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

Mon Dec 12 19:46:35 UTC 2016

Paul,

Thanks for your email and the proposed solutions. I think your concerns are at a higher level than what kicked-off this discussion.  In fact, I believe that a good part of this discussion is caused more by the interpretation of the specific question at issue.  The particular question that kicked this all off and led to the legal term "generic" being discussed is referenced in Question 10 or Category 3, Q. 2:

2.  Should the scope of the TMCH be limited to apply only to the categories of goods and services in which the generic term(s) within a trademark are protected? If so, how?

As an initial matter, I am not exactly sure what this question means; however, I believe that the drafters are saying "should a trademark registration recorded with the TMCH be limited to only providing Claims Notice and Sunrise Eligibility for a domain name where a characteristic or quality of the goods or services related to that domain name would not be considered generic (i.e., a common category or genus of such goods or services)"?

Perhaps someone can provide more clarity on this question, or we can reach a better understanding on the call Wednesday.  I think that issue will be first up.

Best,

John

-----Original Message-----
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 12:51 PM
To: Luc SEUFER; Thomas, Christopher M.
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Updated TMCH Charter Questions tabulated categories document - 2 December 2016

First, I am sorry that my current work load has prohibited me from participating in the recent calls.

Second, with all due respect to John, Chris and Luc, the same analysis John referenced below would be required to refer to a term as ³merely descriptive².  I see no difference and I see no reason to remove the term ³generic².

We are merely proposing questions to be answered here.  Further, the real issue is whether the TMCH is having an unreasonable chilling effect on domain name registrations via the methods in which the database is being used (reservation, sunrise, post sunrise notification, etc).

We may all decide there is no issue.  I can think of any number of potential ³solutions² should the group decide there is an issue.  A few could include adding to the notice provided to the potential registrant advising that the term has generic or descriptive applications or a certification by the trademark holder that it does not.

Paul Keating

On 12/6/16, 4:23 PM, "Luc SEUFER" <gnso-rpm-wg-bounces at icann.org on behalf of lseufer at dclgroup.eu> wrote:

>Agreed we have to keep in mind that the TMCH is not meant to create new
>rights, only to record existing ones.
>
>Luc
>
>On 6 Dec 2016, at 15:57, Thomas, Christopher M.
><christhomas at parkerpoe.com<mailto:christhomas at parkerpoe.com>> wrote:
>
>
>
>I agree with John¹s points and conclusions below.
>
>Thanks,
>Chris
>
>
>________________________________
>Christopher Thomas
>Partner
>
>[Parker Poe]
>
>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>
>[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<mailto: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>
>[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<mailto: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<mailto:kathy at kathykleiman.com>>
>Date: Sunday, 4 December 2016 at 19:40
>To: Kiran Malancharuvil
><Kiran.Malancharuvil at markmonitor.com<mailto:Kiran.Malancharuvil at markmon
>ito r.com>>, David Tait
><david.tait at icann.org<mailto:david.tait at icann.org>>
>Cc: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>, Susan
>Payne <susan.payne at valideus.com<mailto:susan.payne at valideus.com>>,
>Edward Morris
><edward.morris at alumni.usc.edu<mailto:edward.morris at alumni.usc.edu>>,
>Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>>,
>"Sarahliannec at gmail.com<mailto:Sarahliannec at gmail.com>"
><Sarahliannec at gmail.com<mailto:Sarahliannec at gmail.com>>, Paul Keating
><paul at law.es<mailto:paul at law.es>>,
>"kurt at kjpritz.com<mailto:kurt at kjpritz.com>"
><kurt at kjpritz.com<mailto:kurt at kjpritz.com>>,
>"gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>"
><gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>>, "Vaibhav Aggarwal,
>Group CEO & Founder" <va at bladebrains.com<mailto:va at bladebrains.com>>,
>Sarah Clayton <Sarahliannec at gmail.com<mailto: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
>act
>Sheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A
>__w
>ww.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet
>.as
>px&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0
>bzf
>6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-
>Vz2 c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&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><mailto:david.tait at ic
>ann .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><mailto:david.tait at icann.
>org><mailto:david.tait at icann.org>
>
>www.icann.org[icann.org]<https://urldefense.proofpoint.com/v2/url?u=htt
>p-3
>A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM
>&r=
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>V61
>pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=><http:
>//w
>ww.icann.org>[icann.org]<https://urldefense.proofpoint.com/v2/url?u=htt
>p-3
>A__www.icann.org&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM
>&r=
>KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8t
>V61 pLQgKc9fMl-Vz2c&s=JiMM6ztBpVOPYcTce-_P6-PVpsHNDiiwx9rqfKCTHiE&e=>
>
>
>
><Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
>
>
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