Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate. Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion. John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available. Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet. Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks. As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH. For US jurisprudence on the limited scope of stylized marks v. standard character marks: 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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS). Rebecca Tushnet Georgetown Law 703 593 6759
First, I agree that words that cannot be protected as trademarks should not be registered in the TMCH. However many of the cases you cite below are not relevant to the TMCH. A registration for BOX in the TMCH will not prevent the owner of BOX SOLUTIONS from obtaining boxsolutions.tld. Also, the NIKE case appears off point because a TMCH registrant cannot block the use of similar words with similar meanings. The one problem you, George and Paul K. Have identified is the block of an identical TLD-string for non-infringing uses (apple.food for apple pie recipe lovers). I think we can recommend a solution for that scenario. J. Scott Sent from my iPhone
On Apr 13, 2017, at 11:20 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate.
Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion.
John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available.
Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet.
Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks.
As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH.
For US jurisprudence on the limited scope of stylized marks v. standard character marks:
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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS).
Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Since I was asked in chat to support the statement that registrations for stylized words are narrower in scope than registrations for words in standard text form, that was the statement I supported, and the cases all stand for that proposition. Do you disagree? For example, the registrants in the BOX case should neither have been able to put BOX in the TMCH nor BOX SOLUTIONS, since both of them had only stylized marks. Rebecca Tushnet Georgetown Law 703 593 6759 On Fri, Apr 14, 2017 at 9:04 AM, J. Scott Evans <jsevans@adobe.com> wrote:
First, I agree that words that cannot be protected as trademarks should not be registered in the TMCH. However many of the cases you cite below are not relevant to the TMCH. A registration for BOX in the TMCH will not prevent the owner of BOX SOLUTIONS from obtaining boxsolutions.tld. Also, the NIKE case appears off point because a TMCH registrant cannot block the use of similar words with similar meanings. The one problem you, George and Paul K. Have identified is the block of an identical TLD-string for non-infringing uses (apple.food for apple pie recipe lovers). I think we can recommend a solution for that scenario.
J. Scott
Sent from my iPhone
On Apr 13, 2017, at 11:20 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote:
Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate.
Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion.
John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available.
Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet.
Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks.
As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH.
For US jurisprudence on the limited scope of stylized marks v. standard character marks:
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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS).
Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Rebecca: As I stated on the call Wednesday, when Sunrise registration were first developed, a EU trademark litigator was very vocal and, ultimately successful, in arguing that design/figurative marks (as opposed to word marks in stylized lettering) should not be included because the EU trademark office had no disclaimer requirement. I support this proposition. However, there may be other ways to solve the problem rather than an outright prohibition. On your specific point below, I think that the owner of a registration for the mark BOX is a stylized ribbon script for “online storage services” should be allowed to register in the TMCH. And, unless I am wrong, the owner of a TMCH registration for the stylized ribbon script mark BOX would not be able to prevent someone from registering boxsolutions.tld unless they had one a UDRP on that exact string. I think the information from Deloitte shows that use of trademark +50 is very sparse, so that probably is a very remote situation. Even then, however, I support a mechanism whereby the applicant that wants box.tld for a non-infringing use should be able to obtain the domain; provided they have to use it for the non-infringing use. 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 4/14/17, 7:32 AM, "Rebecca Tushnet" <Rebecca.Tushnet@law.georgetown.edu> wrote: Since I was asked in chat to support the statement that registrations for stylized words are narrower in scope than registrations for words in standard text form, that was the statement I supported, and the cases all stand for that proposition. Do you disagree? For example, the registrants in the BOX case should neither have been able to put BOX in the TMCH nor BOX SOLUTIONS, since both of them had only stylized marks. Rebecca Tushnet Georgetown Law 703 593 6759 On Fri, Apr 14, 2017 at 9:04 AM, J. Scott Evans <jsevans@adobe.com> wrote: > First, I agree that words that cannot be protected as trademarks should not be registered in the TMCH. However many of the cases you cite below are not relevant to the TMCH. A registration for BOX in the TMCH will not prevent the owner of BOX SOLUTIONS from obtaining boxsolutions.tld. Also, the NIKE case appears off point because a TMCH registrant cannot block the use of similar words with similar meanings. The one problem you, George and Paul K. Have identified is the block of an identical