@adobe.com> wrote:
As I repeatedly have stated on this thread, I think nomenclature is VERY important here. I do not and will not agree to use of the term ³generic.²
Having said that, I also recognize George¹s point that there may be multiple users of dictionary terms and other alphanumeric monikers used by different players in the marketplace. The RPMs are designed to prevent infringement and cybersquatting, not guarantee an absolute monopoly. If we find that numerous parties with legitimate rights are being left out of the system or finding it difficult to get protection or to use their moniker, we need to figure out a solution to that problem. However, I am not aware that this massive deficit in domains is harming Internet users. If harm can be demonstrated, not just hypothesized about based on a fundamental dislike of sunrise registrations.
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
On 12/7/16, 4:11 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:
Well said, Edward. Let's not get distracted by pedantic criticisms, and instead look at the big picture, namely that a trademark does not entitle its owner to have a right of first refusal or a priority right to that term in every gTLD.
Where there are multiple users of a term (whether it's a dictionary word, acronym, or other frequently used term, or string of alphanumeric characters), those other good faith non-trademark owner users (both actual and prospective) should have equal access to register that term. To do otherwise represents a prior restraint on speech.
If those users *later* abuse that registration by infringing someone's rights, they should face the appropriate consequences.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1@toast.net> wrote:
Hi John,
Thanks for your contribution.
If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
There is nothing mysterious or confusing about the definition of a generic word every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
US Patent and Trademark Office (USPTO) Glossary
generic term:
³terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.² https://www.uspto.gov/learning-and-resources/glossary#sec-g
The INTA teaches the same ³common knowledge² approach as the USPTO:
³Generic words can be thought of as the common name of the problem or service in question for example, ³clock² is a generic word for timepieces.² Because these are the common names of goods and services, the first rule of trade mark law is that ³[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify² ((from the INTA publication quoted below in the e-mail that started this thread).
The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services. Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott¹s raising of this issue she wrote:
³When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.²
What happens if Registrants can¹t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
Throwing ³generic² out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don¹t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
Thanks for considering.
Kind Regards,
Edward Morris
________________________________ From: "John McElwaine" <john.mcelwaine@nelsonmullins.com> Sent: Tuesday, December 6, 2016 2:51 PM To: "David Tait" <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
The point that Kiran is making is that words such as ³generic² mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group¹s remit and capabilities and outside the remit and capabilities of the TMCH.
Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass¹n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.
As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term ³generic² from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.
Thanks,
John
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
Dear All
At Kathy Kleiman¹s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.
Kind regards,
David
From: Kathy Kleiman <kathy@kathykleiman.com> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com>, David Tait <david.tait@icann.org> Cc: Mary Wong <mary.wong@icann.org>, Susan Payne <susan.payne@valideus.com>, Edward Morris <edward.morris@alumni.usc.edu>, Phil Corwin <psc@vlaw-dc.com>, "Sarahliannec@gmail.com" <Sarahliannec@gmail.com>, Paul Keating <paul@law.es>, "kurt@kjpritz.com" <kurt@kjpritz.com>, "gpmgroup@gmail.com" <gpmgroup@gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com>, Sarah Clayton <Sarahliannec@gmail.com> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016
I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.
One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:
=> "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question‹for example, ³clock² is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify."
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthF a c tSheet.aspx[inta.org]
So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.
Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do.
Best, Kathy
On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
Hi David,
I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?
Thanks,
Kiran
Kiran Malancharuvil
Policy Counselor
MarkMonitor
415-419-9138 (m)
Sent from my mobile, please excuse any typos.
On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> wrote:
Dear All
Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.
The notes and outcomes are as follows:
* Q10 - Should be marked green for accepted.
* Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"
Proposal to keep question in but report findings to SubPro WG.
* Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"
* Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"
Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"
Both proposals to go to the Working Group.
Should there be regional service desks if not regional providers?
* Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"
I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).
Kind regards,
David
David A. Tait
Policy Specialist (Solicitor qualified in Scotland, non-practicing)
Internet Corporation for Assigned Names and Numbers (ICANN)
Mobile: + 44-7864-793776
Email: david.tait@icann.org<mailto:david.tait@icann.org>
www.icann.org[icann.org]<http://www.icann.org>[icann.org]
<Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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Hi folks, On Wed, Dec 7, 2016 at 8:03 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Having said that, I also recognize George¹s point that there may be multiple users of dictionary terms and other alphanumeric monikers used by different players in the marketplace. The RPMs are designed to prevent infringement and cybersquatting, not guarantee an absolute monopoly. If we find that numerous parties with legitimate rights are being left out of the system or finding it difficult to get protection or to use their moniker, we need to figure out a solution to that problem. However, I am not aware that this massive deficit in domains is harming Internet users. If harm can be demonstrated, not just hypothesized about based on a fundamental dislike of sunrise registrations.
The main justification for approving the new gTLDs program was an expansion of choices for registrants, because "every good name was taken", i.e. that there *was* a "massive deficit in domains that was harming internet users." Some folks even now argue that a 2nd round, or even ongoing rounds, of new gTLDs, should happen, for that same reason. Now, I was (and am) not convinced that that was true. However, ICANN can't have it both ways, arguing some of the time that there's a huge deficit in domains requiring new gTLDs, but then arguing at other times that there's no massive deficit of domains, and thus sunrise registrations are hunky-dory. We actually *do* have evidence of what happened when there were no sunrise periods, namely the experience from 1985-1999 in com/net/org, i.e. the pre-UDRP period "Wild West" period (although the first-come, first serve system still operates today). During that time, nearly "every good domain name" was "already taken" according to some. While some cybersquatting did occur, on balance most registrations did not involve cybersquatting. Indeed, if there was a huge amount of cybersquatting prior to 1999, one would have expected that there would be a massive number of UDRP cases won by complainants over the "frequently used terms" (can we all agree to call these most desirable and frequently used strings "The Usual Suspects", if some dislike the term "generics"; we'll have to come up with some economical term for them). If one checks the stats, that wasn't the case. "The RPMs are designed to prevent infringement and cybersquatting, not guarantee an absolute monopoly." On this we all agree. We just need to find the most balanced solution, for all stakeholders, in light of all the evidence. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
participants (25)
-
Ariel Manoff -
Beckham, Brian -
David Tait -
Edward Morris -
George Kirikos -
Greg Shatan -
J. Scott Evans -
John McElwaine -
Jonathan Agmon -
jonathan matkowsky -
Kathy Kleiman -
Luc SEUFER -
Marie Pattullo -
Nahitchevansky, Georges -
Pascal Böhner -
Paul Keating -
Paul Tattersfield -
Paul＠law.es ZIMBRA
-
Phil Corwin -
Reg Levy -
Reuter, Renee M -
Silver, Bradley -
Thomas Brackey -
Thomas, Christopher M. -
Vaibhav Aggarwal