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

Tue Dec 13 12:23:44 UTC 2016

Phil?

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, 4:18 AM, "Paul Keating" <Paul at law.es> wrote:

>Please circulate it prior to the call.
>
>On 12/13/16, 1:10 PM, "J. Scott Evans" <jsevans at adobe.com> wrote:
>
>>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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>>>>>>from your system; you may not copy this message or disclose its
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>>>>>>to anyone. Please send us by fax any message containing deadlines as
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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_o
>>>>>>u
>>>>>>t
>>>>>>_
>>>>>>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/Fin
>>>>>>>>a
>>>>>>>>l
>>>>>>>>-
>>>>>>>>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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