TLD-string for non-infringing uses (apple.food for apple pie recipe lovers). I think we can recommend a solution for that scenario. > > J. Scott > > Sent from my iPhone > >> On Apr 13, 2017, at 11:20 PM, Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu> wrote: >> >> Let me try my question about different kinds of word marks again by >> asking a couple of people who participated in the chat if they could >> elaborate. >> >> >> >> Martin Silva mentioned “mixed marks” in the civil law countries, “text >> marks that are represented in an specific figurative way (form+color) >> and are only protected in those designs.” Do you have any particular >> countries in mind? That sounds like an important concept for this >> discussion. >> >> >> >> John McElwaine said: “Many countries apparently require ‘a depiction’ >> of the mark with no distinction between text, stylization or included >> designs.” Do you have specific countries in mind? I think that could >> offer useful information to figure out what distinctions are or aren’t >> available. >> >> >> >> Sorry if I missed others, especially in the audio portion—the >> transcript isn’t up yet. >> >> >> >> Michael R Graham asked me in the chat: Please provide cases supporting >> "weaker" protection statement for stylized word registered marks. >> >> >> >> As I said on the call, there’s a distinction between protection and >> infringement. Koke infringes Coke for soft drinks, but Koke isn’t a >> “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to >> expand coverage of marks beyond what’s registered or validated by a >> court, the fact that a stylized mark might (or might not) be infringed >> by a use that doesn’t have the same stylization isn’t relevant. I >> agree with Greg Shatan that “strength” of the mark isn’t relevant to >> what goes into the TMCH, but precisely because that’s true we should >> be particularly careful to ensure that marks that are only valid >> because of elements that can’t go into the TMCH—that is, stylization >> or design elements—can’t have their textual portions in the TMCH. >> >> >> >> For US jurisprudence on the limited scope of stylized marks v. >> standard character marks: >> >> 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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 >> (“[T]he law of trademark accords stronger protection to the stylized >> version of certain words used as trademarks than to those words >> themselves ….[T]rademark rights in the stylized appearance of a word >> are distinct from trademark rights in the word itself”) (2d Cir.1999); >> Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. >> v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, >> for purposes of a likelihood of confusion analysis, that “the district >> court ... properly distinguished between the strength of the >> [composite] trademark PARENTS [consisting of those words rendered in a >> particular visual style] and the weak, descriptive nature of what it >> called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, >> Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) >> (holding that two differently stylized marks using the same two words >> were not similar); 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); Federation Internationale De >> Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) >> (“[E]ven after a descriptive term has become distinct, its power to >> preclude other uses of closely related descriptive terms is diminished >> where the senior owner has used its mark only in a particular, >> stylized way. For even if that overall stylized mark is strong, the >> trademark value of the words themselves may be quite weak.”); see also >> In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized >> form was registrable, but words alone were descriptive and >> unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 >> (5th Cir. 2000) (registration of composite mark didn’t provide >> presumption of validity for words alone); In re Box Solutions Corp., >> 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion >> between two stylized marks despite identical goods and overlap in >> words BOX and BOX SOLUTIONS). >> >> >> >> Rebecca Tushnet >> Georgetown Law >> 703 593 6759 >> _______________________________________________ >> gnso-rpm-wg mailing list >> gnso-rpm-wg@icann.org >> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
Rebecca, I was working from the INTA Country Guide database, which contains a summary of filing requirements. Many of the jurisdictions listed state that they require a "depiction of the mark". However, I do not believe that is enough guidance to develop a list to figure out what distinctions are or aren’t available. My point was really that this should be a question for Deloitte. I presume that they looked into this issue to develop their rules. As I mentioned, I do not think that there is any universally accepted term in all countries' trademark offices that equates to a standard character mark in the U.S. Even if the concept is recognized everywhere it is going to be a different field or name in the trademark record, if listed at all (e.g., there are six types of mark in the United States - see http://tmsearch.uspto.gov/bin/gate.exe?f=help&state=4809:nltdl1.1.1#Mark_Dra...); in Chile it is a the "Tipo" field and, I believe, "Palabra " for a word mark). I don't doubt that there are a large number of jurisdictions that track the words in a trademark. As you have identified, it is the proper terms/fields in these countries that we would need to diligence. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, April 14, 2017 2:20 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Text/design marks Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate. Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion. John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available. Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet. Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks. As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH. For US jurisprudence on the limited scope of stylized marks v. standard character marks: 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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS). Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. 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Thank you for the followup--that is very helpful. Given what Deloitte has already done, which appears to go beyond what its mandate was by including design marks (where Deloitte judges there is sufficient separability), I think further guidance would be a very good idea. We may also learn more when Deloitte responds to our additional questions. Rebecca Tushnet Georgetown Law 703 593 6759 On Fri, Apr 14, 2017 at 12:19 PM, John McElwaine <john.mcelwaine@nelsonmullins.com> wrote:
