Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy *------------------------------------------------------ * * * *Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, /How are design marks currently handled by the TMCH provider?; /and #16, /Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)/* We (the RPM Working Group) have found a problem: 1.We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2.However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3.Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4.Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5.In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion /A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board/ The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: *“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).”*https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: *“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)* The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1Nationally or regionally registered word marks from all jurisdictions” /Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office./ /B. Harm from the Current Form/ The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider /by contract/ to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in /Relationship with ICANN/, Special Trademark Issues Review Team Recommendations). /C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks/ Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision /Marco Rafael Sanfilippo v. Estudio Indigo/, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that *the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks*. See e.g., /Neopost Industrie B.V. v. PFE Intern/., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). /D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. / As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: *“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” * ** To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, /it may not take steps to expand existing trademark rights/. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II.*Breach and Correction* Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group *by consensus* may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a *change* to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
Well Done to all involved! As a person very familiar with IT related contracting, I want to add that it is standard procedure for an IT contractor to expand their statement of work as much as possible and to aggressively increase marketing opportunities by all means possible. That is there business! Mark Massey, MCSE, MCP ID 316 From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 7:17 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy ------------------------------------------------------ Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?) We (the RPM Working Group) have found a problem: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” <https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf> https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office. B. Harm from the Current Form The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g., Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II. Breach and Correction Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
Hi Kathy, Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated. I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week. 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4). I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it. Best, Paul From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy ------------------------------------------------------ Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?) We (the RPM Working Group) have found a problem: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office. B. Harm from the Current Form The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g., Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II. Breach and Correction Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them. ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read... Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community. If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set. Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1.We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2.However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: *“*The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).*(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) *Emphasis added. /Section //4.1, National or Multinational Registered Marks, /https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf ==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based. ==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book /The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) /spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks: [USPTO *Representation of Mark*] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and *not* in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies." "The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual <http://tess2.uspto.gov/tmdb/dscm/index.htm>." "Here is an example of a standard character mark: Standard mark example" "Here are some examples of special form marks: Stylized mark example Design mark example Design mark example" Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa... The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no. Best, Kathy
3.Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4.Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5.In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, April 19, 2017 6:18 PM *To:* gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
*------------------------------------------------------*
*Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, /How are design marks currently handled by the TMCH provider?; /and #16, /Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)/*
We (the RPM Working Group) have found a problem:
1.We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2.However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3.Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4.Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5.In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
/A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board/
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
*“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).”*https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
*“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)*
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1Nationally or regionally registered word marks from all jurisdictions”
/Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office./
/B. Harm from the Current Form/
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider /by contract/ to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in /Relationship with ICANN/, Special Trademark Issues Review Team Recommendations).
/C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks/
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision /Marco Rafael Sanfilippo v. Estudio Indigo/, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that *the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks*. See e.g.,
/Neopost Industrie B.V. v. PFE Intern/., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
/D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. /
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
*“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” *
**
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, /it may not take steps to expand existing trademark rights/. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II.*Breach and Correction*
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group *by consensus* may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a *change* to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Kathy, It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form. In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”. It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”. Brian From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read... Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community. If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set. Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy On 4/19/2017 8:23 PM, icannlists wrote: Hi Kathy, Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated. I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week. ==> The category is meant to be comprehensive and international. 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: “The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf ==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based. ==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks: [USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies." "The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual<http://tess2.uspto.gov/tmdb/dscm/index.htm>." "Here is an example of a standard character mark: [Standard mark example]" "Here are some examples of special form marks: [Stylized mark example] [Design mark example] [Design mark example] " Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa... The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no. Best, Kathy 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation. In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4). I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy ------------------------------------------------------ Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?) We (the RPM Working Group) have found a problem: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office. B. Harm from the Current Form The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g., Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II. Breach and Correction Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them. ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. 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I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive. J. Scott Sent from my iPhone On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Kathy, It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form. In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”. It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”. Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read... Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community. If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set. Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy On 4/19/2017 8:23 PM, icannlists wrote: Hi Kathy, Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated. I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week. ==> The category is meant to be comprehensive and international. 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: “The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en.pdf&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636287910468586476&sdata=2q5XKyT5cgFNWgyIE%2FTMdj6s9xcK3jSyVVVGJukDSIE%3D&reserved=0> ==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based. ==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks: [USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies." "The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Ftess2.uspto....>." "Here is an example of a standard character mark: <image001.jpg>" "Here are some examples of special form marks: <image002.jpg> <image003.jpg> <image004.jpg>" Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representation-mark<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.gov%2Ftrademarks-getting-started%2Ftrademark-basics%2Frepresentation-mark&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636287910468586476&sdata=MKbgTMRnE3J1qNekU1wNWWSpHRw0hHcszc9DGVy2RJg%3D&reserved=0> The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no. Best, Kathy 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation. In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4). I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy ------------------------------------------------------ Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?) We (the RPM Working Group) have found a problem: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en.pdf&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636287910468586476&sdata=2q5XKyT5cgFNWgyIE%2FTMdj6s9xcK3jSyVVVGJukDSIE%3D&reserved=0> Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office. B. Harm from the Current Form The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g., Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II. Breach and Correction Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them. ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. 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I encourage people to distinguish between the existence of a registration and the breadth of protection given to a mark--which varies based on the marketplace strength of the mark, as well as other factors not encompassed by the fact of registration. Given the mandate not to expand trademark protection, what the TMCH operator can discern from the fact of registration is the fact of registration; it should not make assumptions about the breadth of subsequent protection. While Coca-Cola has rights against Koke for soda, it doesn't have a registration for Koke. An audit of the TMCH could also help reveal whether stylized marks are common. The evidence we have now indicates that Deloitte will accept every problematic scenario we posited--including stylization where the law is clear that the rights of the registrant only cover the stylized version and not the words alone. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 7:41 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Yes, but Rebecca, the inverse of this is that the TMCH (through the auspices of this WG) would be making often subjective assessments. Primarily, the issues we are discussing are a function of the confluence of offline rights (with inter alia territorial, class, and scope/strength distinctions) seeking application in a system (the DNS) which by its design does not account for such distinctions. Therefore, rather than front-load the answers to such questions into the TMCH (and follow-on RPM) design, why not address notions such as the breadth of protection in the text of claims notices and the substantive criteria of curative RPMs (which already account e.g., for co-existence). In this way, trademark protection is not being "expanded", but rather, it is addressed downstream. Brian -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 1:53 PM To: J. Scott Evans Cc: Beckham, Brian; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) I encourage people to distinguish between the existence of a registration and the breadth of protection given to a mark--which varies based on the marketplace strength of the mark, as well as other factors not encompassed by the fact of registration. Given the mandate not to expand trademark protection, what the TMCH operator can discern from the fact of registration is the fact of registration; it should not make assumptions about the breadth of subsequent protection. While Coca-Cola has rights against Koke for soda, it doesn't have a registration for Koke. An audit of the TMCH could also help reveal whether stylized marks are common. The evidence we have now indicates that Deloitte will accept every problematic scenario we posited--including stylization where the law is clear that the rights of the registrant only cover the stylized version and not the words alone. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 7:41 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/repr esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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We know that Deloitte is making highly subjective judgments now about how "important" word and design portions of a mark are now; that's explicit in the standards now, and that's far less objective than requiring that the applicant show that there is a registration for the textual elements, as initially indicated by ICANN. While the DNS can't in itself account for territoriality, and there's been resistance to including product classifications, the DNS can readily account for whether the elements of a mark that are replicated in a domain name (the text) are themselves subject to protection in themselves, without additional matter. Indeed, the fact that we don't have territoriality or product classifications makes it even more important to hang on to the limits that appear in the registrations. The standard of requiring submission of a registration or court judgment was imposed to limit the claims that could be made; allowing Deloitte to expand what it accepts allows evasion of those limits. As to addressing scope "downstream," the abandonment rate of well over 90%, in combination with what we know are the most common strings returned, suggests that there is no downstream, only a dam. There's really no limit to the "address it downstream" argument; if downstream were enough, then there ought to be no requirement of any registration at all. However, your suggestion about the text of claims notices is really important, and I'd be happy to work with anyone on a proposal for funding for actual consumer testing about the effects of and understanding of the notices on the part of ordinary registrants. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 8:01 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Yes, but Rebecca, the inverse of this is that the TMCH (through the auspices of this WG) would be making often subjective assessments.
Primarily, the issues we are discussing are a function of the confluence of offline rights (with inter alia territorial, class, and scope/strength distinctions) seeking application in a system (the DNS) which by its design does not account for such distinctions.
Therefore, rather than front-load the answers to such questions into the TMCH (and follow-on RPM) design, why not address notions such as the breadth of protection in the text of claims notices and the substantive criteria of curative RPMs (which already account e.g., for co-existence).
In this way, trademark protection is not being "expanded", but rather, it is addressed downstream.
Brian
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 1:53 PM To: J. Scott Evans Cc: Beckham, Brian; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I encourage people to distinguish between the existence of a registration and the breadth of protection given to a mark--which varies based on the marketplace strength of the mark, as well as other factors not encompassed by the fact of registration. Given the mandate not to expand trademark protection, what the TMCH operator can discern from the fact of registration is the fact of registration; it should not make assumptions about the breadth of subsequent protection. While Coca-Cola has rights against Koke for soda, it doesn't have a registration for Koke.
An audit of the TMCH could also help reveal whether stylized marks are common. The evidence we have now indicates that Deloitte will accept every problematic scenario we posited--including stylization where the law is clear that the rights of the registrant only cover the stylized version and not the words alone. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 7:41 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/repr esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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+1 Brian Sent from my iPhone
On Apr 26, 2017, at 5:01 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Yes, but Rebecca, the inverse of this is that the TMCH (through the auspices of this WG) would be making often subjective assessments.
Primarily, the issues we are discussing are a function of the confluence of offline rights (with inter alia territorial, class, and scope/strength distinctions) seeking application in a system (the DNS) which by its design does not account for such distinctions.
Therefore, rather than front-load the answers to such questions into the TMCH (and follow-on RPM) design, why not address notions such as the breadth of protection in the text of claims notices and the substantive criteria of curative RPMs (which already account e.g., for co-existence).
In this way, trademark protection is not being "expanded", but rather, it is addressed downstream.
Brian
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 1:53 PM To: J. Scott Evans Cc: Beckham, Brian; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I encourage people to distinguish between the existence of a registration and the breadth of protection given to a mark--which varies based on the marketplace strength of the mark, as well as other factors not encompassed by the fact of registration. Given the mandate not to expand trademark protection, what the TMCH operator can discern from the fact of registration is the fact of registration; it should not make assumptions about the breadth of subsequent protection. While Coca-Cola has rights against Koke for soda, it doesn't have a registration for Koke.
An audit of the TMCH could also help reveal whether stylized marks are common. The evidence we have now indicates that Deloitte will accept every problematic scenario we posited--including stylization where the law is clear that the rights of the registrant only cover the stylized version and not the words alone. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 7:41 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g... esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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+1 Brian. There is an important issue here for future registrants. If this WG front loads the analysis and turns the TMCH into a reexamination shop (second guessing the work of trademark offices around the world), what the potential registrant is left with is a claims notice which the WG thinks is relevant to the registrant's infringement analysis rather than the registrant having the full panoply of information within which to make a reasoned choice on these sorts of strength/weakness goods/services issues. In other words, the WG may be doing the thinking for the potential registrant (and her attorneys) and we may not get it right. What if we draw the line too tightly and the registrant moves forward with a registration that gets her sued? We won't be doing end users any favors in such a scenario. Let's stick to leaving the trademark examination up to the trademark examiners. Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Wednesday, April 26, 2017 7:40 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) +1 Brian Sent from my iPhone
On Apr 26, 2017, at 5:01 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Yes, but Rebecca, the inverse of this is that the TMCH (through the auspices of this WG) would be making often subjective assessments.
Primarily, the issues we are discussing are a function of the confluence of offline rights (with inter alia territorial, class, and scope/strength distinctions) seeking application in a system (the DNS) which by its design does not account for such distinctions.
Therefore, rather than front-load the answers to such questions into the TMCH (and follow-on RPM) design, why not address notions such as the breadth of protection in the text of claims notices and the substantive criteria of curative RPMs (which already account e.g., for co-existence).
In this way, trademark protection is not being "expanded", but rather, it is addressed downstream.
Brian
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 1:53 PM To: J. Scott Evans Cc: Beckham, Brian; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I encourage people to distinguish between the existence of a registration and the breadth of protection given to a mark--which varies based on the marketplace strength of the mark, as well as other factors not encompassed by the fact of registration. Given the mandate not to expand trademark protection, what the TMCH operator can discern from the fact of registration is the fact of registration; it should not make assumptions about the breadth of subsequent protection. While Coca-Cola has rights against Koke for soda, it doesn't have a registration for Koke.
An audit of the TMCH could also help reveal whether stylized marks are common. The evidence we have now indicates that Deloitte will accept every problematic scenario we posited--including stylization where the law is clear that the rights of the registrant only cover the stylized version and not the words alone. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 7:41 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso .icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en&da ta=02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794 aed2c178decee1%7C0%7C0%7C636288048870944320&sdata=oe1J6kAGWG9bd1Nyku% 2FQwftemdcJiPM4ErGS4UlXJUY%3D&reserved=0 .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. uspto.gov%2Ftrademarks-getting-started%2Ftrademark-basics%2Frepr&data =02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794ae d2c178decee1%7C0%7C0%7C636288048870944320&sdata=xZZP0t9sPJNfmJNnAKzbT CK4lWAhtss4LG%2BeLULUeGw%3D&reserved=0 esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso .icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en&da ta=02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794 aed2c178decee1%7C0%7C0%7C636288048870944320&sdata=oe1J6kAGWG9bd1Nyku% 2FQwftemdcJiPM4ErGS4UlXJUY%3D&reserved=0 .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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+1 -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of icannlists Sent: Wednesday, April 26, 2017 9:41 AM To: Beckham, Brian Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) +1 Brian. There is an important issue here for future registrants. If this WG front loads the analysis and turns the TMCH into a reexamination shop (second guessing the work of trademark offices around the world), what the potential registrant is left with is a claims notice which the WG thinks is relevant to the registrant's infringement analysis rather than the registrant having the full panoply of information within which to make a reasoned choice on these sorts of strength/weakness goods/services issues. In other words, the WG may be doing the thinking for the potential registrant (and her attorneys) and we may not get it right. What if we draw the line too tightly and the registrant moves forward with a registration that gets her sued? We won't be doing end users any favors in such a scenario. Let's stick to leaving the trademark examination up to the trademark examiners. Best, Paul -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Wednesday, April 26, 2017 7:40 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) +1 Brian Sent from my iPhone
On Apr 26, 2017, at 5:01 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Yes, but Rebecca, the inverse of this is that the TMCH (through the auspices of this WG) would be making often subjective assessments.
Primarily, the issues we are discussing are a function of the confluence of offline rights (with inter alia territorial, class, and scope/strength distinctions) seeking application in a system (the DNS) which by its design does not account for such distinctions.
Therefore, rather than front-load the answers to such questions into the TMCH (and follow-on RPM) design, why not address notions such as the breadth of protection in the text of claims notices and the substantive criteria of curative RPMs (which already account e.g., for co-existence).
In this way, trademark protection is not being "expanded", but rather, it is addressed downstream.
Brian
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 1:53 PM To: J. Scott Evans Cc: Beckham, Brian; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I encourage people to distinguish between the existence of a registration and the breadth of protection given to a mark--which varies based on the marketplace strength of the mark, as well as other factors not encompassed by the fact of registration. Given the mandate not to expand trademark protection, what the TMCH operator can discern from the fact of registration is the fact of registration; it should not make assumptions about the breadth of subsequent protection. While Coca-Cola has rights against Koke for soda, it doesn't have a registration for Koke.
An audit of the TMCH could also help reveal whether stylized marks are common. The evidence we have now indicates that Deloitte will accept every problematic scenario we posited--including stylization where the law is clear that the rights of the registrant only cover the stylized version and not the words alone. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 7:41 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso .icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en&da ta=02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794 aed2c178decee1%7C0%7C0%7C636288048870944320&sdata=oe1J6kAGWG9bd1Nyku% 2FQwftemdcJiPM4ErGS4UlXJUY%3D&reserved=0 .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. uspto.gov%2Ftrademarks-getting-started%2Ftrademark-basics%2Frepr&data =02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794ae d2c178decee1%7C0%7C0%7C636288048870944320&sdata=xZZP0t9sPJNfmJNnAKzbT CK4lWAhtss4LG%2BeLULUeGw%3D&reserved=0 esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso .icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en&da ta=02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794 aed2c178decee1%7C0%7C0%7C636288048870944320&sdata=oe1J6kAGWG9bd1Nyku% 2FQwftemdcJiPM4ErGS4UlXJUY%3D&reserved=0 .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Rebecca’s depth of precedent and secondary sources are gratefully acknowledged, but the analysis should not be limited to US centric precedent or commentary. Given the global context we need broader precedent and secondary source expertise from multiple jurisdictions. This is also important considering Brian Beckham’s “confluence” point: On Wed 4/26/2017 8:01 AM Brian Beckham wrote:
Primarily, the issues we are discussing are a function of the confluence of offline rights (with inter alia territorial, class, and scope/strength distinctions) seeking application in a system (the DNS) which by its design does not account for such distinctions.
