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

Tue Dec 13 12:10:22 UTC 2016

The Co-Chairs have a proposed compromise revision drafted by Phil that we
will propose to the group.

J. Scott

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 12/13/16, 4:06 AM, "Paul Keating" <Paul at law.es> wrote:

>Good suggestion J. Scott.
>
>Can we live with the question as follows?
>
>Should the scope of the TMCH be limited in its application to trademarks
>containing dictionary terms which are generic or descriptive?  If so how?
>
>
>
>Paul
>
>
>On 12/13/16, 12:51 PM, "J. Scott Evans" <jsevans at adobe.com> wrote:
>
>>Again, and at the risk of repeating myself. And, as Brian Beckham pointed
>>out this morning, there are quite a few of us in the ICANN community and
>>on the list that understand the nuances of generic, descriptive,
>>arbitrary
>>and fanciful marks as land out in Abercrombie by Learned Hand oh so long
>>ago. However, in the bigger picture policy debate most stakeholders do
>>not
>>understand. They believe that a term is “generic” if it is a WORD with a
>>meaning and are quite frustrated when they find that they cannot own
>>ACETOOLS.COM for their site that is for really cool tools. This
>>misunderstanding is then conflated in the policy debate and causes all
>>kinds of confusion and misunderstanding. Hence, I believe the better term
>>is “dictionary term” which under the Abercrombie factors can be either
>>generic, descriptive or arbitrary depending on the circumstances.
>>
>>J. Scott
>>
>>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 12/13/16, 3:44 AM, "Paul Keating" <Paul at law.es> wrote:
>>
>>>Jonathan,
>>>
>>>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
>>>obligations.
>>>
>>>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>
>>>wrote:
>>>
>>>>All,
>>>>
>>>>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
>>>>www.ip-law.legal
>>>>Soroker Agmon Nordman Pte Ltd.
>>>>133 New Bridge Road, #13-02, 059413 SINGAPORE
>>>>8 Hahoshlim Street, 4672408 Herzliya, ISRAEL
>>>>T SG +65 6532 2577
>>>>T US +1 212 999 6180
>>>>T IL +972 9 950 7000
>>>>F IL +972 9 950 5500
>>>>
>>>>This message is confidential. It may also be privileged or otherwise
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>>>>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
>>>>_
>>>>a
>>>>s
>>>>_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."
>>>>
>>>>Brian
>>>>
>>>>-----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>
>>>>>wrote:
>>>>>
>>>>>>FYI, re: "generic", both the .uk and the .nz dispute policies
>>>>>>reference "generic" domain names, see:
>>>>>>
>>>>>>.uk:
>>>>>>http://nominet-prod.s3.amazonaws.com/wp-content/uploads/2016/08/Final
>>>>>>-
>>>>>>pro
>>>>>>p
>>>>>>osed-DRS-Policy.pdf
>>>>>>
>>>>>>"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;"
>>>>>>
>>>>>>Sincerely,
>>>>>>
>>>>>>George Kirikos
>>>>>>416-588-0269
>>>>>>http://www.leap.com/
>>>>>>_______________________________________________
>>>>>>gnso-rpm-wg mailing list
>>>>>>gnso-rpm-wg at icann.org
>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>
>>>>>
>>>>>________________________________
>>>>>
>>>>><ACL>
>>>>>_______________________________________________
>>>>>gnso-rpm-wg mailing list
>>>>>gnso-rpm-wg at icann.org
>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>
>>>>
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>>
>
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