Rebecca,
I was working from the INTA Country Guide database, which contains a summary of filing requirements. Many of the jurisdictions listed state that they require a "depiction of the mark". However, I do not believe that is enough guidance to develop a list to figure out what distinctions are or aren’t available. My point was really that this should be a question for Deloitte. I presume that they looked into this issue to develop their rules. As I mentioned, I do not think that there is any universally accepted term in all countries' trademark offices that equates to a standard character mark in the U.S. Even if the concept is recognized everywhere it is going to be a different field or name in the trademark record, if listed at all (e.g., there are six types of mark in the United States - see http://tmsearch.uspto.gov/bin/gate.exe?f=help&state=4809:nltdl1.1.1#Mark_Dra...); in Chile it is a the "Tipo" field and, I believe, "Palabra " for a word mark). I don't doubt that there are a large number of jurisdictions that track the words in a trademark. As you have identified, it is the proper terms/fields in these countries that we would need to diligence.
John
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, April 14, 2017 2:20 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Text/design marks
Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate.
Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion.
John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available.
Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet.
Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks.
As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH.
For US jurisprudence on the limited scope of stylized marks v. standard character marks:
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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS).
Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice
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Let me be clear. I am not sure what the mandate was with regard to the current TMCH. I am clear that when we originally designed Sunrise registrations that design marks were not included. I am not sure how these got included. I take no position on that point at this stage. 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 4/14/17, 9:32 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: Thank you for the followup--that is very helpful. Given what Deloitte has already done, which appears to go beyond what its mandate was by including design marks (where Deloitte judges there is sufficient separability), I think further guidance would be a very good idea. We may also learn more when Deloitte responds to our additional questions. Rebecca Tushnet Georgetown Law 703 593 6759 On Fri, Apr 14, 2017 at 12:19 PM, John McElwaine <john.mcelwaine@nelsonmullins.com> wrote: > Rebecca, > > I was working from the INTA Country Guide database, which contains a summary of filing requirements. Many of the jurisdictions listed state that they require a "depiction of the mark". However, I do not believe that is enough guidance to develop a list to figure out what distinctions are or aren’t available. My point was really that this should be a question for Deloitte. I presume that they looked into this issue to develop their rules. As I mentioned, I do not think that there is any universally accepted term in all countries' trademark offices that equates to a standard character mark in the U.S. Even if the concept is recognized everywhere it is going to be a different field or name in the trademark record, if listed at all (e.g., there are six types of mark in the United States - see https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Ftmsearch.usp...); in Chile it is a the "Tipo" field and, I believe, "Palabra " for a word mark). I don't doubt that there are a large number of jurisdictions that track the words in a trademark. As you have identified, it is the proper terms/fields in these countries that we would need to diligence. > > John > > -----Original Message----- > From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet > Sent: Friday, April 14, 2017 2:20 AM > To: gnso-rpm-wg@icann.org > Subject: [gnso-rpm-wg] Text/design marks > > Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate. > > > > Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion. > > > > John McElwaine said: “Many countries apparently require ‘a depiction’ > of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available. > > > > Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet. > > > > Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks. > > > > As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH. > > > > For US jurisprudence on the limited scope of stylized marks v. > standard character marks: > > 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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. > v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., > 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS). > > > > Rebecca Tushnet > Georgetown Law > 703 593 6759 > _______________________________________________ > gnso-rpm-wg mailing list > gnso-rpm-wg@icann.org > https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... > Confidentiality Notice > > This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. > > If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or...