Therefore, rather than front-load the answers to such questions into the TMCH (and follow-on RPM) design, why not address notions such as the breadth of protection in the text of claims notices and the substantive criteria of curative RPMs (which already account e.g., for co-existence). In this way, trademark protection is not being "expanded", but rather, it is addressed downstream.>> [end email] Brand owners did not just start defensive registrations in 2013 with new gTLDs, but given the tremendous expansion in domain name strings, they truly need a central repository for notice down the road through the TMCH and Claims process as each new gTLD begins to ensure they do not lose TM rights over time through failing to enforce those rights so claims are denied due to acquiescence, waiver or laches. In contrast, as long as domains pay their annual fee they are not subject to loss through non-use or lack of enforcement. Best regards, Scott Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of J. Scott Evans via gnso-rpm-wg Sent: Wednesday, April 26, 2017 8:40 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) +1 Brian Sent from my iPhone
On Apr 26, 2017, at 5:01 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Yes, but Rebecca, the inverse of this is that the TMCH (through the auspices of this WG) would be making often subjective assessments.
Primarily, the issues we are discussing are a function of the confluence of offline rights (with inter alia territorial, class, and scope/strength distinctions) seeking application in a system (the DNS) which by its design does not account for such distinctions.
Therefore, rather than front-load the answers to such questions into the TMCH (and follow-on RPM) design, why not address notions such as the breadth of protection in the text of claims notices and the substantive criteria of curative RPMs (which already account e.g., for co-existence).
In this way, trademark protection is not being "expanded", but rather, it is addressed downstream.
Brian
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 1:53 PM To: J. Scott Evans Cc: Beckham, Brian; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I encourage people to distinguish between the existence of a registration and the breadth of protection given to a mark--which varies based on the marketplace strength of the mark, as well as other factors not encompassed by the fact of registration. Given the mandate not to expand trademark protection, what the TMCH operator can discern from the fact of registration is the fact of registration; it should not make assumptions about the breadth of subsequent protection. While Coca-Cola has rights against Koke for soda, it doesn't have a registration for Koke.
An audit of the TMCH could also help reveal whether stylized marks are common. The evidence we have now indicates that Deloitte will accept every problematic scenario we posited--including stylization where the law is clear that the rights of the registrant only cover the stylized version and not the words alone. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 7:41 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote: I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso .icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en&da ta=02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794 aed2c178decee1%7C0%7C0%7C636288048870944320&sdata=oe1J6kAGWG9bd1Nyku% 2FQwftemdcJiPM4ErGS4UlXJUY%3D&reserved=0 .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww. uspto.gov%2Ftrademarks-getting-started%2Ftrademark-basics%2Frepr&data =02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794ae d2c178decee1%7C0%7C0%7C636288048870944320&sdata=xZZP0t9sPJNfmJNnAKzbT CK4lWAhtss4LG%2BeLULUeGw%3D&reserved=0 esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso .icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en&da ta=02%7C01%7C%7Ce9f2f14efe2b4576bf8508d48c9bf68f%7Cfa7b1b5a7b34438794 aed2c178decee1%7C0%7C0%7C636288048870944320&sdata=oe1J6kAGWG9bd1Nyku% 2FQwftemdcJiPM4ErGS4UlXJUY%3D&reserved=0 .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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+1 Brian B. and J. Scott. The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in. Best, Paul From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive. J. Scott Sent from my iPhone On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Kathy, It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form. In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”. It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”. Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read... Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community. If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set. Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy On 4/19/2017 8:23 PM, icannlists wrote: Hi Kathy, Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated. I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week. ==> The category is meant to be comprehensive and international. 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: “The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en.pdf&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636287910468586476&sdata=2q5XKyT5cgFNWgyIE%2FTMdj6s9xcK3jSyVVVGJukDSIE%3D&reserved=0> ==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based. ==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks: [USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies." "The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Ftess2.uspto....>." "Here is an example of a standard character mark: <image001.jpg>" "Here are some examples of special form marks: <image002.jpg> <image003.jpg> <image004.jpg>" Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representation-mark<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.gov%2Ftrademarks-getting-started%2Ftrademark-basics%2Frepresentation-mark&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636287910468586476&sdata=MKbgTMRnE3J1qNekU1wNWWSpHRw0hHcszc9DGVy2RJg%3D&reserved=0> The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no. Best, Kathy 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation. In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4). I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy ------------------------------------------------------ Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?) We (the RPM Working Group) have found a problem: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en.pdf&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636287910468586476&sdata=2q5XKyT5cgFNWgyIE%2FTMdj6s9xcK3jSyVVVGJukDSIE%3D&reserved=0> Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office. B. Harm from the Current Form The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g., Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II. Breach and Correction Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them. ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. 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How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Rebecca: You are simply wrong on the law. Sent from my iPhone
On Apr 26, 2017, at 6:37 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: +1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann....
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann....
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Citation needed. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:38 AM, J. Scott Evans <jsevans@adobe.com> wrote:
Rebecca:
You are simply wrong on the law.
Sent from my iPhone
On Apr 26, 2017, at 6:37 AM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: +1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann....
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann....
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
________________________________
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Rebecca: This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation. Georges Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
________________________________
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+1 George! Sent from my iPhone
On Apr 26, 2017, at 6:46 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
Rebecca:
This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation.
Georges
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: +1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann....
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann....
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Except we know your statement about the resulting rights is not true: the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For another example, see Decision of the Federal Commission of Appeals of February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of stylized version provides limited rights).) The stylized version may have a scope broad enough to protect against highly similar stylized versions, but the registration does not provide rights in the word itself. What you are talking about is the vital distinction between the existence of protection via registration or court decision (relatively simple to confirm) and the scope of the rights in the specific mark (particularized, not suited for decision in the abstract and thus not a good thing for Deloitte to be deciding on its own say-so about what's important in admitting marks to the TMCH). Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
Rebecca:
This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation.
Georges
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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I agree with J Scott's comments just made to you. We can go back and forth on cases and citations to prove points. I'm not sure the last time you litigated a trademark case, but I can assure you that based on experience a stylized word mark gets protection. The extent of that protection, of course, depends on how strong the word mark might be. If it is a weak descriptive mark, it may only get a narrow and limited scope of protection . A strong mark would obviously get much more protection. I get that you want to eliminate protection for stylized word marks, but that does not accord with reality. So let's try to focus on fixes. Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:59 AM To: Nahitchevansky, Georges Cc: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Except we know your statement about the resulting rights is not true: the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For another example, see Decision of the Federal Commission of Appeals of February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of stylized version provides limited rights).) The stylized version may have a scope broad enough to protect against highly similar stylized versions, but the registration does not provide rights in the word itself. What you are talking about is the vital distinction between the existence of protection via registration or court decision (relatively simple to confirm) and the scope of the rights in the specific mark (particularized, not suited for decision in the abstract and thus not a good thing for Deloitte to be deciding on its own say-so about what's important in admitting marks to the TMCH). Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
Rebecca:
This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation.
Georges
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “caba?as” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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So far as I can tell, we aren't going back and forth on cases and citations; I'm citing cases and you aren't. I believe, and teach, that stylized marks get protection. The question then is what kinds of registrations should be accepted into the TMCH as evidence that the text string--the only thing that can go into the TMCH--is itself protected. Deloitte should not be evaluating the scope of the mark; as we've seen, it gets things very wrong in the examples it returned to us. Deloitte should focus on protection, not scope, and the way to do that is to see whether the text is itself registered. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 10:09 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
I agree with J Scott's comments just made to you. We can go back and forth on cases and citations to prove points. I'm not sure the last time you litigated a trademark case, but I can assure you that based on experience a stylized word mark gets protection. The extent of that protection, of course, depends on how strong the word mark might be. If it is a weak descriptive mark, it may only get a narrow and limited scope of protection . A strong mark would obviously get much more protection. I get that you want to eliminate protection for stylized word marks, but that does not accord with reality. So let's try to focus on fixes.
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:59 AM To: Nahitchevansky, Georges Cc: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Except we know your statement about the resulting rights is not true: the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For another example, see Decision of the Federal Commission of Appeals of February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of stylized version provides limited rights).) The stylized version may have a scope broad enough to protect against highly similar stylized versions, but the registration does not provide rights in the word itself.
What you are talking about is the vital distinction between the existence of protection via registration or court decision (relatively simple to confirm) and the scope of the rights in the specific mark (particularized, not suited for decision in the abstract and thus not a good thing for Deloitte to be deciding on its own say-so about what's important in admitting marks to the TMCH). Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
Rebecca:
This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation.
Georges
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “caba?as” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Rebecca: So a small business or startup that due to lack of counsel or lack of funds, registered its coined, fanciful text mark solely in the form of a stylized font, should be denied TMCH protection and have no notice if an identical string to that text is purchased as a domain name? Best regards, Scott Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 10:34 AM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) So far as I can tell, we aren't going back and forth on cases and citations; I'm citing cases and you aren't. I believe, and teach, that stylized marks get protection. The question then is what kinds of registrations should be accepted into the TMCH as evidence that the text string--the only thing that can go into the TMCH--is itself protected. Deloitte should not be evaluating the scope of the mark; as we've seen, it gets things very wrong in the examples it returned to us. Deloitte should focus on protection, not scope, and the way to do that is to see whether the text is itself registered. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 10:09 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
I agree with J Scott's comments just made to you. We can go back and forth on cases and citations to prove points. I'm not sure the last time you litigated a trademark case, but I can assure you that based on experience a stylized word mark gets protection. The extent of that protection, of course, depends on how strong the word mark might be. If it is a weak descriptive mark, it may only get a narrow and limited scope of protection . A strong mark would obviously get much more protection. I get that you want to eliminate protection for stylized word marks, but that does not accord with reality. So let's try to focus on fixes.
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:59 AM To: Nahitchevansky, Georges Cc: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Except we know your statement about the resulting rights is not true: the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For another example, see Decision of the Federal Commission of Appeals of February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of stylized version provides limited rights).) The stylized version may have a scope broad enough to protect against highly similar stylized versions, but the registration does not provide rights in the word itself.
What you are talking about is the vital distinction between the existence of protection via registration or court decision (relatively simple to confirm) and the scope of the rights in the specific mark (particularized, not suited for decision in the abstract and thus not a good thing for Deloitte to be deciding on its own say-so about what's important in admitting marks to the TMCH). Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
Rebecca:
This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation.
Georges
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09- en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/re presentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09- en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “caba?as” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Short answer: yes. Do you think that a registrant whose word mark application was denied because the word was generic, but was allowed to register a stylized form as sufficiently distinctive, should be able to use the TMCH? Because we know Deloitte accepts those now. Longer answer: yes, because of the fundamental choice to require the existence of a registered right in a national system behind the TMCH. The SME or multinational that chooses a fanciful term is entitled to trademark or passing off protection without registration; the TMCH still doesn’t accept that fanciful term on the claimant’s say-so. What we know in looking at a stylized form is: the national authority accepted that particular form, nothing else. As I said, I’m open to exceptions where there is some authority confirming the distinctiveness of the text portion of the mark alone. Let’s talk about data: as the STARBUCKS example earlier in the conversation indicated, registrants like to get the broadest registration they can, registering the word mark first if the word mark is in fact distinctive of their offerings and design variants later. What data on the use of the TMCH by SMEs exists? I couldn’t find it in the audit, and we’ve heard many times that large trademark owners strategically limit what they put in the TMCH, so there’s no reason to think that 1-trademark TMCH users are SMEs. What reason is there to think a SME would be sophisticated enough to use the TMCH but not sophisticated enough to register a fanciful mark in text form, or to use a monitoring service (if it’s a fanciful mark, even a Google search should do)? We are supposedly engaged in a cost-benefit analysis. The benefits of keeping terms that are not in fact owned by a claimant out of the TMCH seem worth the costs of keeping out the registrant who made poor choices, if such exist (which has not yet been shown). Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 10:56 AM, Scott Austin <SAustin@vlplawgroup.com> wrote:
Rebecca: So a small business or startup that due to lack of counsel or lack of funds, registered its coined, fanciful text mark solely in the form of a stylized font, should be denied TMCH protection and have no notice if an identical string to that text is purchased as a domain name?
Best regards, Scott
Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Wednesday, April 26, 2017 10:34 AM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
So far as I can tell, we aren't going back and forth on cases and citations; I'm citing cases and you aren't. I believe, and teach, that stylized marks get protection. The question then is what kinds of registrations should be accepted into the TMCH as evidence that the text string--the only thing that can go into the TMCH--is itself protected. Deloitte should not be evaluating the scope of the mark; as we've seen, it gets things very wrong in the examples it returned to us. Deloitte should focus on protection, not scope, and the way to do that is to see whether the text is itself registered.
Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:09 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
I agree with J Scott's comments just made to you. We can go back and forth on cases and citations to prove points. I'm not sure the last time you litigated a trademark case, but I can assure you that based on experience a stylized word mark gets protection. The extent of that protection, of course, depends on how strong the word mark might be. If it is a weak descriptive mark, it may only get a narrow and limited scope of protection . A strong mark would obviously get much more protection. I get that you want to eliminate protection for stylized word marks, but that does not accord with reality. So let's try to focus on fixes.
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:59 AM To: Nahitchevansky, Georges Cc: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Except we know your statement about the resulting rights is not true: the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For another example, see Decision of the Federal Commission of Appeals of February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of stylized version provides limited rights).) The stylized version may have a scope broad enough to protect against highly similar stylized versions, but the registration does not provide rights in the word itself.
What you are talking about is the vital distinction between the existence of protection via registration or court decision (relatively simple to confirm) and the scope of the rights in the specific mark (particularized, not suited for decision in the abstract and thus not a good thing for Deloitte to be deciding on its own say-so about what's important in admitting marks to the TMCH). Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
Rebecca:
This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation.
