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

Paul Keating Paul at law.es
Tue Dec 13 11:44:55 UTC 2016


Not to be nit-picky but your definition is incorrect.

Generic:  Relating to or characteristic of a whole group or class;
general, as opposed to specific or special.  (Black’s Law Dictionary)

A ‘generic term” is one which is commonly used as the name or description
of a kind of goods and it is generally accepted that a generic term is
incapable of achieving trade name protection.  For example, any single
seller can not have trademark rights in “television” or “oven.” When a
seller is given exclusive rights to call something by its recognized name,
it would amount to a practical monopoly on selling that type of product.
Even established trademarks can lose their protection if they are used
generically. For example (in U.S.), thermos and aspirin.

A descriptive term (which many people refer to as a “dictionary term”) is
merely that - a term used in its descriptive sense (e.g. “Redbarn” is
descriptive for selling red barns but not for hotels).

Treatment in differing jurisdictions complicates matters.  For example,
the term “donut” is a trademark in Spain for donuts.  It was obtained way
back when when the registrant saw donuts during a visit to the US,
returned to Spain and began producing them and registered the trademark.

Thus, the term has nothing to do with consumer perception of source.

Moreover, most generic terms are by definition “in the dictionary”.

The problem I encounter most with generic/descriptive terms are in the
context of figurative marks.  Although the USPTO is getting better at
requiring disclaimers, they were not so diligent in the future.  In my
experience, most other jurisdictions do not rigorously impose disclaimer

Another source of constant frustration is with Section 2(f).  Again, while
the USPTO appears to becoming more diligent they were simply horrible in
the past.  Other jurisdictions do not have a similar provision and, for
example, France, has a terrible reputation for registering even the most
descriptive (and even generic) terms.

I think the question regarding generic marks in the TMCH has merit and
should be discussed and this thread is but one example of why.  Again,
whether we reach conclusions as to the question is a different issue for a
different day.

Paul Keating

On 12/13/16, 12:12 PM, "Jonathan Agmon" <jonathan.agmon at ip-law.legal>

>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(???)
>Advocate, PARTNER
>jonathan.agmon at ip-law.legal
>Soroker Agmon Nordman Pte Ltd.
>133 New Bridge Road, #13-02, 059413 SINGAPORE
>8 Hahoshlim Street, 4672408 Herzliya, ISRAEL
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>F IL +972 9 950 5500
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>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:
>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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