John: Your comments to Rebecca on the ccTLDs and standard character marks reminded me of several questions I wanted to add to the TMCH discussion on design marks v standard character/text/typed form/words only/non-stylized/ (other less articulate terms) marks. First, the USPTO does provide in TMEP Appendix E (Attachment 1) a list of countries “that Have Standard Character Marks or the Equivalent” and lists over 50 countries. Oddly the countries listed many that on its face would not be considered to use standard character sets, including China, Russia, Japan, etc. so at first it appears there may be a broad interpretation of “the Equivalent”. The appendix references, however, TMEP §807.03(f) which clarifies the meaning of the term (highlighted) and may provide a useful definition to apply to the TMCH for standard character set: “For countries on this list, if all letters and words in the mark are in block capital or capital and lowercase Latin characters, all numerals are Roman or Arabic numerals, the mark includes only common punctuation or diacritical marks, and no stylization of lettering and/or numbers is claimed, the examining attorney need not inquire whether the registered mark in the foreign registration is in standard characters or the equivalent, unless the applicant has indicated that the mark is not standard characters or the equivalent.” Second, from the USPTO’s website under their instruction on Trademark Basics and the options for representation of a mark using a “standard character format” when filing an application for US trademark registration, they write: The standard character format means you are able to type your mark into the designated field on the electronic filing form by using characters found within the standard character set (or otherwise create a “typed” drawing for a paper submission). This is used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. Even better they provide a link to the “standard character set” which I have attached in PDF (Attachment 2). As you can see it includes more than just an alphabet/number set, but also many additional characters including punctuations and diacritical marks added to letters such as umlauts, acute accents, grave accents, carons, etc. Reviewing the USPTO’s expansive standard character set raises another issue, however. Question 1. Considering that the only valid characters for a standard (non-Internationalized) domain name are letters, numbers and a hyphen "-" and even simple typed special characters like the underscore "_" or an exclamation mark "!" are NOT permitted in a standard domain name, would even “standard character” US registered marks that include accents or other diacritical marks registered in the TMCH be precluded a beyond the reach of a cybersquatter anyway, or should they be included to provide protection of the essentially identical string being copied, but for the omission of a diacritical mark? (Typosquatting?) And considering the new gTLDS now include numerous IDNs, has the question been raised with Deloitte whether the TMCH accommodates trademark registrations using foreign character marks that require use of the IDNA encoding to be used as domain names? Question 2: Are foreign character marks, whether 1) in ASCII script using accents, umlauts, carons, etc. treated as design marks and 2) are foreign character marks using non ASCII character sets such as Chinese, Japanese, Arabic, Hebrew, Cyrillic, etc. treated as design marks or standard character marks? And doesn’t where you come out on that argument impact how stylized and words plus design marks are treated? Some design marks may never be used in a standard character format for a variety of reasons: 1. From commencement, the owner combined the literal elements of the mark with a logo and never asked for (or couldn’t afford) counsel on the broader protection and flexibility of a words only mark. 2. The mark was not sufficiently distinctive without the addition of a distinctive design to obtain the benefits of principal register status. 3. A substantial design was used strategically after a search, to avoid a conflict with another words only mark and a 2(d) refusal. 4. The marketing director demanded only special fonts be used to have a greater impact on target customers. I am sure there are many more and better examples you or I could come up with in time, but my point is: Question 3. Should the incorporation of a design be grounds to deny protection of the literal elements of a words plus design mark that could be cybersquatted on the basis of those literal elements. Do we intend to err on the side of; 1) prohibiting words plus design marks (whether the words are embedded (e.g., Starbucks) or adjacent (e.g. Nike) to the design and denying notice to brand owners when the literal elements of their marks are used for domain names; or 2) permitting the literal elements of words plus design marks to control and allow their registration on the TMCH and provide notice to brand owners when the literal elements of their words plus design marks are acquired for domain names. Taking a real-world example, if a nascent coffee concern filed only U.S. Trademark Reg. No. 1,815,937, but not 1,452,359 would or should Starbucks be prohibited from registration on the TMCH? 