Georges
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09- en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/re presentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09- en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “caba?as” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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I disagree. We are not in cost benefit analysis. I know a contingent in this WG is committed to reopening a variety of issues that are settled. That is not going to happen. We should move on. Our remit is to determine whether the RPMs are functioning as designed and, if not, what adjustments need to be made to rectify this situation. J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/26/17, 8:48 AM, "gnso-rpm-wg-bounces@icann.org on behalf of Rebecca Tushnet" <gnso-rpm-wg-bounces@icann.org on behalf of Rebecca.Tushnet@law.georgetown.edu> wrote: Short answer: yes. Do you think that a registrant whose word mark application was denied because the word was generic, but was allowed to register a stylized form as sufficiently distinctive, should be able to use the TMCH? Because we know Deloitte accepts those now. Longer answer: yes, because of the fundamental choice to require the existence of a registered right in a national system behind the TMCH. The SME or multinational that chooses a fanciful term is entitled to trademark or passing off protection without registration; the TMCH still doesn’t accept that fanciful term on the claimant’s say-so. What we know in looking at a stylized form is: the national authority accepted that particular form, nothing else. As I said, I’m open to exceptions where there is some authority confirming the distinctiveness of the text portion of the mark alone. Let’s talk about data: as the STARBUCKS example earlier in the conversation indicated, registrants like to get the broadest registration they can, registering the word mark first if the word mark is in fact distinctive of their offerings and design variants later. What data on the use of the TMCH by SMEs exists? I couldn’t find it in the audit, and we’ve heard many times that large trademark owners strategically limit what they put in the TMCH, so there’s no reason to think that 1-trademark TMCH users are SMEs. What reason is there to think a SME would be sophisticated enough to use the TMCH but not sophisticated enough to register a fanciful mark in text form, or to use a monitoring service (if it’s a fanciful mark, even a Google search should do)? We are supposedly engaged in a cost-benefit analysis. The benefits of keeping terms that are not in fact owned by a claimant out of the TMCH seem worth the costs of keeping out the registrant who made poor choices, if such exist (which has not yet been shown). Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 10:56 AM, Scott Austin <SAustin@vlplawgroup.com> wrote: > Rebecca: > So a small business or startup that due to lack of counsel or lack of funds, registered its coined, fanciful text mark solely in the form of a stylized font, should be denied TMCH protection and have no notice if an identical string to that text is purchased as a domain name? > > Best regards, > Scott > > > Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP > 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 > Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet > Sent: Wednesday, April 26, 2017 10:34 AM > To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) > > So far as I can tell, we aren't going back and forth on cases and citations; I'm citing cases and you aren't. I believe, and teach, that stylized marks get protection. The question then is what kinds of registrations should be accepted into the TMCH as evidence that the text string--the only thing that can go into the TMCH--is itself protected. Deloitte should not be evaluating the scope of the mark; as we've seen, it gets things very wrong in the examples it returned to us. Deloitte should focus on protection, not scope, and the way to do that is to see whether the text is itself registered. > > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 10:09 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote: >> I agree with J Scott's comments just made to you. We can go back and forth on cases and citations to prove points. I'm not sure the last time you litigated a trademark case, but I can assure you that based on experience a stylized word mark gets protection. The extent of that protection, of course, depends on how strong the word mark might be. If it is a weak descriptive mark, it may only get a narrow and limited scope of protection . A strong mark would obviously get much more protection. I get that you want to eliminate protection for stylized word marks, but that does not accord with reality. So let's try to focus on fixes. >> >> Original Message >> >> From: Rebecca Tushnet >> Sent: Wednesday, April 26, 2017 9:59 AM >> To: Nahitchevansky, Georges >> Cc: icannlists; gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> (Design Mark and Appropriate Balance) >> >> >> Except we know your statement about the resulting rights is not true: >> the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For >> another example, see Decision of the Federal Commission of Appeals of >> February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of >> stylized version provides limited rights).) The stylized version may >> have a scope broad enough to protect against highly similar stylized >> versions, but the registration does not provide rights in the word >> itself. >> >> What you are talking about is the vital distinction between the >> existence of protection via registration or court decision (relatively >> simple to confirm) and the scope of the rights in the specific mark >> (particularized, not suited for decision in the abstract and thus not >> a good thing for Deloitte to be deciding on its own say-so about >> what's important in admitting marks to the TMCH). >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges >> <ghn@kilpatricktownsend.com> wrote: >>> Rebecca: >>> >>> This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation. >>> >>> Georges >>> >>> Original Message >>> From: Rebecca Tushnet >>> Sent: Wednesday, April 26, 2017 9:38 AM >>> To: icannlists >>> Cc: gnso-rpm-wg@icann.org >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>> (Design Mark and Appropriate Balance) >>> >>> >>> How does stylization translate into the DNS? We know that stylized >>> PARENTS and OWN YOUR POWER, to take two examples already discussed, >>> provide no trademark rights in the words "parents" and "own your >>> power." Accepting stylized versions, as Deloitte currently does, >>> thus gives TMCH protection to words as to which there is no >>> underlying trademark protection. "Text" is not an invention by ICANN. >>> Rebecca Tushnet >>> Georgetown Law >>> 703 593 6759 >>> >>> >>> On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: >>>> +1 Brian B. and J. Scott. >>>> >>>> >>>> >>>> The T Markey (stylized) example Kathy gave proves the point I am >>>> trying to make. There is nothing about that mark which would not >>>> translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. >>>> So long as we continue to mash up Stylized marks with other design >>>> and composite marks, we simply don’t have a functional vocabulary to >>>> have this conversation. In other words, we have to use well >>>> established trademark vocabulary to talk about trademarks. We can’t >>>> invent our own language and then evaluate the TMCH rules through the >>>> new language rather than the language it was written in. >>>> >>>> >>>> >>>> Best, >>>> >>>> Paul >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> From: J. Scott Evans [mailto:jsevans@adobe.com] >>>> Sent: Wednesday, April 26, 2017 6:41 AM >>>> To: Beckham, Brian <brian.beckham@wipo.int> >>>> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists >>>> <icannlists@winston.com>; gnso-rpm-wg@icann.org >>>> >>>> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> >>>> >>>> I have several problems with this proposal too. Kathy's conclusory >>>> statement about how he breadth of protection afforded by a composite >>>> or stylized mark is incorrect. Second, and more importantly, I am >>>> bothered by all the hyperbole and accusatory language like "breach", >>>> etc. this language is emotional and charged with negativity. I think >>>> it is inappropriate and not productive. >>>> >>>> >>>> >>>> J. Scott >>>> >>>> Sent from my iPhone >>>> >>>> >>>> On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: >>>> >>>> Kathy, >>>> >>>> >>>> >>>> It’s not clear that the reference to “only marks registered as text” >>>> is necessarily incompatible with the “T. MARKEY” examples provided. >>>> The second, stylized version shows a “mark registered as text”. It >>>> simply happens to be text in a stylized (non-standard) form. >>>> >>>> >>>> >>>> In other words, a mark “registered as text” may not necessarily be >>>> exclusively the same as (in USPTO parlance) “a standard character mark”. >>>> >>>> >>>> >>>> It may therefore not be entirely accurate to suggest that if the >>>> TMCH allowed the second “T. MARKEY” example in stylized form (again, >>>> arguably a mark “registered as text”) versus the standard character >>>> version, it would somehow be “expand[ing] existing trademark rights”. >>>> >>>> >>>> >>>> Brian >>>> >>>> >>>> >>>> From: gnso-rpm-wg-bounces@icann.org >>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>> On Behalf Of Kathy Kleiman >>>> Sent: Wednesday, April 26, 2017 5:12 AM >>>> To: icannlists; gnso-rpm-wg@icann.org >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> >>>> >>>> Hi Paul, >>>> Apologies. I saw your thanks, but not your notes farther down. (For >>>> those of us skimming hundreds of emails, feel free to use use >>>> red/green/stars/asterisks to designate comments...) I caught it on a >>>> re-read... >>>> >>>> Quick note that the purpose of this recommendation is to share what >>>> is clearly before the Working Group: that rules created for the >>>> Trademark Clearinghouse process are not being followed. The goal is >>>> not to delve into motive or intent, but rather compliance and >>>> review. The actions of our TMCH database provider, as an ICANN >>>> contractor, must follow and comply with the rules as set out by the ICANN Community. >>>> >>>> If we want to change the rules, that's fine; we can do it by >>>> consensus. But until that happens, the rules adopted unanimously by >>>> the GNSO Council and ICANN Board are the policy. It's not for third >>>> parties to make their own or follow a different set. >>>> >>>> Paul, I'll respond to what I think are your questions below. My >>>> answers are preceded by => Best, Kathy >>>> >>>> >>>> On 4/19/2017 8:23 PM, icannlists wrote: >>>> >>>> Hi Kathy, >>>> >>>> >>>> >>>> Thank you so much for being willing to put forward a proposal. I >>>> know this is hard work (having put forward one on the GIs myself >>>> this week!) so it is appreciated. >>>> >>>> >>>> >>>> I am getting my initial thoughts on this out to the list on this as >>>> quickly as possible in the hopes that your proposal can be reworked >>>> a bit prior to our next WG call. A few thoughts: >>>> >>>> >>>> >>>> 1. We have learned that Deloitte is accepting the words of design >>>> marks, composite marks, figurative marks, stylized marks, mixed >>>> marks, and any similar combination of characters and design >>>> (collectively “design marks”). >>>> >>>> >>>> >>>> We spent the better half of our last call untangling these >>>> definitions and to see them lumped in together again when these are >>>> not the same things makes the proposal impossible to read for we >>>> trademark folks. It would be great if we could include the clarity we achieved last week. >>>> >>>> ==> The category is meant to be comprehensive and international. >>>> >>>> >>>> >>>> >>>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>>> expressly bar the acceptance of design marks into the TMCH Database. >>>> >>>> >>>> >>>> >>>> This is just inaccurate as written, mostly, but not entirely, by the >>>> way you have defined the terms. For example, I know of no GNSO >>>> Council prohibition that would reject a mark just because it is in a >>>> cursive font instead of plain block font. Can you either fix this >>>> or send us to a link supporting the claim? Perhaps if you unpack >>>> your collective definition, resulting a more precise claim and >>>> provide the link, that might give us something to talk about. As >>>> written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. >>>> >>>> ==> Paul, what I wrote is nearly a direct quote. Please see the >>>> "Expanded Discussion" discussion which follows in my recommendation >>>> directly below the opening section and explains exactly where this >>>> sentence comes from and what it references. I'm happy to paste some >>>> of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: >>>> >>>> “The TC Database should be required to include nationally or >>>> multinationally registered “text mark” trademarks, from all >>>> jurisdictions, (including countries where there is no substantive >>>> review). (The trademarks to be included in the TC are text marks >>>> because “design marks” provide protection for letters and words only >>>> within the context of their design or logo and the STI was under a >>>> mandate not to expand existing trademark rights.) Emphasis added. >>>> Section 4.1, National or Multinational Registered Marks, >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... >>>> en.pdf >>>> >>>> >>>> >>>> ==> The words mean exactly what they say - only marks registered as >>>> text can be registered into the Trademark Clearinghouse; nothing >>>> that "provide[s] protection for letters and words only within the >>>> content of their design or logo." It states why: "the STI was under >>>> a mandate not to expand existing trademark rights." The issue was >>>> the balancing of underlying concept adopted here as part of the >>>> rights of trademark owners and the rights of current and future registrants. Domain names are text based. >>>> >>>> >>>> ==> We certainly meant to differentiate a trademark in a "cursive >>>> font instead of a plain text font." That's the whole purpose for >>>> Section 4.1's text, and the unusual extra step of including the >>>> explanation right next to it. Those of us who worked on this section (including myself and Dr. >>>> Konstantinos Komaitis, whose PhD became the book The Current State >>>> of Domain Name Regulation: Domain Names as Second Class Citizens in >>>> a Mark-Dominated >>>> World) spent a lot of time on this issue. In evaluating it, the STI >>>> Final Report followed the guidance of experts such as those at the >>>> US Trademark Office regarding the different representation of marks: >>>> >>>> [USPTO Representation of Mark] "During the application process for >>>> a standard character mark, the USPTO will depict the mark in a >>>> simple standardized typeface format. However, it is important to >>>> remember that this depiction does not limit or control the format in >>>> which you actually "use" the mark. In other words, the rights >>>> associated with a mark in standard characters reside in the wording >>>> (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. >>>> Therefore, registration of a standard character mark would entitle >>>> you to use and protect the mark in any font style, size, or color. >>>> It is for this reason that a standard character mark can be an >>>> attractive option for many companies." >>>> >>>> "The stylized/design format, on the other hand, is appropriate if >>>> you wish to register word(s) by themselves or combined to form a >>>> phrase of any length and/or letter(s) having a particular stylized >>>> appearance, a mark consisting of a design element, or a combination >>>> of stylized wording and a design. Once filed, any design element >>>> will be assigned a “design code,” as set forth in the Design Search Code Manual." >>>> >>>> "Here is an example of a standard character mark: >>>> >>>> <image001.jpg>" >>>> >>>> "Here are some examples of special form marks: >>>> >>>> <image002.jpg> <image003.jpg> >>>> >>>> <image004.jpg>" >>>> >>>> Quotes above from >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g... >>>> presentation-mark >>>> >>>> The rest of the recommendation follows from these finding. Again, >>>> this not a matter of a good job or a bad job -- no value judgement >>>> is intended. Rather it is a compliance and review issue. Are the >>>> rules followed? The answer is no. >>>> >>>> Best, Kathy >>>> >>>> >>>> >>>> >>>> >>>> >>>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>>> adopted and must revise its practice to follow the ruls adopted by >>>> the GNSO Council and ICANN Board for TMCH operation. >>>> >>>> >>>> >>>> In order to buy this conclusion, the premises have to be correct, >>>> but the premises (as mentioned in 1 and 2) are not close to ready. >>>> I have to suspend consideration of the conclusion contained in this >>>> paragraph due to the faulty syllogism we have in front of us. Maybe >>>> if you make the edits in >>>> 1 and 2 suggested, we can then examine whether or not your paragraph >>>> 3 conclusion is correct, partially correct, or incorrect. >>>> >>>> >>>> >>>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>>> and present the GNSO Council and ICANN Board with an expanded set of >>>> rules that Deloitte, or any future TMCH Provider, must follow. >>>> >>>> I guess I don’t understand this. Are you saying that if Deloitte is >>>> not in breach by letting in marks written in cursive fonts, then the >>>> WG can by Consensus propose changes? I’m not sure that the two things are connected. >>>> >>>> >>>> >>>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>>> Further details, information and explanation below. >>>> >>>> >>>> >>>> Same response as #3 above. Also, this really confused paragraph 4 >>>> for me further. It seemed like paragraph 4 indicated that if >>>> paragraph 3 were not accurate, consensus driven solutions would be >>>> possible (again not sure those two things are connected) but then >>>> you go on to say in 5 that conclusions in >>>> 3 are a foregone conclusion (thus obviating any perceivable need for >>>> paragraph 4). >>>> >>>> >>>> >>>> I’m sure other thoughts will come to me as we dig in to either this >>>> version or an amended version, but these were the issues that jumped >>>> out at me right away. If you could respond to the full list on this >>>> as soon as practical, I would appreciate it. >>>> >>>> >>>> >>>> Best, >>>> >>>> Paul >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> From: gnso-rpm-wg-bounces@icann.org >>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>> On Behalf Of Kathy Kleiman >>>> Sent: Wednesday, April 19, 2017 6:18 PM >>>> To: gnso-rpm-wg@icann.org >>>> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> >>>> >>>> Hi All, >>>> >>>> As promised, I am resubmitting a new version of my earlier recommendation. >>>> It now addresses issues from Question #7 (Design Marks) and #16 >>>> (Appropriate Balance). I submit this recommendation to the Working >>>> Group in my capacity as a member and not as a co-chair. >>>> >>>> Text below and also attached as a PDF. >>>> >>>> Best, Kathy >>>> >>>> ------------------------------------------------------ >>>> >>>> >>>> >>>> Design Mark Recommendation for Working Group - for Question #7 and >>>> Question >>>> #16 of TMCH Charter Questions (#7, How are design marks currently >>>> handled by the TMCH provider?; and #16, Does the scope of the TMCH >>>> and the protections mechanisms which flow from it reflect the >>>> appropriate balance between the rights of trademark holders and the >>>> rights of non-trademark registrants?) >>>> >>>> >>>> >>>> We (the RPM Working Group) have found a problem: >>>> >>>> 1. We have learned that Deloitte is accepting the words of design >>>> marks, composite marks, figurative marks, stylized marks, mixed >>>> marks, and any similar combination of characters and design >>>> (collectively “design marks”). >>>> >>>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>>> expressly bar the acceptance of design marks into the TMCH Database. >>>> >>>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>>> adopted