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

Wed Dec 7 14:46:21 UTC 2016

With all due respect Paul, I disagree. As I have repeatedly stated the use
of the term “generic” creates a great amount of confusion. Confusion,
IMHO, that some in this debate use to their advantage. In a country that
now suffers from an overload of misinformation, I think we owe it to
ourselves to be clear. My concern is that many in the ICANN community view
all “dictionary terms” as a generic and constantly argue that such
“generic terms” do not deserve a heightened level of protection as
trademarks. That is incorrect. A “dictionary term” is only a “generic
term” in the trademark sense in certain specific circumstances. Given this
historical misunderstanding AND its use to bolster a flurry of righteous
indignation from those opposed to RPMs because they don’t understand the
nuance, I do not agree that the term “generic” should be used.

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, 5:48 AM, "Paul Keating" <Paul at law.es> wrote:

>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/TrademarkStrengthF
>>>>a
>>>>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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>>
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