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 John McElwaine Sent: Friday, April 14, 2017 12:19 PM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Text/design marks Rebecca, I was working from the INTA Country Guide database, which contains a summary of filing requirements. Many of the jurisdictions listed state that they require a "depiction of the mark". However, I do not believe that is enough guidance to develop a list to figure out what distinctions are or aren’t available. My point was really that this should be a question for Deloitte. I presume that they looked into this issue to develop their rules. As I mentioned, I do not think that there is any universally accepted term in all countries' trademark offices that equates to a standard character mark in the U.S. Even if the concept is recognized everywhere it is going to be a different field or name in the trademark record, if listed at all (e.g., there are six types of mark in the United States - see http://tmsearch.uspto.gov/bin/gate.exe?f=help&state=4809:nltdl1.1.1#Mark_Dra...); in Chile it is a the "Tipo" field and, I believe, "Palabra " for a word mark). I don't doubt that there are a large number of jurisdictions that track the words in a trademark. As you have identified, it is the proper terms/fields in these countries that we would need to diligence. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, April 14, 2017 2:20 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Text/design marks Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate. Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion. John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available. Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet. Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks. As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH. For US jurisprudence on the limited scope of stylized marks v. standard character marks: 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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS). Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
Attachments 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: Scott Austin Sent: Friday, April 14, 2017 5:01 PM To: John McElwaine <john.mcelwaine@nelsonmullins.com>; Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] Text/design marks Importance: High John: Your comments to Rebecca on the ccTLDs and standard character marks reminded me of several questions I wanted to add to the TMCH discussion on design marks v standard character/text/typed form/words only/non-stylized/ (other less articulate terms) marks. First, the USPTO does provide in TMEP Appendix E (Attachment 1) a list of countries “that Have Standard Character Marks or the Equivalent” and lists over 50 countries. Oddly the countries listed many that on its face would not be considered to use standard character sets, including China, Russia, Japan, etc. so at first it appears there may be a broad interpretation of “the Equivalent”. The appendix references, however, TMEP §807.03(f) which clarifies the meaning of the term (highlighted) and may provide a useful definition to apply to the TMCH for standard character set: “For countries on this list, if all letters and words in the mark are in block capital or capital and lowercase Latin characters, all numerals are Roman or Arabic numerals, the mark includes only common punctuation or diacritical marks, and no stylization of lettering and/or numbers is claimed, the examining attorney need not inquire whether the registered mark in the foreign registration is in standard characters or the equivalent, unless the applicant has indicated that the mark is not standard characters or the equivalent.” Second, from the USPTO’s website under their instruction on Trademark Basics and the options for representation of a mark using a “standard character format” when filing an application for US trademark registration, they write: The standard character format means you are able to type your mark into the designated field on the electronic filing form by using characters found within the standard character set (or otherwise create a “typed” drawing for a paper submission). This is used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. Even better they provide a link to the “standard character set” which I have attached in PDF (Attachment 2). As you can see it includes more than just an alphabet/number set, but also many additional characters including punctuations and diacritical marks added to letters such as umlauts, acute accents, grave accents, carons, etc. Reviewing the USPTO’s expansive standard character set raises another issue, however. Question 1. Considering that the only valid characters for a standard (non-Internationalized) domain name are letters, numbers and a hyphen "-" and even simple typed special characters like the underscore "_" or an exclamation mark "!" are NOT permitted in a standard domain name, would even “standard character” US registered marks that include accents or other diacritical marks registered in the TMCH be precluded a beyond the reach of a cybersquatter anyway, or should they be included to provide protection of the essentially identical string being copied, but for the omission of a diacritical mark? (Typosquatting?) And considering the new gTLDS now include numerous IDNs, has the question