and must revise its practice to follow the rules adopted by >>>> the GNSO Council and ICANN Board for TMCH operation. >>>> >>>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>>> and present the GNSO Council and ICANN Board with an expanded set of >>>> rules that Deloitte, or any future TMCH Provider, must follow. >>>> >>>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>>> Further details, information and explanation below. >>>> >>>> >>>> >>>> Expanded Discussion >>>> >>>> >>>> >>>> A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & >>>> ICANN Board >>>> >>>> The GNSO Council & ICANN Board-adopted rules (based on the STI Final >>>> Report and IRT Recommendations) that were very clear about the type >>>> of mark to be accepted by the Trademark Clearinghouse: >>>> >>>> “4.1 National or Multinational Registered Marks The TC Database >>>> should be required to include nationally or multinationally registered “text mark” >>>> trademarks, from all jurisdictions, (including countries where there >>>> is no substantive review).” >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... >>>> en.pdf >>>> >>>> >>>> >>>> Further, the adopted rules themselves are very clear about the Harm >>>> of putting design marks into the TMCH Database: >>>> >>>> “[Also 4.1] (The trademarks to be included in the TC are text marks >>>> because “design marks” provide protection for letters and words only >>>> within the context of their design or logo and the STI was under a >>>> mandate not to expand existing trademark rights.) >>>> >>>> >>>> >>>> The Applicant Guidebook adopted the same requirements, as it must >>>> and should, namely: >>>> >>>> “3.2:Standards for inclusion in the Clearinghouse >>>> >>>> 3.2.1 Nationally or regionally registered word marks from all >>>> jurisdictions” >>>> >>>> >>>> >>>> Nonetheless, and in violation of the express rules adopted by the >>>> GNSO Council and ICANN Board and placed into the Applicant >>>> Guidebook, TMCH Provider Deloitte is accepting into the TMCH >>>> database words and letters it has extracted from composite marks, >>>> figurative marks, stylized marks, composite marks and mixed marks. >>>> Deloitte is removing words and letters from designs, patterns, >>>> special lettering and other patterns, styles, colors, and logos >>>> which were integral to the trademark as accepted by the national or regional trademark office. >>>> >>>> >>>> >>>> B. Harm from the Current Form >>>> >>>> The harm from this acceptance is that it violates the rules under >>>> which Deloitte is allowed to operate. It creates a situation in >>>> which Deloitte is operating under its own authority, not that of >>>> ICANN and the ICANN Community. Such action, in violation of rules >>>> clearly adopted by the GNSO Council and ICANN Board and written into >>>> the New gTLD Applicant Guidebook, gives too much power to Deloitte >>>> -- a contractor of ICANN, to make its own rules and adopt its own >>>> protocol without regard to the scope, breadth and reach of the governing rules. >>>> >>>> >>>> >>>> It is the type of misconduct anticipated by the GNSO Council and >>>> ICANN Board, and why the rules demand that ICANN hold a close >>>> relationship with the TMCH Provider by contract to allow close >>>> oversight and correction of misinterpretation or failure to follow >>>> the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). >>>> >>>> >>>> >>>> C. Presumption of Trademark Validity Does Not Extend to Non-Stylized >>>> Version of the Registration Marks >>>> >>>> Further, words and letters within a composite marks, figurative >>>> marks, stylized marks, and mixed marks are protected within the >>>> scope of the designs, logos, lettering, patterns, colors, etc. >>>> That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. >>>> >>>> >>>> >>>> In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. >>>> D2012-1064, the Panel found: >>>> >>>> “Complainant has shown that it owns two trademark registrations in >>>> Argentina. The Panel notes that both registrations are for “mixed” >>>> marks, where each consists of a composition made of words and >>>> graphic elements, such as stylized fonts, a roof of a house, etc. >>>> See details of the registrations with drawings at section 4 above. >>>> >>>> >>>> >>>> “As explained on the INPI website, “[m] ixed (marks) are those >>>> constituted by the combination of word elements and figurative >>>> elements together, or of word elements in stylized manner.” >>>> Accordingly, the protection granted by the registration of a mixed >>>> mark is for the composition as a whole, and not for any of its >>>> constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “caba?as” >>>> (standing alone), based on these mixed trademark registrations.” >>>> >>>> >>>> >>>> Similarly, in the US, federal courts have found that the presumption >>>> of trademark validity provided by registration does not extend to >>>> the non-stylized versions of the registration marks. See e.g., >>>> >>>> Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. >>>> 2005) (registration of stylized mark didn’t extend protection to >>>> nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, >>>> (S.D.N.Y. 2015) (dealing with special form mark whose words were >>>> unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. >>>> >>>> Cir. 2016). >>>> >>>> >>>> >>>> D. Beyond the Scope of the TMCH Protection that the GNSO Council and >>>> ICANN Board Agreed to Provide Trademark Owners. >>>> >>>> >>>> >>>> As has been pointed out in our Working Group calls, the STI >>>> evaluations and IRT evaluations were long and hard and both groups >>>> decided in their recommendations to protect only the word mark – the >>>> text itself when the text was registered by itself. Neither allowed >>>> for the extraction of a word or letters from amidst a pattern, >>>> style, composite or mixed marks; neither created a process for doing >>>> so; neither accorded the discretion to the TMCH Provider (now >>>> Deloitte) to adopt any processes to handle this process independently. >>>> >>>> >>>> >>>> The STI clearly elaborated its reasoning: that extracting a word or >>>> letters from a larger design, gives too many rights to one trademark >>>> owner over others using the same words or letters. As clearly >>>> elaborated in the STI Recommendations and adopted by the GNSO >>>> Council and ICANN Board (unanimously), it would be an unfair >>>> advantage for one trademark owner over others using the same words or letters. Specifically: >>>> >>>> “(The trademarks to be included in the TC are text marks because >>>> “design marks” provide protection for letters and words only within >>>> the context of their design or logo and the STI was under a mandate >>>> not to expand existing trademark rights.)” >>>> >>>> >>>> >>>> To the extent that Deloitte as a TMCH Provider is operating within >>>> its mandate, and the limits of the rules and contract imposed on it, >>>> it may not take steps to expand existing trademark rights. The >>>> rights, as granted by national and regional trademark offices are >>>> rights that expressly include the patterns, special lettering and >>>> other styles, colors, and logos that are a part of the trademark >>>> granted by the Trademark Office and certification provided by each >>>> Trademark Office and presented to the Trademark Clearinghouse. >>>> >>>> >>>> >>>> II. Breach and Correction >>>> >>>> >>>> >>>> Accordingly, Deloitte is in breach of the rules that ICANN adopted >>>> and must revise its practice to go to follow the rules adopted by >>>> the GNSO Council and ICANN Board. Deloitte’s extraction of words and >>>> letters from patterns, special lettering, styles, colors and logos, >>>> as outlined above, violates the rules adopted by the GNSO Council >>>> and ICANN Board for the Trademark Clearinghouse operation. >>>> >>>> >>>> >>>> Bringing Deloitte’s operation of the TMCH – and its terms and >>>> requirements - rules does not require a consensus of the Working >>>> Group. Rather, it is a fundamental aspect of our job as a Working >>>> Group, as laid out by the GNSO Council in our charter, to review the >>>> operation of the Trademark Clearinghouse in compliance with its >>>> rules. As Deloitte is not operating in compliance with its rules in >>>> this area, it is in breach and must come into compliance. The >>>> excellent work of the Working Group in this area, and finding this >>>> problem through hard work and research, should be sufficient for >>>> ICANN Staff to act in enforcement of its contract and our rules. >>>> Point it out clearly and directly to Deloitte, to ICANN Board and >>>> Staff, and to the ICANN Community is one small additional step the Working Group might take. >>>> >>>> >>>> >>>> Alternatively, the Working Group by consensus may CHANGE the rules >>>> and present to the GNSO Council and ICANN Board a new set of >>>> standards by which Deloitte (or any future TMCH provider) may use to >>>> accept the design and stylized marks currently barred by the rules. >>>> But such a step would require a change to the ICANN rules under >>>> which the Trademark Clearinghouse operate, and then acceptance by >>>> the GNSO Council and ICANN Board. ICANN contractors do not have the >>>> unilateral power to make their own rules or to change the rule that are given them. >>>> >>>> >>>> >>>> ________________________________ >>>> >>>> The contents of this message may be privileged and confidential. If >>>> this message has been received in error, please delete it without reading it. >>>> Your receipt of this message is not intended to waive any applicable >>>> privilege. Please do not disseminate this message without the >>>> permission of the author. 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Right, and Kathy has made the very persuasive case that they are not being implemented as designed, and thus not functioning as designed. My review of the Deloitte guidelines compared to what came from ICANN--including from the business constituency--led me to the same conclusion. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 11:57 AM, J. Scott Evans <jsevans@adobe.com> wrote:
I disagree. We are not in cost benefit analysis. I know a contingent in this WG is committed to reopening a variety of issues that are settled. That is not going to happen. We should move on. Our remit is to determine whether the RPMs are functioning as designed and, if not, what adjustments need to be made to rectify this situation.
J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com
On 4/26/17, 8:48 AM, "gnso-rpm-wg-bounces@icann.org on behalf of Rebecca Tushnet" <gnso-rpm-wg-bounces@icann.org on behalf of Rebecca.Tushnet@law.georgetown.edu> wrote:
Short answer: yes. Do you think that a registrant whose word mark application was denied because the word was generic, but was allowed to register a stylized form as sufficiently distinctive, should be able to use the TMCH? Because we know Deloitte accepts those now.
Longer answer: yes, because of the fundamental choice to require the existence of a registered right in a national system behind the TMCH. The SME or multinational that chooses a fanciful term is entitled to trademark or passing off protection without registration; the TMCH still doesn’t accept that fanciful term on the claimant’s say-so. What we know in looking at a stylized form is: the national authority accepted that particular form, nothing else. As I said, I’m open to exceptions where there is some authority confirming the distinctiveness of the text portion of the mark alone.
Let’s talk about data: as the STARBUCKS example earlier in the conversation indicated, registrants like to get the broadest registration they can, registering the word mark first if the word mark is in fact distinctive of their offerings and design variants later. What data on the use of the TMCH by SMEs exists? I couldn’t find it in the audit, and we’ve heard many times that large trademark owners strategically limit what they put in the TMCH, so there’s no reason to think that 1-trademark TMCH users are SMEs. What reason is there to think a SME would be sophisticated enough to use the TMCH but not sophisticated enough to register a fanciful mark in text form, or to use a monitoring service (if it’s a fanciful mark, even a Google search should do)?
We are supposedly engaged in a cost-benefit analysis. The benefits of keeping terms that are not in fact owned by a claimant out of the TMCH seem worth the costs of keeping out the registrant who made poor choices, if such exist (which has not yet been shown). Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 10:56 AM, Scott Austin <SAustin@vlplawgroup.com> wrote: > Rebecca: > So a small business or startup that due to lack of counsel or lack of funds, registered its coined, fanciful text mark solely in the form of a stylized font, should be denied TMCH protection and have no notice if an identical string to that text is purchased as a domain name? > > Best regards, > Scott > > > Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP > 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 > Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet > Sent: Wednesday, April 26, 2017 10:34 AM > To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> > Cc: gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) > > So far as I can tell, we aren't going back and forth on cases and citations; I'm citing cases and you aren't. I believe, and teach, that stylized marks get protection. The question then is what kinds of registrations should be accepted into the TMCH as evidence that the text string--the only thing that can go into the TMCH--is itself protected. Deloitte should not be evaluating the scope of the mark; as we've seen, it gets things very wrong in the examples it returned to us. Deloitte should focus on protection, not scope, and the way to do that is to see whether the text is itself registered. > > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 10:09 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote: >> I agree with J Scott's comments just made to you. We can go back and forth on cases and citations to prove points. I'm not sure the last time you litigated a trademark case, but I can assure you that based on experience a stylized word mark gets protection. The extent of that protection, of course, depends on how strong the word mark might be. If it is a weak descriptive mark, it may only get a narrow and limited scope of protection . A strong mark would obviously get much more protection. I get that you want to eliminate protection for stylized word marks, but that does not accord with reality. So let's try to focus on fixes. >> >> Original Message >> >> From: Rebecca Tushnet >> Sent: Wednesday, April 26, 2017 9:59 AM >> To: Nahitchevansky, Georges >> Cc: icannlists; gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >> (Design Mark and Appropriate Balance) >> >> >> Except we know your statement about the resulting rights is not true: >> the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For >> another example, see Decision of the Federal Commission of Appeals of >> February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of >> stylized version provides limited rights).) The stylized version may >> have a scope broad enough to protect against highly similar stylized >> versions, but the registration does not provide rights in the word >> itself. >> >> What you are talking about is the vital distinction between the >> existence of protection via registration or court decision (relatively >> simple to confirm) and the scope of the rights in the specific mark >> (particularized, not suited for decision in the abstract and thus not >> a good thing for Deloitte to be deciding on its own say-so about >> what's important in admitting marks to the TMCH). >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges >> <ghn@kilpatricktownsend.com> wrote: >>> Rebecca: >>> >>> This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation. >>> >>> Georges >>> >>> Original Message >>> From: Rebecca Tushnet >>> Sent: Wednesday, April 26, 2017 9:38 AM >>> To: icannlists >>> Cc: gnso-rpm-wg@icann.org >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>> (Design Mark and Appropriate Balance) >>> >>> >>> How does stylization translate into the DNS? We know that stylized >>> PARENTS and OWN YOUR POWER, to take two examples already discussed, >>> provide no trademark rights in the words "parents" and "own your >>> power." Accepting stylized versions, as Deloitte currently does, >>> thus gives TMCH protection to words as to which there is no >>> underlying trademark protection. "Text" is not an invention by ICANN. >>> Rebecca Tushnet >>> Georgetown Law >>> 703 593 6759 >>> >>> >>> On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: >>>> +1 Brian B. and J. Scott. >>>> >>>> >>>> >>>> The T Markey (stylized) example Kathy gave proves the point I am >>>> trying to make. There is nothing about that mark which would not >>>> translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. >>>> So long as we continue to mash up Stylized marks with other design >>>> and composite marks, we simply don’t have a functional vocabulary to >>>> have this conversation. In other words, we have to use well >>>> established trademark vocabulary to talk about trademarks. We can’t >>>> invent our own language and then evaluate the TMCH rules through the >>>> new language rather than the language it was written in. >>>> >>>> >>>> >>>> Best, >>>> >>>> Paul >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> From: J. Scott Evans [mailto:jsevans@adobe.com] >>>> Sent: Wednesday, April 26, 2017 6:41 AM >>>> To: Beckham, Brian <brian.beckham@wipo.int> >>>> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists >>>> <icannlists@winston.com>; gnso-rpm-wg@icann.org >>>> >>>> >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> >>>> >>>> I have several problems with this proposal too. Kathy's conclusory >>>> statement about how he breadth of protection afforded by a composite >>>> or stylized mark is incorrect. Second, and more importantly, I am >>>> bothered by all the hyperbole and accusatory language like "breach", >>>> etc. this language is emotional and charged with negativity. I think >>>> it is inappropriate and not productive. >>>> >>>> >>>> >>>> J. Scott >>>> >>>> Sent from my iPhone >>>> >>>> >>>> On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: >>>> >>>> Kathy, >>>> >>>> >>>> >>>> It’s not clear that the reference to “only marks registered as text” >>>> is necessarily incompatible with the “T. MARKEY” examples provided. >>>> The second, stylized version shows a “mark registered as text”. It >>>> simply happens to be text in a stylized (non-standard) form. >>>> >>>> >>>> >>>> In other words, a mark “registered as text” may not necessarily be >>>> exclusively the same as (in USPTO parlance) “a standard character mark”. >>>> >>>> >>>> >>>> It may therefore not be entirely accurate to suggest that if the >>>> TMCH allowed the second “T. MARKEY” example in stylized form (again, >>>> arguably a mark “registered as text”) versus the standard character >>>> version, it would somehow be “expand[ing] existing trademark rights”. >>>> >>>> >>>> >>>> Brian >>>> >>>> >>>> >>>> From: gnso-rpm-wg-bounces@icann.org >>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>> On Behalf Of Kathy Kleiman >>>> Sent: Wednesday, April 26, 2017 5:12 AM >>>> To: icannlists; gnso-rpm-wg@icann.org >>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> >>>> >>>> Hi Paul, >>>> Apologies. I saw your thanks, but not your notes farther down. (For >>>> those of us skimming hundreds of emails, feel free to use use >>>> red/green/stars/asterisks to designate comments...) I caught it on a >>>> re-read... >>>> >>>> Quick note that the purpose of this recommendation is to share what >>>> is clearly before the Working Group: that rules created for the >>>> Trademark Clearinghouse process are not being followed. The goal is >>>> not to delve into motive or intent, but rather compliance and >>>> review. The actions of our TMCH database provider, as an ICANN >>>> contractor, must follow and comply with the rules as set out by the ICANN Community. >>>> >>>> If we want to change the rules, that's fine; we can do it by >>>> consensus. But until that happens, the rules