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

Paul Keating Paul at law.es
Mon Dec 12 17:52:46 UTC 2016

I understand your point Marie but your conclusion presupposes the purpose of
the question which is to investigate.  We are IMHO too early in the process
to conclude that TMCH should not be placed in a position rendering a


From:  <gnso-rpm-wg-bounces at icann.org> on behalf of Marie Pattullo
<marie.pattullo at aim.be>
Date:  Tuesday, December 6, 2016 at 4:02 PM
To:  "Thomas, Christopher M." <christhomas at parkerpoe.com>
Cc:  "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

> I also fully agree with John; this isn't the place to go into European Trade
> Mark Law, or practice, but the basis is the same. The TMCH can't be called
> upon to take decisions on how and to whom to grant TMs, of course, and this
> will only confuse.
> Marie 
> Sent from my iPhone, sorry for typos
> On 6 Dec 2016, at 15:57, Thomas, Christopher M. <christhomas at parkerpoe.com>
> wrote:
>> I agree with John’s points and conclusions below.
>> Thanks,
>> Chris 
>> Christopher Thomas
>> Partner
>> PNC Plaza | 301 Fayetteville Street | Suite 1400 | Raleigh, NC 27601
>> Office: 919.835.4641 | Fax: 919.834.4564 | vcard
>> <http://www.parkerpoe.com/GetVcard?ID=28245>  | map
>> <https://www.google.com/maps/place/PNC+Plaza,+Raleigh,+NC+27601>
>> Visit our website at
>> www.parkerpoe.com <http://www.parkerpoe.com>
>> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
>> Behalf Of John McElwaine
>> Sent: Tuesday, December 06, 2016 9:49 AM
>> To: David Tait; 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/TrademarkStrengthFactShe
>> et.aspx[inta.org]
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBa
>> sics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wr
>> crwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA
>> &m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr
>> 51Qb3RqKsrNZTpY&e=>
>> 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]
>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&
>>> c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfD
>>> d3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOP
>>> YcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=> <http://www.icann.org>[icann.org]
>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org&d=DgMD-g&
>>> c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfD
>>> d3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOP
>>> YcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=>
>>> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
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