been raised with Deloitte whether the TMCH accommodates trademark registrations using foreign character marks that require use of the IDNA encoding to be used as domain names? Question 2: Are foreign character marks, whether 1) in ASCII script using accents, umlauts, carons, etc. treated as design marks and 2) are foreign character marks using non ASCII character sets such as Chinese, Japanese, Arabic, Hebrew, Cyrillic, etc. treated as design marks or standard character marks? And doesn’t where you come out on that argument impact how stylized and words plus design marks are treated? Some design marks may never be used in a standard character format for a variety of reasons: 1. From commencement, the owner combined the literal elements of the mark with a logo and never asked for (or couldn’t afford) counsel on the broader protection and flexibility of a words only mark. 2. The mark was not sufficiently distinctive without the addition of a distinctive design to obtain the benefits of principal register status. 3. A substantial design was used strategically after a search, to avoid a conflict with another words only mark and a 2(d) refusal. 4. The marketing director demanded only special fonts be used to have a greater impact on target customers. I am sure there are many more and better examples you or I could come up with in time, but my point is: Question 3. Should the incorporation of a design be grounds to deny protection of the literal elements of a words plus design mark that could be cybersquatted on the basis of those literal elements. Do we intend to err on the side of; 1) prohibiting words plus design marks (whether the words are embedded (e.g., Starbucks) or adjacent (e.g. Nike) to the design and denying notice to brand owners when the literal elements of their marks are used for domain names; or 2) permitting the literal elements of words plus design marks to control and allow their registration on the TMCH and provide notice to brand owners when the literal elements of their words plus design marks are acquired for domain names. Taking a real-world example, if a nascent coffee concern filed only U.S. Trademark Reg. No. 1,815,937, but not 1,452,359 would or should Starbucks be prohibited from registration on the TMCH? 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 John McElwaine Sent: Friday, April 14, 2017 12:19 PM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Text/design marks Rebecca, I was working from the INTA Country Guide database, which contains a summary of filing requirements. Many of the jurisdictions listed state that they require a "depiction of the mark". However, I do not believe that is enough guidance to develop a list to figure out what distinctions are or aren’t available. My point was really that this should be a question for Deloitte. I presume that they looked into this issue to develop their rules. As I mentioned, I do not think that there is any universally accepted term in all countries' trademark offices that equates to a standard character mark in the U.S. Even if the concept is recognized everywhere it is going to be a different field or name in the trademark record, if listed at all (e.g., there are six types of mark in the United States - see http://tmsearch.uspto.gov/bin/gate.exe?f=help&state=4809:nltdl1.1.1#Mark_Dra...); in Chile it is a the "Tipo" field and, I believe, "Palabra " for a word mark). I don't doubt that there are a large number of jurisdictions that track the words in a trademark. As you have identified, it is the proper terms/fields in these countries that we would need to diligence. John -----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, April 14, 2017 2:20 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Text/design marks Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate. Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion. John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available. Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet. Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks. As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH. For US jurisprudence on the limited scope of stylized marks v. standard character marks: 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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS). Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure. If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
Thanks for this. A few thoughts, snipping some of your remarks: On Fri, Apr 14, 2017 at 5:01 PM, Scott Austin <SAustin@vlplawgroup.com> wrote:...
Question 1. Considering that the only valid characters for a standard (non-Internationalized) domain name are letters, numbers and a hyphen "-" and even simple typed special characters like the underscore "_" or an exclamation mark "!" are NOT permitted in a standard domain name, would even “standard character” US registered marks that include accents or other diacritical marks registered in the TMCH be precluded a beyond the reach of a cybersquatter anyway, or should they be included to provide protection of the essentially identical string being copied, but for the omission of a diacritical mark? (Typosquatting?)
Diacriticals are definitely worth asking Deloitte about; I would probably support treating them like the ampersand is currently treated.