adopted unanimously by >>>> the GNSO Council and ICANN Board are the policy. It's not for third >>>> parties to make their own or follow a different set. >>>> >>>> Paul, I'll respond to what I think are your questions below. My >>>> answers are preceded by => Best, Kathy >>>> >>>> >>>> On 4/19/2017 8:23 PM, icannlists wrote: >>>> >>>> Hi Kathy, >>>> >>>> >>>> >>>> Thank you so much for being willing to put forward a proposal. I >>>> know this is hard work (having put forward one on the GIs myself >>>> this week!) so it is appreciated. >>>> >>>> >>>> >>>> I am getting my initial thoughts on this out to the list on this as >>>> quickly as possible in the hopes that your proposal can be reworked >>>> a bit prior to our next WG call. A few thoughts: >>>> >>>> >>>> >>>> 1. We have learned that Deloitte is accepting the words of design >>>> marks, composite marks, figurative marks, stylized marks, mixed >>>> marks, and any similar combination of characters and design >>>> (collectively “design marks”). >>>> >>>> >>>> >>>> We spent the better half of our last call untangling these >>>> definitions and to see them lumped in together again when these are >>>> not the same things makes the proposal impossible to read for we >>>> trademark folks. It would be great if we could include the clarity we achieved last week. >>>> >>>> ==> The category is meant to be comprehensive and international. >>>> >>>> >>>> >>>> >>>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>>> expressly bar the acceptance of design marks into the TMCH Database. >>>> >>>> >>>> >>>> >>>> This is just inaccurate as written, mostly, but not entirely, by the >>>> way you have defined the terms. For example, I know of no GNSO >>>> Council prohibition that would reject a mark just because it is in a >>>> cursive font instead of plain block font. Can you either fix this >>>> or send us to a link supporting the claim? Perhaps if you unpack >>>> your collective definition, resulting a more precise claim and >>>> provide the link, that might give us something to talk about. As >>>> written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. >>>> >>>> ==> Paul, what I wrote is nearly a direct quote. Please see the >>>> "Expanded Discussion" discussion which follows in my recommendation >>>> directly below the opening section and explains exactly where this >>>> sentence comes from and what it references. I'm happy to paste some >>>> of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: >>>> >>>> “The TC Database should be required to include nationally or >>>> multinationally registered “text mark” trademarks, from all >>>> jurisdictions, (including countries where there is no substantive >>>> review). (The trademarks to be included in the TC are text marks >>>> because “design marks” provide protection for letters and words only >>>> within the context of their design or logo and the STI was under a >>>> mandate not to expand existing trademark rights.) Emphasis added. >>>> Section 4.1, National or Multinational Registered Marks, >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... >>>> en.pdf >>>> >>>> >>>> >>>> ==> The words mean exactly what they say - only marks registered as >>>> text can be registered into the Trademark Clearinghouse; nothing >>>> that "provide[s] protection for letters and words only within the >>>> content of their design or logo." It states why: "the STI was under >>>> a mandate not to expand existing trademark rights." The issue was >>>> the balancing of underlying concept adopted here as part of the >>>> rights of trademark owners and the rights of current and future registrants. Domain names are text based. >>>> >>>> >>>> ==> We certainly meant to differentiate a trademark in a "cursive >>>> font instead of a plain text font." That's the whole purpose for >>>> Section 4.1's text, and the unusual extra step of including the >>>> explanation right next to it. Those of us who worked on this section (including myself and Dr. >>>> Konstantinos Komaitis, whose PhD became the book The Current State >>>> of Domain Name Regulation: Domain Names as Second Class Citizens in >>>> a Mark-Dominated >>>> World) spent a lot of time on this issue. In evaluating it, the STI >>>> Final Report followed the guidance of experts such as those at the >>>> US Trademark Office regarding the different representation of marks: >>>> >>>> [USPTO Representation of Mark] "During the application process for >>>> a standard character mark, the USPTO will depict the mark in a >>>> simple standardized typeface format. However, it is important to >>>> remember that this depiction does not limit or control the format in >>>> which you actually "use" the mark. In other words, the rights >>>> associated with a mark in standard characters reside in the wording >>>> (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. >>>> Therefore, registration of a standard character mark would entitle >>>> you to use and protect the mark in any font style, size, or color. >>>> It is for this reason that a standard character mark can be an >>>> attractive option for many companies." >>>> >>>> "The stylized/design format, on the other hand, is appropriate if >>>> you wish to register word(s) by themselves or combined to form a >>>> phrase of any length and/or letter(s) having a particular stylized >>>> appearance, a mark consisting of a design element, or a combination >>>> of stylized wording and a design. Once filed, any design element >>>> will be assigned a “design code,” as set forth in the Design Search Code Manual." >>>> >>>> "Here is an example of a standard character mark: >>>> >>>> <image001.jpg>" >>>> >>>> "Here are some examples of special form marks: >>>> >>>> <image002.jpg> <image003.jpg> >>>> >>>> <image004.jpg>" >>>> >>>> Quotes above from >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g... >>>> presentation-mark >>>> >>>> The rest of the recommendation follows from these finding. Again, >>>> this not a matter of a good job or a bad job -- no value judgement >>>> is intended. Rather it is a compliance and review issue. Are the >>>> rules followed? The answer is no. >>>> >>>> Best, Kathy >>>> >>>> >>>> >>>> >>>> >>>> >>>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>>> adopted and must revise its practice to follow the ruls adopted by >>>> the GNSO Council and ICANN Board for TMCH operation. >>>> >>>> >>>> >>>> In order to buy this conclusion, the premises have to be correct, >>>> but the premises (as mentioned in 1 and 2) are not close to ready. >>>> I have to suspend consideration of the conclusion contained in this >>>> paragraph due to the faulty syllogism we have in front of us. Maybe >>>> if you make the edits in >>>> 1 and 2 suggested, we can then examine whether or not your paragraph >>>> 3 conclusion is correct, partially correct, or incorrect. >>>> >>>> >>>> >>>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>>> and present the GNSO Council and ICANN Board with an expanded set of >>>> rules that Deloitte, or any future TMCH Provider, must follow. >>>> >>>> I guess I don’t understand this. Are you saying that if Deloitte is >>>> not in breach by letting in marks written in cursive fonts, then the >>>> WG can by Consensus propose changes? I’m not sure that the two things are connected. >>>> >>>> >>>> >>>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>>> Further details, information and explanation below. >>>> >>>> >>>> >>>> Same response as #3 above. Also, this really confused paragraph 4 >>>> for me further. It seemed like paragraph 4 indicated that if >>>> paragraph 3 were not accurate, consensus driven solutions would be >>>> possible (again not sure those two things are connected) but then >>>> you go on to say in 5 that conclusions in >>>> 3 are a foregone conclusion (thus obviating any perceivable need for >>>> paragraph 4). >>>> >>>> >>>> >>>> I’m sure other thoughts will come to me as we dig in to either this >>>> version or an amended version, but these were the issues that jumped >>>> out at me right away. If you could respond to the full list on this >>>> as soon as practical, I would appreciate it. >>>> >>>> >>>> >>>> Best, >>>> >>>> Paul >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> From: gnso-rpm-wg-bounces@icann.org >>>> [mailto:gnso-rpm-wg-bounces@icann.org] >>>> On Behalf Of Kathy Kleiman >>>> Sent: Wednesday, April 19, 2017 6:18 PM >>>> To: gnso-rpm-wg@icann.org >>>> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 >>>> (Design Mark and Appropriate Balance) >>>> >>>> >>>> >>>> Hi All, >>>> >>>> As promised, I am resubmitting a new version of my earlier recommendation. >>>> It now addresses issues from Question #7 (Design Marks) and #16 >>>> (Appropriate Balance). I submit this recommendation to the Working >>>> Group in my capacity as a member and not as a co-chair. >>>> >>>> Text below and also attached as a PDF. >>>> >>>> Best, Kathy >>>> >>>> ------------------------------------------------------ >>>> >>>> >>>> >>>> Design Mark Recommendation for Working Group - for Question #7 and >>>> Question >>>> #16 of TMCH Charter Questions (#7, How are design marks currently >>>> handled by the TMCH provider?; and #16, Does the scope of the TMCH >>>> and the protections mechanisms which flow from it reflect the >>>> appropriate balance between the rights of trademark holders and the >>>> rights of non-trademark registrants?) >>>> >>>> >>>> >>>> We (the RPM Working Group) have found a problem: >>>> >>>> 1. We have learned that Deloitte is accepting the words of design >>>> marks, composite marks, figurative marks, stylized marks, mixed >>>> marks, and any similar combination of characters and design >>>> (collectively “design marks”). >>>> >>>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>>> expressly bar the acceptance of design marks into the TMCH Database. >>>> >>>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>>> adopted and must revise its practice to follow the rules adopted by >>>> the GNSO Council and ICANN Board for TMCH operation. >>>> >>>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>>> and present the GNSO Council and ICANN Board with an expanded set of >>>> rules that Deloitte, or any future TMCH Provider, must follow. >>>> >>>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>>> Further details, information and explanation below. >>>> >>>> >>>> >>>> Expanded Discussion >>>> >>>> >>>> >>>> A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & >>>> ICANN Board >>>> >>>> The GNSO Council & ICANN Board-adopted rules (based on the STI Final >>>> Report and IRT Recommendations) that were very clear about the type >>>> of mark to be accepted by the Trademark Clearinghouse: >>>> >>>> “4.1 National or Multinational Registered Marks The TC Database >>>> should be required to include nationally or multinationally registered “text mark” >>>> trademarks, from all jurisdictions, (including countries where there >>>> is no substantive review).” >>>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... >>>> en.pdf >>>> >>>> >>>> >>>> Further, the adopted rules themselves are very clear about the Harm >>>> of putting design marks into the TMCH Database: >>>> >>>> “[Also 4.1] (The trademarks to be included in the TC are text marks >>>> because “design marks” provide protection for letters and words only >>>> within the context of their design or logo and the STI was under a >>>> mandate not to expand existing trademark rights.) >>>> >>>> >>>> >>>> The Applicant Guidebook adopted the same requirements, as it must >>>> and should, namely: >>>> >>>> “3.2:Standards for inclusion in the Clearinghouse >>>> >>>> 3.2.1 Nationally or regionally registered word marks from all >>>> jurisdictions” >>>> >>>> >>>> >>>> Nonetheless, and in violation of the express rules adopted by the >>>> GNSO Council and ICANN Board and placed into the Applicant >>>> Guidebook, TMCH Provider Deloitte is accepting into the TMCH >>>> database words and letters it has extracted from composite marks, >>>> figurative marks, stylized marks, composite marks and mixed marks. >>>> Deloitte is removing words and letters from designs, patterns, >>>> special lettering and other patterns, styles, colors, and logos >>>> which were integral to the trademark as accepted by the national or regional trademark office. >>>> >>>> >>>> >>>> B. Harm from the Current Form >>>> >>>> The harm from this acceptance is that it violates the rules under >>>> which Deloitte is allowed to operate. It creates a situation in >>>> which Deloitte is operating under its own authority, not that of >>>> ICANN and the ICANN Community. Such action, in violation of rules >>>> clearly adopted by the GNSO Council and ICANN Board and written into >>>> the New gTLD Applicant Guidebook, gives too much power to Deloitte >>>> -- a contractor of ICANN, to make its own rules and adopt its own >>>> protocol without regard to the scope, breadth and reach of the governing rules. >>>> >>>> >>>> >>>> It is the type of misconduct anticipated by the GNSO Council and >>>> ICANN Board, and why the rules demand that ICANN hold a close >>>> relationship with the TMCH Provider by contract to allow close >>>> oversight and correction of misinterpretation or failure to follow >>>> the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). >>>> >>>> >>>> >>>> C. Presumption of Trademark Validity Does Not Extend to Non-Stylized >>>> Version of the Registration Marks >>>> >>>> Further, words and letters within a composite marks, figurative >>>> marks, stylized marks, and mixed marks are protected within the >>>> scope of the designs, logos, lettering, patterns, colors, etc. >>>> That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. >>>> >>>> >>>> >>>> In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. >>>> D2012-1064, the Panel found: >>>> >>>> “Complainant has shown that it owns two trademark registrations in >>>> Argentina. The Panel notes that both registrations are for “mixed” >>>> marks, where each consists of a composition made of words and >>>> graphic elements, such as stylized fonts, a roof of a house, etc. >>>> See details of the registrations with drawings at section 4 above. >>>> >>>> >>>> >>>> “As explained on the INPI website, “[m] ixed (marks) are those >>>> constituted by the combination of word elements and figurative >>>> elements together, or of word elements in stylized manner.” >>>> Accordingly, the protection granted by the registration of a mixed >>>> mark is for the composition as a whole, and not for any of its >>>> constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “caba?as” >>>> (standing alone), based on these mixed trademark registrations.” >>>> >>>> >>>> >>>> Similarly, in the US, federal courts have found that the presumption >>>> of trademark validity provided by registration does not extend to >>>> the non-stylized versions of the registration marks. See e.g., >>>> >>>> Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. >>>> 2005) (registration of stylized mark didn’t extend protection to >>>> nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, >>>> (S.D.N.Y. 2015) (dealing with special form mark whose words were >>>> unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. >>>> >>>> Cir. 2016). >>>> >>>> >>>> >>>> D. Beyond the Scope of the TMCH Protection that the GNSO Council and >>>> ICANN Board Agreed to Provide Trademark Owners. >>>> >>>> >>>> >>>> As has been pointed out in our Working Group calls, the STI >>>> evaluations and IRT evaluations were long and hard and both groups >>>> decided in their recommendations to protect only the word mark – the >>>> text itself when the text was registered by itself. Neither allowed >>>> for the extraction of a word or letters from amidst a pattern, >>>> style, composite or mixed marks; neither created a process for doing >>>> so; neither accorded the discretion to the TMCH Provider (now >>>> Deloitte) to adopt any processes to handle this process independently. >>>> >>>> >>>> >>>> The STI clearly elaborated its reasoning: that extracting a word or >>>> letters from a larger design, gives too many rights to one trademark >>>> owner over others using the same words or letters. As clearly >>>> elaborated in the STI Recommendations and adopted by the GNSO >>>> Council and ICANN Board (unanimously), it would be an unfair >>>> advantage for one trademark owner over others using the same words or letters. Specifically: >>>> >>>> “(The trademarks to be included in the TC are text marks because >>>> “design marks” provide protection for letters and words only within >>>> the context of their design or logo and the STI was under a mandate >>>> not to expand existing trademark rights.)” >>>> >>>> >>>> >>>> To the extent that Deloitte as a TMCH Provider is operating within >>>> its mandate, and the limits of the rules and contract imposed on it, >>>> it may not take steps to expand existing trademark rights. The >>>> rights, as granted by national and regional trademark offices are >>>> rights that expressly include the patterns, special lettering and >>>> other styles, colors, and logos that are a part of the trademark >>>> granted by the Trademark Office and certification provided by each >>>> Trademark Office and presented to the Trademark Clearinghouse. >>>> >>>> >>>> >>>> II. Breach and Correction >>>> >>>> >>>> >>>> Accordingly, Deloitte is in breach of the rules that ICANN adopted >>>> and must revise its practice to go to follow the rules adopted by >>>> the GNSO Council and ICANN Board. Deloitte’s extraction of words and >>>> letters from patterns, special lettering, styles, colors and logos, >>>> as outlined above, violates the rules adopted by the GNSO Council >>>> and ICANN Board for the Trademark Clearinghouse operation. >>>> >>>> >>>> >>>> Bringing Deloitte’s operation of the TMCH – and its terms and >>>> requirements - rules does not require a consensus of the Working >>>> Group. Rather, it is a fundamental aspect of our job as a Working >>>> Group, as laid out by the GNSO Council in our charter, to review the >>>> operation of the Trademark Clearinghouse in compliance with its >>>> rules. As Deloitte is not operating in compliance with its rules in >>>> this area, it is in breach and must come into compliance. The >>>> excellent work of the Working Group in this area, and finding this >>>> problem through hard work and research, should be sufficient for >>>> ICANN Staff to act in enforcement of its contract and our rules. >>>> Point it out clearly and directly to Deloitte, to ICANN Board and >>>> Staff, and to the ICANN Community is one small additional step the Working Group might take. >>>> >>>> >>>> >>>> Alternatively, the Working Group by consensus may CHANGE the rules >>>> and present to the GNSO Council and ICANN Board a new set of >>>> standards by which Deloitte (or any future TMCH provider) may use to >>>> accept the design and stylized marks currently barred by the rules. >>>> But such a step would require a change to the ICANN rules under >>>> which the Trademark Clearinghouse operate, and then acceptance by >>>> the GNSO Council and ICANN Board. 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Hi folks, On Wed, Apr 26, 2017 at 11:57 AM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org> wrote:
I disagree. We are not in cost benefit analysis. I know a contingent in this WG is committed to reopening a variety of issues that are settled. That is not going to happen. We should move on. Our remit is to determine whether the RPMs are functioning as designed and, if not, what adjustments need to be made to rectify this situation.
A broken clock is right two times a day, mon ami. But this is not one of those times.*** According to our TMCH charter questions: https://community.icann.org/download/attachments/58729944/Clean%20-%20TMCH%2... "Are the costs and benefits of the TMCH reasonably proportionate amongst rights holders, registries, registrars, registrants, other members of the community and ICANN?" and "Does the scope of the TMCH and the protection mechanisms which flow from it, reflect the appropriate balance between the rights of trademark holders and the rights of non- trademark registrants?" Answering both charter questions requires us to analyze costs and benefits. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ P.S. Citation: *** Beauty and the Beast, 2017 (highly recommended!)
