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

Wed Dec 7 12:11:33 UTC 2016

Well said, Edward. Let's not get distracted by pedantic criticisms,
and instead look at the big picture, namely that a trademark does not
entitle its owner to have a right of first refusal or a priority right
to that term in every gTLD.

Where there are multiple users of a term (whether it's a dictionary
word, acronym, or other frequently used term, or string of
alphanumeric characters), those other good faith non-trademark owner
users (both actual and prospective) should have equal access to
register that term. To do otherwise represents a prior restraint on
speech.

If those users *later* abuse that registration by infringing someone's
rights, they should face the appropriate consequences.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1 at toast.net> wrote:
>
> Hi John,
>
> Thanks for your contribution.
>
> If we were talking about the process of how a trade marked word becomes
> generic, genericide if you will, or, for example, in Europe application of
> article 20 of the new Trademark Directive (Directive (EU) 2015 /2436), I
> would agree completely with you that a complicated legal analysis is called
> for. That simply is not the case here.
>
> There is nothing mysterious or confusing about the definition of a generic
> word – every schoolchild knows the nouns they use every day such as truck,
> car, desk, book. The US Trademark Office even defines generic terms as what
> the public (not what a trade mark examiner or solicitor) understands them to
> be:
>
>   US Patent and Trademark Office (USPTO) Glossary
>
> generic term:
>
> “terms that the relevant purchasing public understands primarily as the
> common or class name for the goods or services."
>
> These terms are simply incapable of functioning as trade marks denoting
> source in any jurisdiction I am aware of, and are not even registrable, for
> example, in the United States on the Principal Register under §2(f) or on
> the Supplemental Register. Illustrative examples include: CLASSES ONLINE for
> classes provided via the Internet, PIZZA.COM for pizza ordering and delivery
> services, and LIVE PLANTS for plant nurseries.”
> https://www.uspto.gov/learning-and-resources/glossary#sec-g
>
> The INTA teaches the same “common knowledge” approach as the USPTO:
>
> “Generic words can be thought of as the common name of the problem or
> service in question – for example, “clock” is a generic word for
> timepieces.”  Because these are the common names of goods and services, the
> first rule of trade mark law is that “[s]uch words can never be appropriated
> by a single party as a trademark for the products and services they signify”
> ((from the INTA publication quoted below in the e-mail that started this
> thread).
>
> The question our working group has been asked in its Charter is whether the
> TMCH Database and RPM Mechanisms are protecting a trade mark far beyond its
> category of goods and services.  Are we perhaps creating processes that may
> remove the registration of domain names for generic words from domain name
> registrants? That seems a very valid question to ask with very important
> implications for our work.
>
> As Kathy Kleiman pointed out in her post to this group of September 29th,
> there may even be free expression aspects to this issue. In responding to J.
> Scott’s raising of this issue she wrote:
>
> “When basic words of political discourse such as FREEDOM (USPTO IC 028
> Mounts and mounting devices adapted for use with suspended physical fitness
> equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs, namely,
> sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line skate
> liners. Reg No. 4301142) are used as trademarks, but also play an integral
> role in the fabric of political dialogue, we have a Free Expression issue
> and concern before us.”
>
> What happens if Registrants can’t register these words for the free
> expression uses to which they are most directly (and generically) directed
> and applied to?
>
> Throwing “generic” out of the question seems, well, rather out of the
> question. It is a basic and understood term and it would be unfair to the
> group(s) that posed these questions, and to those of us on the GNSO Council
> who saw fit to send to these queries to this working group in the Charter
> itself, to exclude this line of inquiry. It seems to me that if we don’t
> want to inappropriately expand trademark protection, as Luc has pointed out,
> we really need to include this question as we move forward.
>
> John, I do recognize that the wording itself may not be perfect. Perhaps you
> could offer a rephrasing the keeps the powerful and valid intent of the
> question with wording you might be more comfortable with.
>
> Thanks for considering.
>
> Kind Regards,
>
> Edward Morris
>
>
>
> ________________________________
> From: "John McElwaine" <john.mcelwaine 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.
>
>
>
> Thanks,
>
>
>
> John
>
>
>
>
>
>
>
>
>
>
>
> 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,
>
> David
>
>
>
> 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?
>
>
>
> Thanks,
>
>
>
> Kiran
>
>
>
> Kiran Malancharuvil
>
> Policy Counselor
>
> MarkMonitor
>
> 415-419-9138 (m)
>
>
>
> Sent from my mobile, please excuse any typos.
>
>
>
> On Dec 4, 2016, at 9:26 AM, David Tait
> <david.tait 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
>
>
>
> 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>
>
> www.icann.org[icann.org]<http://www.icann.org>[icann.org]
>
>
>
> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
>
>
>
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