And considering the new gTLDS now include numerous IDNs, has the question been raised with Deloitte whether the TMCH accommodates trademark registrations using foreign character marks that require use of the IDNA encoding to be used as domain names? Question 2: Are foreign character marks, whether 1) in ASCII script using accents, umlauts, carons, etc. treated as design marks and 2) are foreign character marks using non ASCII character sets such as Chinese, Japanese, Arabic, Hebrew, Cyrillic, etc. treated as design marks or standard character marks? I’d also support asking Deloitte about foreign character marks, and developing rules that allow foreign character marks to be treated like text marks as long as they are claimed as such in the underlying registration (that is, not with a design or not with special stylization).
And doesn’t where you come out on that argument impact how stylized and words plus design marks are treated? Some design marks may never be used in a standard character format for a variety of reasons: 1. From commencement, the owner combined the literal elements of the mark with a logo and never asked for (or couldn’t afford) counsel on the broader protection and flexibility of a words only mark. 2. The mark was not sufficiently distinctive without the addition of a distinctive design to obtain the benefits of principal register status. 3. A substantial design was used strategically after a search, to avoid a conflict with another words only mark and a 2(d) refusal. 4. The marketing director demanded only special fonts be used to have a greater impact on target customers. I am sure there are many more and better examples you or I could come up with in time, but my point is:
The problem I see is that there’s no way to tell without further substantive examination whether the motivation for registering a stylized version/design + word mark was 1 or 4 (where there might or might not be independent protectability for the word alone; we don't know) or 2 or 3 (where there definitely isn’t protectability, and where allowing the mark into the TMCH would expand its scope compared to its original national rights). Given that the mandate of the TMCH is not to expand substantive rights as they exist at the national level, if there isn’t going to be substantive examination then the TMCH should take the trademark registrant at its word, so to speak: if it only has a registration for a design or stylized mark, it doesn’t have a mark eligible for inclusion into the TMCH. In the alternative, we could explore a regime whereby the submitter of a design + word or stylized mark could be allowed to prove that it had rights in the word alone, though how it would do that without a registration or court decision might be a question.
Question 3. Should the incorporation of a design be grounds to deny protection of the literal elements of a words plus design mark that could be cybersquatted on the basis of those literal elements. Do we intend to err on the side of; 1) prohibiting words plus design marks (whether the words are embedded (e.g., Starbucks) or adjacent (e.g. Nike) to the design and denying notice to brand owners when the literal elements of their marks are used for domain names; or 2) permitting the literal elements of words plus design marks to control and allow their registration on the TMCH and provide notice to brand owners when the literal elements of their words plus design marks are acquired for domain names. Taking a real-world example, if a nascent coffee concern filed only U.S. Trademark Reg. No. 1,815,937, but not 1,452,359 would or should Starbucks be prohibited from registration on the TMCH?
Yes, we should implement the prohibition of words plus design marks, as the original guidelines indicated. The examples you used, Starbucks and Nike, are marks that are both registrable and registered as standard character marks; such applicants need merely submit the appropriate registration to the TMCH to avoid any problem. On the other hand, the registrant of BOX + design and the registrant of PARENTS in special character form can’t submit a different registration, because they aren’t entitled to registration of those words alone. For that same reason, they shouldn’t be entitled to block domain name registration (or even to misleadingly notify others that they have a competing claim over the text string alone). The word and word + design forms serve different functions in the national registration system and provide different scopes of blocking rights—which is why registrants like Starbucks and Fruit of the Loom have both. (And Starbucks, as an inherently distinctive term for coffee, began with a text registration—as the registration numbers indicate (filing dates 1985 and 1993, respectively).) Because anyone whose well-known mark is in fact distinctive in text form can get a text registration, and a TMCH entry based on that registration, we should err on the side of keeping out those who can’t, who are more likely to be the Parents, Boxes, Christmases and Clouds that do not seem to have real cybersquatting concerns and may be using descriptive terms anticompetitively.