Yes, but even block letter word marks get a range of protection so your logic doesn’t jibe with your position. I acknowledge there is a tension here. That said, there is also a safety valve. A party who believes that a sunrise registration is going beyond the scope of rights can challenge that fact. If that mechanism needs to be tweaked to make it more effective. That is a solution. I do not agree with a “throwing out the baby with the bath water” approach you, Kathy, George K. and Paul K. seem to be advocating. J. Scott J. Scott Evans 408.536.5336 (tel) 345 Park Avenue, Mail Stop W11-544 Director, Associate General Counsel 408.709.6162 (cell) San Jose, CA, 95110, USA Adobe. Make It an Experience. jsevans@adobe.com www.adobe.com On 4/26/17, 7:34 AM, "Rebecca Tushnet" <Rebecca.Tushnet@law.georgetown.edu> wrote: So far as I can tell, we aren't going back and forth on cases and citations; I'm citing cases and you aren't. I believe, and teach, that stylized marks get protection. The question then is what kinds of registrations should be accepted into the TMCH as evidence that the text string--the only thing that can go into the TMCH--is itself protected. Deloitte should not be evaluating the scope of the mark; as we've seen, it gets things very wrong in the examples it returned to us. Deloitte should focus on protection, not scope, and the way to do that is to see whether the text is itself registered. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 10:09 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote: > I agree with J Scott's comments just made to you. We can go back and forth on cases and citations to prove points. I'm not sure the last time you litigated a trademark case, but I can assure you that based on experience a stylized word mark gets protection. The extent of that protection, of course, depends on how strong the word mark might be. If it is a weak descriptive mark, it may only get a narrow and limited scope of protection . A strong mark would obviously get much more protection. I get that you want to eliminate protection for stylized word marks, but that does not accord with reality. So let's try to focus on fixes. > > Original Message > > From: Rebecca Tushnet > Sent: Wednesday, April 26, 2017 9:59 AM > To: Nahitchevansky, Georges > Cc: icannlists; gnso-rpm-wg@icann.org > Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) > > > Except we know your statement about the resulting rights is not true: > the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For > another example, see Decision of the Federal Commission of Appeals of > February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of > stylized version provides limited rights).) The stylized version may > have a scope broad enough to protect against highly similar stylized > versions, but the registration does not provide rights in the word > itself. > > What you are talking about is the vital distinction between the > existence of protection via registration or court decision (relatively > simple to confirm) and the scope of the rights in the specific mark > (particularized, not suited for decision in the abstract and thus not > a good thing for Deloitte to be deciding on its own say-so about > what's important in admitting marks to the TMCH). > Rebecca Tushnet > Georgetown Law > 703 593 6759 > > > On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges > <ghn@kilpatricktownsend.com> wrote: >> Rebecca: >> >> This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation. >> >> Georges >> >> Original Message >> From: Rebecca Tushnet >> Sent: Wednesday, April 26, 2017 9:38 AM >> To: icannlists >> Cc: gnso-rpm-wg@icann.org >> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) >> >> >> How does stylization translate into the DNS? We know that stylized >> PARENTS and OWN YOUR POWER, to take two examples already discussed, >> provide no trademark rights in the words "parents" and "own your >> power." Accepting stylized versions, as Deloitte currently does, thus >> gives TMCH protection to words as to which there is no underlying >> trademark protection. "Text" is not an invention by ICANN. >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> >> >> On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: >>> +1 Brian B. and J. Scott. >>> >>> >>> >>> The T Markey (stylized) example Kathy gave proves the point I am trying to >>> make. There is nothing about that mark which would not translate into the >>> DNS or would limit analysis of it by a trademark office on absolute grounds. >>> So long as we continue to mash up Stylized marks with other design and >>> composite marks, we simply don’t have a functional vocabulary to have this >>> conversation. In other words, we have to use well established trademark >>> vocabulary to talk about trademarks. We can’t invent our own language and >>> then evaluate the TMCH rules through the new language rather than the >>> language it was written in. >>> >>> >>> >>> Best, >>> >>> Paul >>> >>> >>> >>> >>> >>> >>> >>> From: J. Scott Evans [mailto:jsevans@adobe.com] >>> Sent: Wednesday, April 26, 2017 6:41 AM >>> To: Beckham, Brian <brian.beckham@wipo.int> >>> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists >>> <icannlists@winston.com>; gnso-rpm-wg@icann.org >>> >>> >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design >>> Mark and Appropriate Balance) >>> >>> >>> >>> I have several problems with this proposal too. Kathy's conclusory statement >>> about how he breadth of protection afforded by a composite or stylized mark >>> is incorrect. Second, and more importantly, I am bothered by all the >>> hyperbole and accusatory language like "breach", etc. this language is >>> emotional and charged with negativity. I think it is inappropriate and not >>> productive. >>> >>> >>> >>> J. Scott >>> >>> Sent from my iPhone >>> >>> >>> On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote: >>> >>> Kathy, >>> >>> >>> >>> It’s not clear that the reference to “only marks registered as text” is >>> necessarily incompatible with the “T. MARKEY” examples provided. The >>> second, stylized version shows a “mark registered as text”. It simply >>> happens to be text in a stylized (non-standard) form. >>> >>> >>> >>> In other words, a mark “registered as text” may not necessarily be >>> exclusively the same as (in USPTO parlance) “a standard character mark”. >>> >>> >>> >>> It may therefore not be entirely accurate to suggest that if the TMCH >>> allowed the second “T. MARKEY” example in stylized form (again, arguably a >>> mark “registered as text”) versus the standard character version, it would >>> somehow be “expand[ing] existing trademark rights”. >>> >>> >>> >>> Brian >>> >>> >>> >>> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] >>> On Behalf Of Kathy Kleiman >>> Sent: Wednesday, April 26, 2017 5:12 AM >>> To: icannlists; gnso-rpm-wg@icann.org >>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design >>> Mark and Appropriate Balance) >>> >>> >>> >>> Hi Paul, >>> Apologies. I saw your thanks, but not your notes farther down. (For those of >>> us skimming hundreds of emails, feel free to use use >>> red/green/stars/asterisks to designate comments...) I caught it on a >>> re-read... >>> >>> Quick note that the purpose of this recommendation is to share what is >>> clearly before the Working Group: that rules created for the Trademark >>> Clearinghouse process are not being followed. The goal is not to delve into >>> motive or intent, but rather compliance and review. The actions of our TMCH >>> database provider, as an ICANN contractor, must follow and comply with the >>> rules as set out by the ICANN Community. >>> >>> If we want to change the rules, that's fine; we can do it by consensus. But >>> until that happens, the rules adopted unanimously by the GNSO Council and >>> ICANN Board are the policy. It's not for third parties to make their own or >>> follow a different set. >>> >>> Paul, I'll respond to what I think are your questions below. My answers are >>> preceded by => >>> Best, Kathy >>> >>> >>> On 4/19/2017 8:23 PM, icannlists wrote: >>> >>> Hi Kathy, >>> >>> >>> >>> Thank you so much for being willing to put forward a proposal. I know this >>> is hard work (having put forward one on the GIs myself this week!) so it is >>> appreciated. >>> >>> >>> >>> I am getting my initial thoughts on this out to the list on this as quickly >>> as possible in the hopes that your proposal can be reworked a bit prior to >>> our next WG call. A few thoughts: >>> >>> >>> >>> 1. We have learned that Deloitte is accepting the words of design >>> marks, composite marks, figurative marks, stylized marks, mixed marks, and >>> any similar combination of characters and design (collectively “design >>> marks”). >>> >>> >>> >>> We spent the better half of our last call untangling these definitions and >>> to see them lumped in together again when these are not the same things >>> makes the proposal impossible to read for we trademark folks. It would be >>> great if we could include the clarity we achieved last week. >>> >>> ==> The category is meant to be comprehensive and international. >>> >>> >>> >>> >>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>> expressly bar the acceptance of design marks into the TMCH Database. >>> >>> >>> >>> >>> This is just inaccurate as written, mostly, but not entirely, by the way you >>> have defined the terms. For example, I know of no GNSO Council prohibition >>> that would reject a mark just because it is in a cursive font instead of >>> plain block font. Can you either fix this or send us to a link supporting >>> the claim? Perhaps if you unpack your collective definition, resulting a >>> more precise claim and provide the link, that might give us something to >>> talk about. As written now, I’ve just come to a halt on it because it >>> doesn’t reflect the facts on the ground. >>> >>> ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded >>> Discussion" discussion which follows in my recommendation directly below the >>> opening section and explains exactly where this sentence comes from and what >>> it references. I'm happy to paste some of this discussion here too. The STI >>> Final Report (adopted by GNSO Council and ICANN Board) stated: >>> >>> “The TC Database should be required to include nationally or multinationally >>> registered “text mark” trademarks, from all jurisdictions, (including >>> countries where there is no substantive review). (The trademarks to be >>> included in the TC are text marks because “design marks” provide protection >>> for letters and words only within the context of their design or logo and >>> the STI was under a mandate not to expand existing trademark rights.) >>> Emphasis added. Section 4.1, National or Multinational Registered Marks, >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... >>> >>> >>> >>> ==> The words mean exactly what they say - only marks registered as text can >>> be registered into the Trademark Clearinghouse; nothing that "provide[s] >>> protection for letters and words only within the content of their design or >>> logo." It states why: "the STI was under a mandate not to expand existing >>> trademark rights." The issue was the balancing of underlying concept adopted >>> here as part of the rights of trademark owners and the rights of current and >>> future registrants. Domain names are text based. >>> >>> >>> ==> We certainly meant to differentiate a trademark in a "cursive font >>> instead of a plain text font." That's the whole purpose for Section 4.1's >>> text, and the unusual extra step of including the explanation right next to >>> it. Those of us who worked on this section (including myself and Dr. >>> Konstantinos Komaitis, whose PhD became the book The Current State of Domain >>> Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated >>> World) spent a lot of time on this issue. In evaluating it, the STI Final >>> Report followed the guidance of experts such as those at the US Trademark >>> Office regarding the different representation of marks: >>> >>> [USPTO Representation of Mark] "During the application process for a >>> standard character mark, the USPTO will depict the mark in a simple >>> standardized typeface format. However, it is important to remember that >>> this depiction does not limit or control the format in which you actually >>> "use" the mark. In other words, the rights associated with a mark in >>> standard characters reside in the wording (or other literal element, e.g., >>> letters, numerals, punctuation) and not in any particular display. >>> Therefore, registration of a standard character mark would entitle you to >>> use and protect the mark in any font style, size, or color. It is for this >>> reason that a standard character mark can be an attractive option for many >>> companies." >>> >>> "The stylized/design format, on the other hand, is appropriate if you wish >>> to register word(s) by themselves or combined to form a phrase of any length >>> and/or letter(s) having a particular stylized appearance, a mark consisting >>> of a design element, or a combination of stylized wording and a design. Once >>> filed, any design element will be assigned a “design code,” as set forth in >>> the Design Search Code Manual." >>> >>> "Here is an example of a standard character mark: >>> >>> <image001.jpg>" >>> >>> "Here are some examples of special form marks: >>> >>> <image002.jpg> <image003.jpg> >>> >>> <image004.jpg>" >>> >>> Quotes above from >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g... >>> >>> The rest of the recommendation follows from these finding. Again, this not a >>> matter of a good job or a bad job -- no value judgement is intended. Rather >>> it is a compliance and review issue. Are the rules followed? The answer is >>> no. >>> >>> Best, Kathy >>> >>> >>> >>> >>> >>> >>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>> adopted and must revise its practice to follow the ruls adopted by the GNSO >>> Council and ICANN Board for TMCH operation. >>> >>> >>> >>> In order to buy this conclusion, the premises have to be correct, but the >>> premises (as mentioned in 1 and 2) are not close to ready. I have to >>> suspend consideration of the conclusion contained in this paragraph due to >>> the faulty syllogism we have in front of us. Maybe if you make the edits in >>> 1 and 2 suggested, we can then examine whether or not your paragraph 3 >>> conclusion is correct, partially correct, or incorrect. >>> >>> >>> >>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>> and present the GNSO Council and ICANN Board with an expanded set of rules >>> that Deloitte, or any future TMCH Provider, must follow. >>> >>> I guess I don’t understand this. Are you saying that if Deloitte is not in >>> breach by letting in marks written in cursive fonts, then the WG can by >>> Consensus propose changes? I’m not sure that the two things are connected. >>> >>> >>> >>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>> Further details, information and explanation below. >>> >>> >>> >>> Same response as #3 above. Also, this really confused paragraph 4 for me >>> further. It seemed like paragraph 4 indicated that if paragraph 3 were not >>> accurate, consensus driven solutions would be possible (again not sure those >>> two things are connected) but then you go on to say in 5 that conclusions in >>> 3 are a foregone conclusion (thus obviating any perceivable need for >>> paragraph 4). >>> >>> >>> >>> I’m sure other thoughts will come to me as we dig in to either this version >>> or an amended version, but these were the issues that jumped out at me right >>> away. If you could respond to the full list on this as soon as practical, I >>> would appreciate it. >>> >>> >>> >>> Best, >>> >>> Paul >>> >>> >>> >>> >>> >>> >>> >>> >>> >>> >>> >>> From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] >>> On Behalf Of Kathy Kleiman >>> Sent: Wednesday, April 19, 2017 6:18 PM >>> To: gnso-rpm-wg@icann.org >>> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark >>> and Appropriate Balance) >>> >>> >>> >>> Hi All, >>> >>> As promised, I am resubmitting a new version of my earlier recommendation. >>> It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate >>> Balance). I submit this recommendation to the Working Group in my capacity >>> as a member and not as a co-chair. >>> >>> Text below and also attached as a PDF. >>> >>> Best, Kathy >>> >>> ------------------------------------------------------ >>> >>> >>> >>> Design Mark Recommendation for Working Group - for Question #7 and Question >>> #16 of TMCH Charter Questions (#7, How are design marks currently handled by >>> the TMCH provider?; and #16, Does the scope of the TMCH and the protections >>> mechanisms which flow from it reflect the appropriate balance between the >>> rights of trademark holders and the rights of non-trademark registrants?) >>> >>> >>> >>> We (the RPM Working Group) have found a problem: >>> >>> 1. We have learned that Deloitte is accepting the words of design >>> marks, composite marks, figurative marks, stylized marks, mixed marks, and >>> any similar combination of characters and design (collectively “design >>> marks”). >>> >>> 2. However, the rules adopted by the GNSO Council and ICANN Board >>> expressly bar the acceptance of design marks into the TMCH Database. >>> >>> 3. Accordingly, Deloitte is currently in breach of the rules that ICANN >>> adopted and must revise its practice to follow the rules adopted by the GNSO >>> Council and ICANN Board for TMCH operation. >>> >>> 4. Alternatively, the Working Group by Consensus may CHANGE the rules >>> and present the GNSO Council and ICANN Board with an expanded set of rules >>> that Deloitte, or any future TMCH Provider, must follow. >>> >>> 5. In all events, we have a BREACH SITUATION which must be remedied. >>> Further details, information and explanation below. >>> >>> >>> >>> Expanded Discussion >>> >>> >>> >>> A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN >>> Board >>> >>> The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report >>> and IRT Recommendations) that were very clear about the type of mark to be >>> accepted by the Trademark Clearinghouse: >>> >>> “4.1 National or Multinational Registered Marks The TC Database should be >>> required to include nationally or multinationally registered “text mark” >>> trademarks, from all jurisdictions, (including countries where there is no >>> substantive review).” >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... >>> >>> >>> >>> Further, the adopted rules themselves are very clear about the Harm of >>> putting design marks into the TMCH Database: >>> >>> “[Also 4.1] (The trademarks to be included in the TC are text marks because >>> “design marks” provide protection for letters and words only within the >>> context of their design or logo and the STI was under a mandate not to >>> expand existing trademark rights.) >>> >>> >>> >>> The Applicant Guidebook adopted the same requirements, as it must and >>> should, namely: >>> >>> “3.2:Standards for inclusion in the Clearinghouse >>> >>> 3.2.1 Nationally or regionally registered word marks from all >>> jurisdictions” >>> >>> >>> >>> Nonetheless, and in violation of the express rules adopted by the GNSO >>> Council and ICANN Board and placed into the Applicant Guidebook, TMCH >>> Provider Deloitte is accepting into the TMCH database words and letters it >>> has extracted from composite marks, figurative marks, stylized marks, >>> composite marks and mixed marks. Deloitte is removing words and letters from >>> designs, patterns, special lettering and other patterns, styles, colors, and >>> logos which were integral to the trademark as accepted by the national or >>> regional trademark office. >>> >>> >>> >>> B. Harm from the Current Form >>> >>> The harm from this acceptance is that it violates the rules under which >>> Deloitte is allowed to operate. It creates a situation in which Deloitte is >>> operating under its own authority, not that of ICANN and the ICANN >>> Community. Such action, in violation of rules clearly adopted by the GNSO >>> Council and ICANN Board and written into the New gTLD Applicant Guidebook, >>> gives too much power to Deloitte -- a contractor of ICANN, to make its own >>> rules and adopt its own protocol without regard to the scope, breadth and >>> reach of the governing rules. >>> >>> >>> >>> It is the type of misconduct anticipated by the GNSO Council and ICANN >>> Board, and why the rules demand that ICANN hold a close relationship with >>> the TMCH Provider by contract to allow close oversight and correction of >>> misinterpretation or failure to follow the rules. (See, 3.1 in Relationship >>> with ICANN, Special Trademark Issues Review Team Recommendations). >>> >>> >>> >>> C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version >>> of the Registration Marks >>> >>> Further, words and letters within a composite marks, figurative marks, >>> stylized marks, and mixed marks are protected within the scope of the >>> designs, logos, lettering, patterns, colors, etc. That's not a Working Group >>> opinion, that's a legal opinion echoed through case law and UDRP decisions. >>> >>> >>> >>> In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. >>> D2012-1064, the Panel found: >>> >>> “Complainant has shown that it owns two trademark registrations in >>> Argentina. The Panel notes that both registrations are for “mixed” marks, >>> where each consists of a composition made of words and graphic elements, >>> such as stylized fonts, a roof of a house, etc. See details of the >>> registrations with drawings at section 4 above. >>> >>> >>> >>> “As explained on the INPI website, “[m] ixed (marks) are those constituted >>> by the combination of word elements and figurative elements together, or of >>> word elements in stylized manner.” Accordingly, the protection granted by >>> the registration of a mixed mark is for the composition as a whole, and not >>> for any of its constituting elements in particular. Thus, Complainant is not >>> correct when he asserts that it has trademark rights in the term “caba?as” >>> (standing alone), based on these mixed trademark registrations.” >>> >>> >>> >>> Similarly, in the US, federal courts have found that the presumption of >>> trademark validity provided by registration does not extend to the >>> non-stylized versions of the registration marks. See e.g., >>> >>> Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. >>> 2005) (registration