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

Paul Keating Paul at law.es
Wed Dec 7 13:48:43 UTC 2016


J. Scott,

I believe the term “generic” is widely understood.  In crude terms it
means a word that ultimately defines the thing.  I believe you are caught
up in the fact that a generic term can ALSO be used in a non-generic
sense.  While I accept that a generic term can serve as a trademark if
used in a non-generic sense, that is not always or even often how it plays
out in trademark registrations.  While the USPTO is fairly good at
preventing generic registrations, its records are rather rife with
examples of registered marks that include generic terms which are not
themselves disclaimed.  Further, in the US there has been a long history
of abuse (IMHO) of generic/descriptive terms that have been registered
under 2F.  Outside the US the registrations are not subject to even the
USPTO level of scrutiny.  Also, in the EU and elsewhere, use is not
required which leads to a laundry list of classifications, most of which
include generic uses which are not excluded by disclaimer or otherwise.

My concern is that while the TMCH is a database, its use has far more
applied significance in the registration process.

So, I do not have any difficulty with the term “generic” as used in the
questions.  The issue you point out will be duly sorted out in the context
of answering the questions with the ultimate decision being addressed in
the context of a UDRP or litigation proceeding depending upon the use to
which the domain is placed by the registrant.

Regards,

Paul



On 12/7/16, 2:03 PM, "J. Scott Evans" <gnso-rpm-wg-bounces at icann.org on
behalf of jsevans at adobe.com> wrote:

>As I repeatedly have stated on this thread, I think nomenclature is VERY
>important here. I do not and will not agree to use of the term ³generic.²
>
>Having said that, I also recognize George¹s point that there may be
>multiple users of dictionary terms and other alphanumeric monikers used by
>different players in the marketplace. The RPMs are designed to prevent
>infringement and cybersquatting, not guarantee an absolute monopoly. If we
>find that numerous parties with legitimate rights are being left out of
>the system or finding it difficult to get protection or to use their
>moniker, we need to figure out a solution to that problem. However, I am
>not aware that this massive deficit in domains is harming Internet users.
>If harm can be demonstrated, not just hypothesized about based on a
>fundamental dislike of sunrise registrations.
>
>J. Scott
>
>J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
>Domains & Marketing |
>Adobe
>345 Park Avenue
>San Jose, CA 95110
>408.536.5336 (tel), 408.709.6162 (cell)
>jsevans at adobe.com
>www.adobe.com
>
>
>
>
>
>
>
>
>On 12/7/16, 4:11 AM, "gnso-rpm-wg-bounces at icann.org on behalf of George
>Kirikos" <gnso-rpm-wg-bounces at icann.org on behalf of icann at leap.com>
>wrote:
>
>>Well said, Edward. Let's not get distracted by pedantic criticisms,
>>and instead look at the big picture, namely that a trademark does not
>>entitle its owner to have a right of first refusal or a priority right
>>to that term in every gTLD.
>>
>>Where there are multiple users of a term (whether it's a dictionary
>>word, acronym, or other frequently used term, or string of
>>alphanumeric characters), those other good faith non-trademark owner
>>users (both actual and prospective) should have equal access to
>>register that term. To do otherwise represents a prior restraint on
>>speech.
>>
>>If those users *later* abuse that registration by infringing someone's
>>rights, they should face the appropriate consequences.
>>
>>Sincerely,
>>
>>George Kirikos
>>416-588-0269
>>http://www.leap.com/
>>
>>On Tue, Dec 6, 2016 at 8:14 PM, Edward Morris <egmorris1 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:
>>>
>>> ³terms that the relevant purchasing public understands primarily as the
>>> common or class name for the goods or services."
>>>
>>> These terms are simply incapable of functioning as trade marks denoting
>>> source in any jurisdiction I am aware of, and are not even registrable,
>>>for
>>> example, in the United States on the Principal Register under §2(f) or
>>>on
>>> the Supplemental Register. Illustrative examples include: CLASSES
>>>ONLINE for
>>> classes provided via the Internet, PIZZA.COM for pizza ordering and
>>>delivery
>>> services, and LIVE PLANTS for plant nurseries.²
>>> https://www.uspto.gov/learning-and-resources/glossary#sec-g
>>>
>>> The INTA teaches the same ³common knowledge² approach as the USPTO:
>>>
>>> ³Generic words can be thought of as the common name of the problem or
>>> service in question ­ for example, ³clock² is a generic word for
>>> timepieces.²  Because these are the common names of goods and services,
>>>the
>>> first rule of trade mark law is that ³[s]uch words can never be
>>>appropriated
>>> by a single party as a trademark for the products and services they
>>>signify²
>>> ((from the INTA publication quoted below in the e-mail that started
>>>this
>>> thread).
>>>
>>> The question our working group has been asked in its Charter is whether
>>>the
>>> TMCH Database and RPM Mechanisms are protecting a trade mark far beyond
>>>its
>>> category of goods and services.  Are we perhaps creating processes that
>>>may
>>> remove the registration of domain names for generic words from domain
>>>name
>>> registrants? That seems a very valid question to ask with very
>>>important
>>> implications for our work.
>>>
>>> As Kathy Kleiman pointed out in her post to this group of September
>>>29th,
>>> there may even be free expression aspects to this issue. In responding
>>>to J.
>>> Scott¹s raising of this issue she wrote:
>>>
>>> ³When basic words of political discourse such as FREEDOM (USPTO IC 028
>>> Mounts and mounting devices adapted for use with suspended physical
>>>fitness
>>> equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing muffs,
>>>namely,
>>> sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 028. In-line
>>>skate
>>> liners. Reg No. 4301142) are used as trademarks, but also play an
>>>integral
>>> role in the fabric of political dialogue, we have a Free Expression
>>>issue
>>> and concern before us.²
>>>
>>> What happens if Registrants can¹t register these words for the free
>>> expression uses to which they are most directly (and generically)
>>>directed
>>> and applied to?
>>>
>>> Throwing ³generic² out of the question seems, well, rather out of the
>>> question. It is a basic and understood term and it would be unfair to
>>>the
>>> group(s) that posed these questions, and to those of us on the GNSO
>>>Council
>>> who saw fit to send to these queries to this working group in the
>>>Charter
>>> itself, to exclude this line of inquiry. It seems to me that if we
>>>don¹t
>>> want to inappropriately expand trademark protection, as Luc has pointed
>>>out,
>>> we really need to include this question as we move forward.
>>>