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 John McElwaine Sent: Friday, April 14, 2017 12:19 PM To: Rebecca Tushnet <Rebecca.Tushnet@law.georgetown.edu>; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] Text/design marks
Rebecca,
I was working from the INTA Country Guide database, which contains a summary of filing requirements. Many of the jurisdictions listed state that they require a "depiction of the mark". However, I do not believe that is enough guidance to develop a list to figure out what distinctions are or aren’t available. My point was really that this should be a question for Deloitte. I presume that they looked into this issue to develop their rules. As I mentioned, I do not think that there is any universally accepted term in all countries' trademark offices that equates to a standard character mark in the U.S. Even if the concept is recognized everywhere it is going to be a different field or name in the trademark record, if listed at all (e.g., there are six types of mark in the United States - see http://tmsearch.uspto.gov/bin/gate.exe?f=help&state=4809:nltdl1.1.1#Mark_Dra...); in Chile it is a the "Tipo" field and, I believe, "Palabra " for a word mark). I don't doubt that there are a large number of jurisdictions that track the words in a trademark. As you have identified, it is the proper terms/fields in these countries that we would need to diligence.
John
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Rebecca Tushnet Sent: Friday, April 14, 2017 2:20 AM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Text/design marks
Let me try my question about different kinds of word marks again by asking a couple of people who participated in the chat if they could elaborate.
Martin Silva mentioned “mixed marks” in the civil law countries, “text marks that are represented in an specific figurative way (form+color) and are only protected in those designs.” Do you have any particular countries in mind? That sounds like an important concept for this discussion.
John McElwaine said: “Many countries apparently require ‘a depiction’ of the mark with no distinction between text, stylization or included designs.” Do you have specific countries in mind? I think that could offer useful information to figure out what distinctions are or aren’t available.
Sorry if I missed others, especially in the audio portion—the transcript isn’t up yet.
Michael R Graham asked me in the chat: Please provide cases supporting "weaker" protection statement for stylized word registered marks.
As I said on the call, there’s a distinction between protection and infringement. Koke infringes Coke for soft drinks, but Koke isn’t a “protected” mark of Coca-Cola’s. Unless the TMCH is supposed to expand coverage of marks beyond what’s registered or validated by a court, the fact that a stylized mark might (or might not) be infringed by a use that doesn’t have the same stylization isn’t relevant. I agree with Greg Shatan that “strength” of the mark isn’t relevant to what goes into the TMCH, but precisely because that’s true we should be particularly careful to ensure that marks that are only valid because of elements that can’t go into the TMCH—that is, stylization or design elements—can’t have their textual portions in the TMCH.
For US jurisprudence on the limited scope of stylized marks v. standard character marks:
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); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19 (“[T]he law of trademark accords stronger protection to the stylized version of certain words used as trademarks than to those words themselves ….[T]rademark rights in the stylized appearance of a word are distinct from trademark rights in the word itself”) (2d Cir.1999); Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing, for purposes of a likelihood of confusion analysis, that “the district court ... properly distinguished between the strength of the [composite] trademark PARENTS [consisting of those words rendered in a particular visual style] and the weak, descriptive nature of what it called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999) (holding that two differently stylized marks using the same two words were not similar); 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); Federation Internationale De Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003) (“[E]ven after a descriptive term has become distinct, its power to preclude other uses of closely related descriptive terms is diminished where the senior owner has used its mark only in a particular, stylized way. For even if that overall stylized mark is strong, the trademark value of the words themselves may be quite weak.”); see also In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized form was registrable, but words alone were descriptive and unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814 (5th Cir. 2000) (registration of composite mark didn’t provide presumption of validity for words alone); In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion between two stylized marks despite identical goods and overlap in words BOX and BOX SOLUTIONS).
Rebecca Tushnet Georgetown Law 703 593 6759 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg Confidentiality Notice
This message is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged, confidential or otherwise legally exempt from disclosure.
If you are not the named addressee, you are not authorized to read, print, retain, copy or disseminate this message or any part of it. If you have received this message in error, please notify the sender immediately either by phone (800-237-2000) or reply to this e-mail and delete all copies of this message. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
This message contains information which may be confidential and legally privileged. Unless you are the addressee, you may not use, copy or disclose to anyone this message or any information contained in the message. If you have received this message in error, please send me an email and delete this message. Any tax advice provided by VLP is for your use only and cannot be used to avoid tax penalties or for promotional or marketing purposes.
participants (4)
-
J. Scott Evans -
John McElwaine -
Rebecca Tushnet -
Scott Austin