of stylized mark didn’t extend protection to nonstylized >>> uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing >>> with special form mark whose words were unprotectable absent stylization), >>> aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. >>> >>> Cir. 2016). >>> >>> >>> >>> D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN >>> Board Agreed to Provide Trademark Owners. >>> >>> >>> >>> As has been pointed out in our Working Group calls, the STI evaluations and >>> IRT evaluations were long and hard and both groups decided in their >>> recommendations to protect only the word mark – the text itself when the >>> text was registered by itself. Neither allowed for the extraction of a word >>> or letters from amidst a pattern, style, composite or mixed marks; neither >>> created a process for doing so; neither accorded the discretion to the TMCH >>> Provider (now Deloitte) to adopt any processes to handle this process >>> independently. >>> >>> >>> >>> The STI clearly elaborated its reasoning: that extracting a word or letters >>> from a larger design, gives too many rights to one trademark owner over >>> others using the same words or letters. As clearly elaborated in the STI >>> Recommendations and adopted by the GNSO Council and ICANN Board >>> (unanimously), it would be an unfair advantage for one trademark owner over >>> others using the same words or letters. Specifically: >>> >>> “(The trademarks to be included in the TC are text marks because “design >>> marks” provide protection for letters and words only within the context of >>> their design or logo and the STI was under a mandate not to expand existing >>> trademark rights.)” >>> >>> >>> >>> To the extent that Deloitte as a TMCH Provider is operating within its >>> mandate, and the limits of the rules and contract imposed on it, it may not >>> take steps to expand existing trademark rights. The rights, as granted by >>> national and regional trademark offices are rights that expressly include >>> the patterns, special lettering and other styles, colors, and logos that are >>> a part of the trademark granted by the Trademark Office and certification >>> provided by each Trademark Office and presented to the Trademark >>> Clearinghouse. >>> >>> >>> >>> II. Breach and Correction >>> >>> >>> >>> Accordingly, Deloitte is in breach of the rules that ICANN adopted and must >>> revise its practice to go to follow the rules adopted by the GNSO Council >>> and ICANN Board. Deloitte’s extraction of words and letters from patterns, >>> special lettering, styles, colors and logos, as outlined above, violates the >>> rules adopted by the GNSO Council and ICANN Board for the Trademark >>> Clearinghouse operation. >>> >>> >>> >>> Bringing Deloitte’s operation of the TMCH – and its terms and requirements - >>> rules does not require a consensus of the Working Group. Rather, it is a >>> fundamental aspect of our job as a Working Group, as laid out by the GNSO >>> Council in our charter, to review the operation of the Trademark >>> Clearinghouse in compliance with its rules. As Deloitte is not operating in >>> compliance with its rules in this area, it is in breach and must come into >>> compliance. The excellent work of the Working Group in this area, and >>> finding this problem through hard work and research, should be sufficient >>> for ICANN Staff to act in enforcement of its contract and our rules. Point >>> it out clearly and directly to Deloitte, to ICANN Board and Staff, and to >>> the ICANN Community is one small additional step the Working Group might >>> take. >>> >>> >>> >>> Alternatively, the Working Group by consensus may CHANGE the rules and >>> present to the GNSO Council and ICANN Board a new set of standards by which >>> Deloitte (or any future TMCH provider) may use to accept the design and >>> stylized marks currently barred by the rules. But such a step would require >>> a change to the ICANN rules under which the Trademark Clearinghouse operate, >>> and then acceptance by the GNSO Council and ICANN Board. ICANN contractors >>> do not have the unilateral power to make their own rules or to change the >>> rule that are given them. >>> >>> >>> >>> ________________________________ >>> >>> The contents of this message may be privileged and confidential. 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Rebecca, To be fair to the group, you have only just started citing cases. I think this is a welcome evolution in our dialogue, but to come out swinging at us minutes later because we haven't cited cases in return seems a bit premature. Kindly give us time - we waited long enough for you to support your claims through third party sources. We promise to engage at the heightened level, but we may need a few minutes to do so. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 9:34 AM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Cc: icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) So far as I can tell, we aren't going back and forth on cases and citations; I'm citing cases and you aren't. I believe, and teach, that stylized marks get protection. The question then is what kinds of registrations should be accepted into the TMCH as evidence that the text string--the only thing that can go into the TMCH--is itself protected. Deloitte should not be evaluating the scope of the mark; as we've seen, it gets things very wrong in the examples it returned to us. Deloitte should focus on protection, not scope, and the way to do that is to see whether the text is itself registered. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 10:09 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
I agree with J Scott's comments just made to you. We can go back and forth on cases and citations to prove points. I'm not sure the last time you litigated a trademark case, but I can assure you that based on experience a stylized word mark gets protection. The extent of that protection, of course, depends on how strong the word mark might be. If it is a weak descriptive mark, it may only get a narrow and limited scope of protection . A strong mark would obviously get much more protection. I get that you want to eliminate protection for stylized word marks, but that does not accord with reality. So let's try to focus on fixes.
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:59 AM To: Nahitchevansky, Georges Cc: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Except we know your statement about the resulting rights is not true: the PARENTS and OWN YOUR POWER cases both hold to the contrary. (For another example, see Decision of the Federal Commission of Appeals of February 3, 1997; SIC II/1997, 180 (Switzerland) (registration of stylized version provides limited rights).) The stylized version may have a scope broad enough to protect against highly similar stylized versions, but the registration does not provide rights in the word itself.
What you are talking about is the vital distinction between the existence of protection via registration or court decision (relatively simple to confirm) and the scope of the rights in the specific mark (particularized, not suited for decision in the abstract and thus not a good thing for Deloitte to be deciding on its own say-so about what's important in admitting marks to the TMCH). Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:46 AM, Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote:
Rebecca:
This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation.
Georges
Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09- en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/re presentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09- en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “caba?as” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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+1 Georges. Applications for US registration incorporating a design or Latin characters using a stylized font still require submission of the text comprising the "literal element(s)" of the mark. That the text is protected with a design or in stylized form would certainly not allow that text's omission or negate its existence in a substantial similarity analysis with another mark, where that text creates part of the overall commercial impression of the mark. So isn't the better question why should the presence of stylization or even a design with text negate the use of that text for string comparison in the DNS? Best regards, Scott Scott R. Austin | Board Certified Intellectual Property Attorney | VLP Law Group LLP 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301 Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin@VLPLawGroup.com -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Nahitchevansky, Georges Sent: Wednesday, April 26, 2017 9:46 AM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; icannlists <icannlists@winston.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Rebecca: This is not correct. A stylized word mark gets protection in the US and probably in a number of other juridictions. If I have WIDGET in a stylized form registered , for example, another party trying to use the same word for the same or related goods and services would be hard pressed to justify as much and would likely lose in a litigation. Georges Original Message From: Rebecca Tushnet Sent: Wednesday, April 26, 2017 9:38 AM To: icannlists Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don't have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can't invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It's not clear that the reference to "only marks registered as text" is necessarily incompatible with the "T. MARKEY" examples provided. The second, stylized version shows a "mark registered as text". It simply happens to be text in a stylized (non-standard) form.
In other words, a mark "registered as text" may not necessarily be exclusively the same as (in USPTO parlance) "a standard character mark".
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second "T. MARKEY" example in stylized form (again, arguably a mark "registered as text") versus the standard character version, it would somehow be "expand[ing] existing trademark rights".
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively "design marks").
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I've just come to a halt on it because it doesn't reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
"The TC Database should be required to include nationally or multinationally registered "text mark" trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because "design marks" provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a "design code," as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/repr esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don't understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I'm not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I'm sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively "design marks").
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
"4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered "text mark" trademarks, from all jurisdictions, (including countries where there is no substantive review)." https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
"[Also 4.1] (The trademarks to be included in the TC are text marks because "design marks" provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
"3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions"
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
"Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for "mixed" marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
"As explained on the INPI website, "[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner." Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term "cabañas" (standing alone), based on these mixed trademark registrations."
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn't extend protection to nonstylized uses); Kelly-Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff'd, Kelly-Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark - the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
"(The trademarks to be included in the TC are text marks because "design marks" provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)"
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte's extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte's operation of the TMCH - and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Hi Rebecca, It is correct that the stylization (in other words, font) doesn’t translate into the DNS unless you have your font set for that particular font on your browser. But, there is a "so what?" factor here since having a distinctive font doesn't undo the distinctiveness of the underlying words. I realize that some may disagree with the examiner's decision to grant a registration, but the TMCH can't be used as a wholesale cancelation mechanism because there is disagreement by some with where examiners draw the line on their review on absolute grounds. More importantly, however, we have to unpack - as we did in our call and at great length and in much detail - these various types of marks which Kathy has collectively lumped in together. They are not the same and are not treated as the same by any examination unit that I have ever encountered. Best, Paul -----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:38 AM To: icannlists <icannlists@winston.com> Cc: J. Scott Evans <jsevans@adobe.com>; Beckham, Brian <brian.beckham@wipo.int>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759 On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/repr esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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+1 Sent from my iPhone
On Apr 26, 2017, at 7:01 AM, icannlists <icannlists@winston.com> wrote:
Hi Rebecca,
It is correct that the stylization (in other words, font) doesn’t translate into the DNS unless you have your font set for that particular font on your browser. But, there is a "so what?" factor here since having a distinctive font doesn't undo the distinctiveness of the underlying words. I realize that some may disagree with the examiner's decision to grant a registration, but the TMCH can't be used as a wholesale cancelation mechanism because there is disagreement by some with where examiners draw the line on their review on absolute grounds.
More importantly, however, we have to unpack - as we did in our call and at great length and in much detail - these various types of marks which Kathy has collectively lumped in together. They are not the same and are not treated as the same by any examination unit that I have ever encountered.
Best, Paul
-----Original Message----- From: Rebecca Tushnet [mailto:Rebecca.Tushnet@law.georgetown.edu] Sent: Wednesday, April 26, 2017 8:38 AM To: icannlists <icannlists@winston.com> Cc: J. Scott Evans <jsevans@adobe.com>; Beckham, Brian <brian.beckham@wipo.int>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote: +1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... .pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.g... esentation-mark
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.... .pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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+1 Rebecca. That's exactly the rationale we adopted in the STI Final Report and then was adopted unanimously by the GNSO Council and Board. Stylization does not translate into the DNS. That was the balance we struck then. We can change the rules, but currently they are as Rebecca lays out below. On 4/26/2017 9:37 AM, Rebecca Tushnet wrote:
How does stylization translate into the DNS? We know that stylized PARENTS and OWN YOUR POWER, to take two examples already discussed, provide no trademark rights in the words "parents" and "own your power." Accepting stylized versions, as Deloitte currently does, thus gives TMCH protection to words as to which there is no underlying trademark protection. "Text" is not an invention by ICANN. Rebecca Tushnet Georgetown Law 703 593 6759
On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists@winston.com> wrote:
+1 Brian B. and J. Scott.
The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in.
Best,
Paul
From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int> Cc: Kathy Kleiman <kathy@kathykleiman.com>; icannlists <icannlists@winston.com>; gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive.
J. Scott
Sent from my iPhone
On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int> wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
“The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual."
"Here is an example of a standard character mark:
<image001.jpg>"
"Here are some examples of special form marks:
<image002.jpg> <image003.jpg>
<image004.jpg>"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
------------------------------------------------------
Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)
We (the RPM Working Group) have found a problem:
1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registered word marks from all jurisdictions”
Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office.
B. Harm from the Current Form
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations).
C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g.,
Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners.
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)”
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II. Breach and Correction
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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+1 Paul. Sent from my iPhone On Apr 26, 2017, at 6:31 AM, icannlists <icannlists@winston.com<mailto:icannlists@winston.com>> wrote: +1 Brian B. and J. Scott. The T Markey (stylized) example Kathy gave proves the point I am trying to make. There is nothing about that mark which would not translate into the DNS or would limit analysis of it by a trademark office on absolute grounds. So long as we continue to mash up Stylized marks with other design and composite marks, we simply don’t have a functional vocabulary to have this conversation. In other words, we have to use well established trademark vocabulary to talk about trademarks. We can’t invent our own language and then evaluate the TMCH rules through the new language rather than the language it was written in. Best, Paul From: J. Scott Evans [mailto:jsevans@adobe.com] Sent: Wednesday, April 26, 2017 6:41 AM To: Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Cc: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>>; icannlists <icannlists@winston.com<mailto:icannlists@winston.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) I have several problems with this proposal too. Kathy's conclusory statement about how he breadth of protection afforded by a composite or stylized mark is incorrect. Second, and more importantly, I am bothered by all the hyperbole and accusatory language like "breach", etc. this language is emotional and charged with negativity. I think it is inappropriate and not productive. J. Scott Sent from my iPhone On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Kathy, It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form. In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”. It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”. Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read... Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community. If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set. Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy On 4/19/2017 8:23 PM, icannlists wrote: Hi Kathy, Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated. I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week. ==> The category is meant to be comprehensive and international. 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: “The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en.pdf&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636287910468586476&sdata=2q5XKyT5cgFNWgyIE%2FTMdj6s9xcK3jSyVVVGJukDSIE%3D&reserved=0> ==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based. ==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks: [USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies." "The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Ftess2.uspto....>." "Here is an example of a standard character mark: <image001.jpg>" "Here are some examples of special form marks: <image002.jpg> <image003.jpg> <image004.jpg>" Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representation-mark<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.gov%2Ftrademarks-getting-started%2Ftrademark-basics%2Frepresentation-mark&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636287910468586476&sdata=MKbgTMRnE3J1qNekU1wNWWSpHRw0hHcszc9DGVy2RJg%3D&reserved=0> The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no. Best, Kathy 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation. In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4). I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy ------------------------------------------------------ Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?) We (the RPM Working Group) have found a problem: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en.pdf&data=02%7C01%7C%7Cb1cb6c609e6042807af208d48c7bb9d2%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636287910468586476&sdata=2q5XKyT5cgFNWgyIE%2FTMdj6s9xcK3jSyVVVGJukDSIE%3D&reserved=0> Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office. B. Harm from the Current Form The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g., Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II. Breach and Correction Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them. ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. World IP Day 2017 – Join the conversation Web: www.wipo.int/ipday<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int...> Facebook: www.facebook.com/worldipday<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.facebook...> 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://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Hi Brian, The US Trademark Office drew a bright line and so did we. Kathy On 4/26/2017 4:00 AM, Beckham, Brian wrote:
Kathy,
It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form.
In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”.