>>> John, I do recognize that the wording itself may not be perfect.
>>>Perhaps you
>>> could offer a rephrasing the keeps the powerful and valid intent of the
>>> question with wording you might be more comfortable with.
>>>
>>> Thanks for considering.
>>>
>>> Kind Regards,
>>>
>>> Edward Morris
>>>
>>>
>>>
>>> ________________________________
>>> From: "John McElwaine" <john.mcelwaine 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 ³generic² mean
>>> something.  While it is possible to have a dictionary term as a domain
>>>name
>>> or mark, it is not possible to have a domain name or mark that is
>>>generic,
>>> solely because it can be found in the dictionary.  An extra step of
>>>analysis
>>> and investigation is required, which is likely outside the scope of
>>>this
>>> Working Group¹s remit and capabilities and outside the remit and
>>> capabilities of the TMCH.
>>>
>>>
>>>
>>> Legally speaking, generic terms are words that the relevant purchasing
>>> public understands primarily as the common or class name for the goods
>>>or
>>> services.  Applying United States trademark law, determining whether a
>>>mark
>>> is generic requires the finder of fact to examine (1) the genus of the
>>>goods
>>> or services at issue; and (2) whether the relevant public understands
>>>the
>>> applicant's mark/designation primarily to refer to that genus of
>>>services.
>>> H. Marvin Ginn Corp. v. International Ass¹n of Fire Chiefs, Inc., 782
>>>F.2d
>>> 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
>>>
>>>
>>>
>>> So to determine whether a mark is considered "generic" there must be an
>>> initial analysis of whether the mark is a word that is a genus of a
>>>quality,
>>> feature, function, or characteristic, but of what?  In order to answer
>>>the
>>> rest of the question, we would be forced to look at the goods or
>>>services
>>> claimed in the registration or the content and/or stated mission and
>>>purpose
>>> of the domain name, to make a determination of genericness.
>>>Complicating
>>> things, this analysis is not a bright line analysis and there are
>>>several
>>> nuances to the relatively straight-forward test set forth above.  For
>>> instance, a word that has been used on a wide range of different types
>>>of
>>> products or services that are not within the same species may be less
>>>likely
>>> to be considered generic.  See 2 J. Thomas McCarthy, McCarthy on
>>>Trademarks
>>> and Unfair Competition § 12:23 (4th ed. 2009).  Moreover, a proper
>>>analysis
>>> requires an in-depth factual investigation of the relevant public's
>>> understanding of the alleged generic term.
>>>
>>>
>>>
>>> As we have discussed on our calls,  it is important to be precise in
>>>our
>>> terminology and for the reasons set forth above, I think we should
>>>remove
>>> the term ³generic² from our discussions relating to the TMCH and
>>>dictionary
>>> terms.  It would be a large (that may be an understatement) undertaking
>>>for
>>> this Working Group or the TMCH to make an accurate determination of
>>>whether
>>> a mark in the TMCH is generic or whether a domain name registrant (with
>>>a
>>> mark in the TMCH) intends to use it in a manner that would be
>>>considered
>>> generic.
>>>
>>>
>>>
>>> Thanks,
>>>
>>>
>>>
>>> John
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>>
>>> From: gnso-rpm-wg-bounces 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 Kleiman¹s request, and to facilitate discussion of this, issue
>>> staff is circulating the email below to the full Working Group.
>>>
>>>
>>>
>>> Kind regards,
>>>
>>> David
>>>
>>>
>>>
>>> From: Kathy Kleiman <kathy 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, ³clock² is a generic word for timepieces. Such
>>>words
>>> can never be appropriated by a single party as trademarks for the
>>>products
>>> or services they signify, since the public perceives and uses them
>>>solely as
>>> common nouns or terms. Generic words or phrases are not registrable or
>>> protectable in relation to the products or services they signify."
>>>
>>>http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFa
>>>c
>>>tSheet.aspx[inta.org]
>>>
>>> So the question of whether, through the TMCH Database or its associated
>>> Rights Protection Mechanisms, is granting protection to a trademark,
>>>which
>>> also happens to be a generic word (see INTA above), beyond its
>>>categories of
>>> goods and services is a fair one.
>>>
>>> Besides, there were numerous charter questions on this issue. We can't
>>> simply delete it.  But if you would like to offer a clearer way to
>>>phrase
>>> the question, please do.
>>>
>>> Best, Kathy
>>>
>>>
>>>
>>> On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
>>>
>>> Hi David,
>>>
>>>
>>>
>>> I wasn't able to attend the call on Friday. Can you please explain why
>>> Question 10 was marked green for accepted with legally inappropriate
>>> terminology?
>>>
>>>
>>>
>>> Thanks,
>>>
>>>
>>>
>>> Kiran
>>>
>>>
>>>
>>> Kiran Malancharuvil
>>>
>>> Policy Counselor
>>>
>>> MarkMonitor
>>>
>>> 415-419-9138 (m)
>>>
>>>
>>>
>>> Sent from my mobile, please excuse any typos.
>>>
>>>
>>>
>>> On Dec 4, 2016, at 9:26 AM, David Tait
>>> <david.tait 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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