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

[Paul Keating]

That’s not what I meant.

The only thing I meant was that we are the questions stage only.  Whether or
not we recommend any change or action of any nature has yet to be discussed.
Thus, I meant that Marie was putting the cart before the  horse.

PRK

From:  "Beckham, Brian" <brian.beckham at wipo.int>
Date:  Monday, December 12, 2016 at 7:16 PM
To:  Paul Keating <paul at law.es>, Marie Pattullo <marie.pattullo at aim.be>,
"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

> Paul, 
>  
> If I correctly read your suggestion, in this context, the role of the TMCH
> should be limited to verifying whether a trademark registration certificate
> has issued;  the TMCH should not “render a decision” on a previously-obtained
> valid trademark registration.
>  
> This would inter alia risk undermining understandings achieved during the many
> AGB iterations, e.g., on trademark office examination grounds.
>  
> Regards,
>  
> Brian Beckham|Head, Internet Dispute Resolution Section|WIPO Arbitration and
> Mediation Center
> 34 chemin des Colombettes, 1211 Geneva 20, Switzerland|T +4122 338 8247|E
> brian.beckham at wipo.int|www.wipo.int <http://www.wipo.int/>
>  
>  
> 
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
> Behalf Of Paul Keating
> Sent: Monday, December 12, 2016 6:53 PM
> To: Marie Pattullo; Thomas, Christopher M.
> Cc: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
> categories document - 2 December 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 decision.
> 
>  
> 
> Paul  
> 
>  
> 
> 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/TrademarkStrengthFactSh
>>> eet.aspx[inta.org]
>>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkB
>>> asics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6
>>> wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87C
>>> fSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU
>>> 4Grr51Qb3RqKsrNZTpY&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=KScfcqapcv0bzf6fXXUcv9ZJuE
>>>> fDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBp
>>>> VOPYcTce-_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=KScfcqapcv0bzf6fXXUcv9ZJuE
>>>> fDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=JiMM6ztBp
>>>> VOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=>
>>>>  
>>>> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
>>>  
>>> Confidentiality Notice
>>> 
>>> This message is intended exclusively for the individual or entity to which
>>> it is addressed. This communication may contain information that is
>>> proprietary, privileged, confidential or otherwise legally exempt from
>>> disclosure.
>>> 
>>> If you are not the named addressee, you are not authorized to read, print,
>>> retain, copy or disseminate this message or any part of it. If you have
>>> received this message in error, please notify the sender immediately either
>>> by phone (800-237-2000) or reply to this e-mail and delete all copies of
>>> this message.
>>> 
>>> PRIVILEGED AND CONFIDENTIAL: This electronic message and any attachments are
>>> confidential property of the sender. The information is intended only for
>>> the use of the person to whom it was addressed. Any other interception,
>>> copying, accessing, or disclosure of this message is prohibited. The sender
>>> takes no responsibility for any unauthorized reliance on this message. If
>>> you have received this message in error, please immediately notify the
>>> sender and purge the message you received. Do not forward this message
>>> without permission. [ppab_p&c]
>>> 
>>> !DSPAM:5846d21a17627779611108!
>>> 
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org
>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>> 
>>> !DSPAM:5846d21a17627779611108!
>> _______________________________________________ gnso-rpm-wg mailing list
>> gnso-rpm-wg at icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>  
> 
> World Intellectual Property Organization Disclaimer: This electronic message
> may contain privileged, confidential and copyright protected information. If
> you have received this e-mail by mistake, please immediately notify the sender
> and delete this e-mail and all its attachments. Please ensure all e-mail
> attachments are scanned for viruses prior to opening or using.


-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20161212/b57ff377/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: ~WRD000.jpg
Type: image/jpeg
Size: 823 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20161212/b57ff377/WRD000-0001.jpg>