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

Jonathan Agmon jonathan.agmon at ip-law.legal
Tue Dec 13 11:12:06 UTC 2016


Just to contribute another angle and perhaps a helpful example. 

I think that dictionary words and generic terms are two different species. A dictionary word is a word that is defined in the dictionary. For example the word "apple" is defined as "a fruit (as a star apple) or other vegetative growth". A generic term is a legal standard in trademark law denoting a mark whose source cannot be identified by consumers. And if consumers think that a single source exists for that term then by law the term is not generic. Therefore, in this example, APPLE, a dictionary word by all accounts, may be a dictionary word for fruit, is not a generic term and will in all likelihood be considered a strong trademark for computers. 

This is just one example and you should consider that the term "generic" as a term of art in trademark law. It has nothing to do with dictionary words. Moreover, some dictionary words can be weak trademarks at one time and strong trademarks at another time. 

You can consider for example the marks NYLON or XEROX. You can find both of them in the dictionary. The term NYLON was an invented mark, invented in 1935 by DuPont. It arguably became generic (from a trademark perspective) when consumers all started referring to synthetic polymers from every manufacture (not just DuPont) as Nylon.  XEROX invented a photocopying machine. The term came close to turning generic when in the eighties consumers used the verb "Xeroxing" instead of "photocopying". Xeorx, the company changed that and today by all accounts the mark XEROX is not generic but rather a trademark for photocopying machines. 

Taking the above into account ,the policies below state "generic or descriptive" not generic or dictionary words. The term descriptive is another term of art in trademark law, which refers to a trademark that describes the goods it is applied to. The examples of "toy, shop, cleaner, lawyer..." are only descriptive for the relevant goods or services they are attached to. Non-lawyers would immediately associate these terms with their respective meaning.  But, these terms can serve as trademarks too. It all depends on the circumstances and consumer perception. One last example would be the use of TOY on a yogurt product. Check out the attachment - the term JOY is applied to a yogurt product. While the term JOY can be descriptive of a feeling, it is not descriptive for yogurt products. So long as consumers don’t call any yogurt product JOY, then it is also not generic. 

I hope this helps.


Jonathan Agmon(???)
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This message is confidential. It may also be privileged or otherwise protected by work product immunity or other legal rules. If you have received it by mistake, please let us know by e-mail reply and delete it from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Beckham, Brian
Sent: Tuesday, December 13, 2016 5:42 PM
To: Paul Keating <Paul at law.es>; J. Scott Evans <jsevans at adobe.com>; George Kirikos <icann at leap.com>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016

Paul, all,

A timely post on CircleID speaks to (intentional) confusion on the "generic"/dictionary dichotomy:  http://www.circleid.com/posts/20161212_appearing_respondents_called_out_as_cybersquatters/

In that post, Mr. Levine notes:

"There's continuing confusion among domain buyers (not likely to be professional investors) that dictionary words are 'generic' therefore available to the first to register them. That's not the case at all. There are numerous trademarks composed of common words; weak perhaps, and vulnerable when combined with other common words but nevertheless protectable with sufficient proof of bad faith."


-----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 10:24 PM
To: J. Scott Evans; George Kirikos; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016

But it does show that it is not so much rocket science.

On 12/12/16, 10:11 PM, "J. Scott Evans" <gnso-rpm-wg-bounces at icann.org on behalf of jsevans at adobe.com> wrote:

>That don¹t make it right.
>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 12/12/16, 10:04 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>
>>FYI, re: "generic", both the .uk and the .nz dispute policies 
>>reference "generic" domain names, see:
>>"8.1.2 The Domain Name is generic or descriptive and the Respondent is 
>>making fair use of it;"
>>.nz: https://www.dnc.org.nz/resource-library/policies/65
>>"Generic Term means a word or phrase that is a common name in general 
>>public use for a product, service, profession, place or thing. For
>>example: toy; shop; cleaner; lawyers; Wellington; sparkling-wine"
>>"6.1.2. The Domain Name is generic or descriptive and the Respondent 
>>is making fair use of it in a way which is consistent with its generic 
>>or descriptive character;"
>>George Kirikos
>>gnso-rpm-wg mailing list
>>gnso-rpm-wg at icann.org
>gnso-rpm-wg mailing list
>gnso-rpm-wg at icann.org

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