It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”.
Brian
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, April 26, 2017 5:12 AM *To:* icannlists; gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read...
Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community.
If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set.
Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy
On 4/19/2017 8:23 PM, icannlists wrote:
Hi Kathy,
Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated.
I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts:
1.We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week.
==> The category is meant to be comprehensive and international.
2.However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground.
==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated:
*“*The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).*(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) *Emphasis added. /Section 4.1, National or Multinational Registered Marks, / https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based.
==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book /The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) /spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks:
[USPTO *Representation of Mark*] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and *not* in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies."
"The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual <http://tess2.uspto.gov/tmdb/dscm/index.htm>."
"Here is an example of a standard character mark:
Standard mark example"
"Here are some examples of special form marks:
Stylized mark example Design mark example
Design mark example"
Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa...
The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no.
Best, Kathy
3.Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation.
In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect.
4.Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected.
5.In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4).
I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it.
Best,
Paul
*From:*gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, April 19, 2017 6:18 PM *To:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Hi All,
As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair.
Text below and also attached as a PDF.
Best, Kathy
*------------------------------------------------------*
*Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, /How are design marks currently handled by the TMCH provider?; /and #16, /Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?)/*
We (the RPM Working Group) have found a problem:
1.We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”).
2.However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database.
3.Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation.
4.Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow.
5.In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below.
Expanded Discussion
/A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board/
The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse:
*“4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).”*https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database:
*“[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)*
The Applicant Guidebook adopted the same requirements, as it must and should, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1Nationally or regionally registered word marks from all jurisdictions”
/Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office./
/B. Harm from the Current Form/
The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules.
It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider /by contract/ to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in /Relationship with ICANN/, Special Trademark Issues Review Team Recommendations).
/C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks/
Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions.
In WIPO UDRP Decision /Marco Rafael Sanfilippo v. Estudio Indigo/, Case No. D2012-1064, the Panel found:
“Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above.
“As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.”
Similarly, in the US, federal courts have found that *the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks*. See e.g.,
/Neopost Industrie B.V. v. PFE Intern/., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
Cir. 2016).
/D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. /
As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently.
The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically:
*“(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” *
**
To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, /it may not take steps to expand existing trademark rights/. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse.
II.*Breach and Correction*
Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation.
Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take.
Alternatively, the Working Group *by consensus* may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a *change* to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them.
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Hi Kathy, Of course, no qualms there. That said, it’s not clear that the USPTO (which uses more precise “standard character mark” terminology) drew the same line you are proposing. It is precisely the “legislative history” you cite that underscores this; more specifically, the reference to “words only within the context of their design or logo” is illustrative of an entirely reasonable inference that the intent was in fact merely to exclude from the TMCH only marks where protection at the level of a national registration was only granted for the mark as an inseparable whole. In any event, Paul McGrady (email attached for ease) picked up with a useful suggestion that sooner-than-later, these discussions may benefit from a shared understanding of terms such as “text marks” rather than continued and seemingly interchangeable use of terms such as stylized, design, composite, word+design, etc. Brian From: Kathy Kleiman [mailto:kathy@kathykleiman.com] Sent: Wednesday, April 26, 2017 4:28 PM To: Beckham, Brian; icannlists; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi Brian, The US Trademark Office drew a bright line and so did we. Kathy On 4/26/2017 4:00 AM, Beckham, Brian wrote: Kathy, It’s not clear that the reference to “only marks registered as text” is necessarily incompatible with the “T. MARKEY” examples provided. The second, stylized version shows a “mark registered as text”. It simply happens to be text in a stylized (non-standard) form. In other words, a mark “registered as text” may not necessarily be exclusively the same as (in USPTO parlance) “a standard character mark”. It may therefore not be entirely accurate to suggest that if the TMCH allowed the second “T. MARKEY” example in stylized form (again, arguably a mark “registered as text”) versus the standard character version, it would somehow be “expand[ing] existing trademark rights”. Brian From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 26, 2017 5:12 AM To: icannlists; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi Paul, Apologies. I saw your thanks, but not your notes farther down. (For those of us skimming hundreds of emails, feel free to use use red/green/stars/asterisks to designate comments...) I caught it on a re-read... Quick note that the purpose of this recommendation is to share what is clearly before the Working Group: that rules created for the Trademark Clearinghouse process are not being followed. The goal is not to delve into motive or intent, but rather compliance and review. The actions of our TMCH database provider, as an ICANN contractor, must follow and comply with the rules as set out by the ICANN Community. If we want to change the rules, that's fine; we can do it by consensus. But until that happens, the rules adopted unanimously by the GNSO Council and ICANN Board are the policy. It's not for third parties to make their own or follow a different set. Paul, I'll respond to what I think are your questions below. My answers are preceded by => Best, Kathy On 4/19/2017 8:23 PM, icannlists wrote: Hi Kathy, Thank you so much for being willing to put forward a proposal. I know this is hard work (having put forward one on the GIs myself this week!) so it is appreciated. I am getting my initial thoughts on this out to the list on this as quickly as possible in the hopes that your proposal can be reworked a bit prior to our next WG call. A few thoughts: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). We spent the better half of our last call untangling these definitions and to see them lumped in together again when these are not the same things makes the proposal impossible to read for we trademark folks. It would be great if we could include the clarity we achieved last week. ==> The category is meant to be comprehensive and international. 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. This is just inaccurate as written, mostly, but not entirely, by the way you have defined the terms. For example, I know of no GNSO Council prohibition that would reject a mark just because it is in a cursive font instead of plain block font. Can you either fix this or send us to a link supporting the claim? Perhaps if you unpack your collective definition, resulting a more precise claim and provide the link, that might give us something to talk about. As written now, I’ve just come to a halt on it because it doesn’t reflect the facts on the ground. ==> Paul, what I wrote is nearly a direct quote. Please see the "Expanded Discussion" discussion which follows in my recommendation directly below the opening section and explains exactly where this sentence comes from and what it references. I'm happy to paste some of this discussion here too. The STI Final Report (adopted by GNSO Council and ICANN Board) stated: “The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Emphasis added. Section 4.1, National or Multinational Registered Marks, https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf ==> The words mean exactly what they say - only marks registered as text can be registered into the Trademark Clearinghouse; nothing that "provide[s] protection for letters and words only within the content of their design or logo." It states why: "the STI was under a mandate not to expand existing trademark rights." The issue was the balancing of underlying concept adopted here as part of the rights of trademark owners and the rights of current and future registrants. Domain names are text based. ==> We certainly meant to differentiate a trademark in a "cursive font instead of a plain text font." That's the whole purpose for Section 4.1's text, and the unusual extra step of including the explanation right next to it. Those of us who worked on this section (including myself and Dr. Konstantinos Komaitis, whose PhD became the book The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World) spent a lot of time on this issue. In evaluating it, the STI Final Report followed the guidance of experts such as those at the US Trademark Office regarding the different representation of marks: [USPTO Representation of Mark] "During the application process for a standard character mark, the USPTO will depict the mark in a simple standardized typeface format. However, it is important to remember that this depiction does not limit or control the format in which you actually "use" the mark. In other words, the rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, registration of a standard character mark would entitle you to use and protect the mark in any font style, size, or color. It is for this reason that a standard character mark can be an attractive option for many companies." "The stylized/design format, on the other hand, is appropriate if you wish to register word(s) by themselves or combined to form a phrase of any length and/or letter(s) having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and a design. Once filed, any design element will be assigned a “design code,” as set forth in the Design Search Code Manual<http://tess2.uspto.gov/tmdb/dscm/index.htm>." "Here is an example of a standard character mark: [Standard mark example]" "Here are some examples of special form marks: [Stylized mark example] [Design mark example] [Design mark example] " Quotes above from https://www.uspto.gov/trademarks-getting-started/trademark-basics/representa... The rest of the recommendation follows from these finding. Again, this not a matter of a good job or a bad job -- no value judgement is intended. Rather it is a compliance and review issue. Are the rules followed? The answer is no. Best, Kathy 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the ruls adopted by the GNSO Council and ICANN Board for TMCH operation. In order to buy this conclusion, the premises have to be correct, but the premises (as mentioned in 1 and 2) are not close to ready. I have to suspend consideration of the conclusion contained in this paragraph due to the faulty syllogism we have in front of us. Maybe if you make the edits in 1 and 2 suggested, we can then examine whether or not your paragraph 3 conclusion is correct, partially correct, or incorrect. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. I guess I don’t understand this. Are you saying that if Deloitte is not in breach by letting in marks written in cursive fonts, then the WG can by Consensus propose changes? I’m not sure that the two things are connected. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Same response as #3 above. Also, this really confused paragraph 4 for me further. It seemed like paragraph 4 indicated that if paragraph 3 were not accurate, consensus driven solutions would be possible (again not sure those two things are connected) but then you go on to say in 5 that conclusions in 3 are a foregone conclusion (thus obviating any perceivable need for paragraph 4). I’m sure other thoughts will come to me as we dig in to either this version or an amended version, but these were the issues that jumped out at me right away. If you could respond to the full list on this as soon as practical, I would appreciate it. Best, Paul From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, April 19, 2017 6:18 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance) Hi All, As promised, I am resubmitting a new version of my earlier recommendation. It now addresses issues from Question #7 (Design Marks) and #16 (Appropriate Balance). I submit this recommendation to the Working Group in my capacity as a member and not as a co-chair. Text below and also attached as a PDF. Best, Kathy ------------------------------------------------------ Design Mark Recommendation for Working Group - for Question #7 and Question #16 of TMCH Charter Questions (#7, How are design marks currently handled by the TMCH provider?; and #16, Does the scope of the TMCH and the protections mechanisms which flow from it reflect the appropriate balance between the rights of trademark holders and the rights of non-trademark registrants?) We (the RPM Working Group) have found a problem: 1. We have learned that Deloitte is accepting the words of design marks, composite marks, figurative marks, stylized marks, mixed marks, and any similar combination of characters and design (collectively “design marks”). 2. However, the rules adopted by the GNSO Council and ICANN Board expressly bar the acceptance of design marks into the TMCH Database. 3. Accordingly, Deloitte is currently in breach of the rules that ICANN adopted and must revise its practice to follow the rules adopted by the GNSO Council and ICANN Board for TMCH operation. 4. Alternatively, the Working Group by Consensus may CHANGE the rules and present the GNSO Council and ICANN Board with an expanded set of rules that Deloitte, or any future TMCH Provider, must follow. 5. In all events, we have a BREACH SITUATION which must be remedied. Further details, information and explanation below. Expanded Discussion A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & ICANN Board The GNSO Council & ICANN Board-adopted rules (based on the STI Final Report and IRT Recommendations) that were very clear about the type of mark to be accepted by the Trademark Clearinghouse: “4.1 National or Multinational Registered Marks The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review).” https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf Further, the adopted rules themselves are very clear about the Harm of putting design marks into the TMCH Database: “[Also 4.1] (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) The Applicant Guidebook adopted the same requirements, as it must and should, namely: “3.2:Standards for inclusion in the Clearinghouse 3.2.1 Nationally or regionally registered word marks from all jurisdictions” Nonetheless, and in violation of the express rules adopted by the GNSO Council and ICANN Board and placed into the Applicant Guidebook, TMCH Provider Deloitte is accepting into the TMCH database words and letters it has extracted from composite marks, figurative marks, stylized marks, composite marks and mixed marks. Deloitte is removing words and letters from designs, patterns, special lettering and other patterns, styles, colors, and logos which were integral to the trademark as accepted by the national or regional trademark office. B. Harm from the Current Form The harm from this acceptance is that it violates the rules under which Deloitte is allowed to operate. It creates a situation in which Deloitte is operating under its own authority, not that of ICANN and the ICANN Community. Such action, in violation of rules clearly adopted by the GNSO Council and ICANN Board and written into the New gTLD Applicant Guidebook, gives too much power to Deloitte -- a contractor of ICANN, to make its own rules and adopt its own protocol without regard to the scope, breadth and reach of the governing rules. It is the type of misconduct anticipated by the GNSO Council and ICANN Board, and why the rules demand that ICANN hold a close relationship with the TMCH Provider by contract to allow close oversight and correction of misinterpretation or failure to follow the rules. (See, 3.1 in Relationship with ICANN, Special Trademark Issues Review Team Recommendations). C. Presumption of Trademark Validity Does Not Extend to Non-Stylized Version of the Registration Marks Further, words and letters within a composite marks, figurative marks, stylized marks, and mixed marks are protected within the scope of the designs, logos, lettering, patterns, colors, etc. That's not a Working Group opinion, that's a legal opinion echoed through case law and UDRP decisions. In WIPO UDRP Decision Marco Rafael Sanfilippo v. Estudio Indigo, Case No. D2012-1064, the Panel found: “Complainant has shown that it owns two trademark registrations in Argentina. The Panel notes that both registrations are for “mixed” marks, where each consists of a composition made of words and graphic elements, such as stylized fonts, a roof of a house, etc. See details of the registrations with drawings at section 4 above. “As explained on the INPI website, “[m] ixed (marks) are those constituted by the combination of word elements and figurative elements together, or of word elements in stylized manner.” Accordingly, the protection granted by the registration of a mixed mark is for the composition as a whole, and not for any of its constituting elements in particular. Thus, Complainant is not correct when he asserts that it has trademark rights in the term “cabañas” (standing alone), based on these mixed trademark registrations.” Similarly, in the US, federal courts have found that the presumption of trademark validity provided by registration does not extend to the non-stylized versions of the registration marks. See e.g., Neopost Industrie B.V. v. PFE Intern., Inc., 403 F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t extend protection to nonstylized uses); Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing with special form mark whose words were unprotectable absent stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d. Cir. 2016). D. Beyond the Scope of the TMCH Protection that the GNSO Council and ICANN Board Agreed to Provide Trademark Owners. As has been pointed out in our Working Group calls, the STI evaluations and IRT evaluations were long and hard and both groups decided in their recommendations to protect only the word mark – the text itself when the text was registered by itself. Neither allowed for the extraction of a word or letters from amidst a pattern, style, composite or mixed marks; neither created a process for doing so; neither accorded the discretion to the TMCH Provider (now Deloitte) to adopt any processes to handle this process independently. The STI clearly elaborated its reasoning: that extracting a word or letters from a larger design, gives too many rights to one trademark owner over others using the same words or letters. As clearly elaborated in the STI Recommendations and adopted by the GNSO Council and ICANN Board (unanimously), it would be an unfair advantage for one trademark owner over others using the same words or letters. Specifically: “(The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.)” To the extent that Deloitte as a TMCH Provider is operating within its mandate, and the limits of the rules and contract imposed on it, it may not take steps to expand existing trademark rights. The rights, as granted by national and regional trademark offices are rights that expressly include the patterns, special lettering and other styles, colors, and logos that are a part of the trademark granted by the Trademark Office and certification provided by each Trademark Office and presented to the Trademark Clearinghouse. II. Breach and Correction Accordingly, Deloitte is in breach of the rules that ICANN adopted and must revise its practice to go to follow the rules adopted by the GNSO Council and ICANN Board. Deloitte’s extraction of words and letters from patterns, special lettering, styles, colors and logos, as outlined above, violates the rules adopted by the GNSO Council and ICANN Board for the Trademark Clearinghouse operation. Bringing Deloitte’s operation of the TMCH – and its terms and requirements - rules does not require a consensus of the Working Group. Rather, it is a fundamental aspect of our job as a Working Group, as laid out by the GNSO Council in our charter, to review the operation of the Trademark Clearinghouse in compliance with its rules. As Deloitte is not operating in compliance with its rules in this area, it is in breach and must come into compliance. The excellent work of the Working Group in this area, and finding this problem through hard work and research, should be sufficient for ICANN Staff to act in enforcement of its contract and our rules. Point it out clearly and directly to Deloitte, to ICANN Board and Staff, and to the ICANN Community is one small additional step the Working Group might take. Alternatively, the Working Group by consensus may CHANGE the rules and present to the GNSO Council and ICANN Board a new set of standards by which Deloitte (or any future TMCH provider) may use to accept the design and stylized marks currently barred by the rules. But such a step would require a change to the ICANN rules under which the Trademark Clearinghouse operate, and then acceptance by the GNSO Council and ICANN Board. ICANN contractors do not have the unilateral power to make their own rules or to change the rule that are given them. ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations. 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participants (10)
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Beckham, Brian -
George Kirikos -
icannlists -
J. Scott Evans -
Kathy Kleiman -
Mark Massey -
Nahitchevansky, Georges -
Rebecca Tushnet -
Scott Austin -
Winterfeldt, Brian J.