[gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016

Edward Morris egmorris1 at toast.net
Wed Dec 7 01:14:10 UTC 2016

  Hi John,
 Thanks for your contribution.
 If we were talking about the process of how a trade marked word becomes generic, genericide if you will, or, for example, in Europe application of article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I would agree completely with you that a complicated legal analysis is called for. That simply is not the case here.
 There is nothing mysterious or confusing about the definition of a generic word – every schoolchild knows the nouns they use every day such as truck, car, desk, book. The US Trademark Office even defines generic terms as what the public (not what a trade mark examiner or solicitor) understands them to be:
   US Patent and Trademark Office (USPTO) Glossary
 generic term:
 “terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."
 These terms are simply incapable of functioning as trade marks denoting source in any jurisdiction I am aware of, and are not even registrable, for example, in the United States on the Principal Register under §2(f) or on the Supplemental Register. Illustrative examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.”  https://www.uspto.gov/learning-and-resources/glossary#sec-g
 The INTA teaches the same “common knowledge” approach as the USPTO:
 “Generic words can be thought of as the common name of the problem or service in question – for example, “clock” is a generic word for timepieces.”  Because these are the common names of goods and services, the first rule of trade mark law is that “[s]uch words can never be appropriated by a single party as a trademark for the products and services they signify” ((from the INTA publication quoted below in the e-mail that started this thread).
 The question our working group has been asked in its Charter is whether the TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its category of goods and services.  Are we perhaps creating processes that may remove the registration of domain names for generic words from domain name registrants? That seems a very valid question to ask with very important implications for our work.
 As Kathy Kleiman pointed out in her post to this group of September 29th, there may even be free expression aspects to this issue. In responding to J. Scott’s raising of this issue she wrote:
 “When basic words of political discourse such as FREEDOM (USPTO IC 028 Mounts and mounting devices adapted for use with suspended physical fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate liners. Reg No. 4301142) are used as trademarks, but also play an integral role in the fabric of political dialogue, we have a Free Expression issue and concern before us.”
 What happens if Registrants can’t register these words for the free expression uses to which they are most directly (and generically) directed and applied to?
 Throwing “generic” out of the question seems, well, rather out of the question. It is a basic and understood term and it would be unfair to the group(s) that posed these questions, and to those of us on the GNSO Council who saw fit to send to these queries to this working group in the Charter itself, to exclude this line of inquiry. It seems to me that if we don’t want to inappropriately expand trademark protection, as Luc has pointed out, we really need to include this question as we move forward.
 John, I do recognize that the wording itself may not be perfect. Perhaps you could offer a rephrasing the keeps the powerful and valid intent of the question with wording you might be more comfortable with.
 Thanks for considering.
 Kind Regards,
 Edward Morris


 From: "John McElwaine" <john.mcelwaine at nelsonmullins.com>
Sent: Tuesday, December 6, 2016 2:51 PM
To: "David Tait" <david.tait at icann.org>, "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016   

The point that Kiran is making  is that words such as “generic” mean something.  While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary.  An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH.  


Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services.  Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services.  H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).    


So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what?  In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness.  Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above.  For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic.  See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009).  Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term.  


As we have discussed on our calls,  it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms.  It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic.  










From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of David Tait
Sent: Tuesday, December 06, 2016 5:54 AM
To: gnso-rpm-wg at icann.org
Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 


Dear All  


At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group.  


Kind regards,



From: Kathy Kleiman <kathy at kathykleiman.com>
Date: Sunday, 4 December 2016 at 19:40
To: Kiran Malancharuvil <Kiran.Malancharuvil at markmonitor.com>, David Tait <david.tait at icann.org>
Cc: Mary Wong <mary.wong at icann.org>, Susan Payne <susan.payne at valideus.com>, Edward Morris <edward.morris at alumni.usc.edu>, Phil Corwin <psc at vlaw-dc.com>, "Sarahliannec at gmail.com" <Sarahliannec at gmail.com>, Paul Keating <paul at law.es>, "kurt at kjpritz.com" <kurt at kjpritz.com>, "gpmgroup at gmail.com" <gpmgroup at gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder" <va at bladebrains.com>, Sarah Clayton <Sarahliannec at gmail.com>
Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 


I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online.   

One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs:  

        => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify."  http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]  

So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one.  

Besides, there were numerous charter questions on this issue. We can't simply delete it.  But if you would like to offer a clearer way to phrase the question, please do.  

Best, Kathy  


On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: 

 Hi David,  


 I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology?  






 Kiran Malancharuvil  

 Policy Counselor  


 415-419-9138 (m)  


 Sent from my mobile, please excuse any typos.  


 On Dec 4, 2016, at 9:26 AM, David Tait <david.tait at icann.org<mailto:david.tait at icann.org>> wrote:  


 Dear All  


 Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document.  


 The notes and outcomes are as follows:  



 *         Q10 - Should be marked green for accepted.  



 *         Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?"  


 Proposal to keep question in but report findings to SubPro WG.  



 *         Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?"  



 *         Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?"  


 Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?"  

 Both proposals to go to the Working Group.  


 Should there be regional service desks if not regional providers?  



 *         Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?"  



 I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday.  Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team).  


 Kind regards,  




 David A. Tait  

 Policy Specialist (Solicitor qualified in Scotland, non-practicing)  

 Internet Corporation for Assigned Names and Numbers (ICANN)  


 Mobile: + 44-7864-793776  

 Email:  david.tait at icann.org<mailto:david.tait at icann.org>  



 <Tabulated Categories - TMCH Questions 2 Dec 2016.docx>   


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