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

Marie Pattullo marie.pattullo at aim.be
Tue Dec 13 15:34:52 UTC 2016 

I’ve spent the afternoon back reading the threads here and I have to hold my
hands up and admit I’m confused. We all know that ICANN isn’t a legislative
body, and we all know that it can’t (and I very much doubt it would want
to!) make law. Various laws in the various jurisdictions around the world
include various TM laws, which in turn include rules and practises for how
and why TMs are granted. That’s what the TMCH is - a repository of TMs that
have been legally granted. No?
 
And unless and until a TM lapses, or is cancelled, it’s as much a legal
property right as any other. It can’t be OK for an independent
administrative repository of TMs to decide to ignore some legal property
rights, surely? If the TMCH were just a private list with no function then
we’d be on different ground, but given that it’s the gatekeeper for
accessing certain RPMs I can’t see under what basis this administrative
repository could be allowed to choose which property rights are allowed
through the gate and which aren’t. 
 
I’m sorry if this is naïve, but I honestly don’t understand how the TMCH can
be the court of appeal for the legality of TM rights. Isn’t that why we have
actual courts? And holding it out to be some form of appeal body is surely
only going to confuse non-TM people, like most registrants, as to its
“powers”.
 
Following that, and John’s questions, what are we trying to do? Limit any DN
containing a TM to uses that the TM has in the offline world? But not
limiting any other word to uses it may have offline? So isn’t that actually
discriminating against words that are in TMs against words that aren’t -
dictionary, arbitrary, proper or just plain made up? What are we actually
trying to do?
 
I’m sorry for the TLDR post and sorry also for my confusion. I plead
fuzziness of brain brought on by sociable Belgian cold viruses.
 
Thanks
 
Marie
 
AIM_logo_EN_RGB
 
Marie Pattullo
Senior Trade Marks and Brand Protection Manager
AIM - European Brands Association
9 avenue des Gaulois
B-1040 Brussels
Tel : + 32 2 736 03 05 
Mobile: + 32 496 61 03 95
EU Transparency register ID no.: 1074382679-01
Visit our web site at  <http://www.aim.be/> www.aim.be 
Follow us on:
 <http://twitter.com/AIMbrands> cid:image002.png at 01CF7513.F273FDB0
<http://www.linkedin.com/company/aim---european-brands-association?trk=compa
ny_name> cid:image003.png at 01CF7513.F273FDB0
 
 
 
-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
On Behalf Of John McElwaine
Sent: mardi 13 décembre 2016 16:06
To: Phil Corwin; J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham,
Brian; George Kirikos; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
categories document - 2 December 2016
 
Phil,
 
Thanks for this.  I'm just seeking some clarification:   Does this question
seek whether the TMCH should be limited in its application to Trademark
Claims Notices and Sunrise Processes in which the domain name being
registered is going to be used in a manner that relates to the goods and
services contained in the registration, if the registration consists of a
word found in a dictionary?
 
Kind regards,
 
John
 
-----Original Message-----
From:  <mailto:gnso-rpm-wg-bounces at icann.org> 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 Phil Corwin
Sent: Tuesday, December 13, 2016 8:58 AM
To: J. Scott Evans; Paul Keating; Jonathan Agmon; Beckham, Brian; George
Kirikos;  <mailto:gnso-rpm-wg at icann.org> gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
categories document - 2 December 2016
 
Good day to all. I have been tied up this morning on the call of the WS2
Jurisdiction subgroup.
 
The proposed compromise language agreed upon by the co-chairs and suggested
for your consideration as a path forward so we can get the questions out and
get on to the work of reviewing and understanding the answers is as follows:
 
        Should the scope of the TMCH be limited to apply only to the
categories of goods and services in which the dictionary term(s) within a
trademark are protected? If so, how?  In responding to this question, you
should note that the original submitters of the related       charter
questions seem to be been particularly concerned about "generic terms"
representing the common or class name for the    goods and services.
 
We hope this proposed formulation will prove acceptable to members of this
WG. Thanks for your consideration.
 
Best to all, Philip
 
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
 
Twitter: @VlawDC
 
"Luck is the residue of design" -- Branch Rickey
 
 
-----Original Message-----
From:  <mailto:gnso-rpm-wg-bounces at icann.org> 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 J. Scott Evans
Sent: Tuesday, December 13, 2016 7:24 AM
To: Paul Keating; Jonathan Agmon; Beckham, Brian; George Kirikos;
<mailto:gnso-rpm-wg at icann.org> gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
categories document - 2 December 2016
Importance: High
 
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)
 <mailto:jsevans at adobe.com> jsevans at adobe.com
 <http://www.adobe.com> www.adobe.com
 
 
 
 
 
 
 
 
On 12/13/16, 4:18 AM, "Paul Keating" < <mailto:Paul at law.es> Paul at law.es>
wrote:
 
>Please circulate it prior to the call.
> 
>On 12/13/16, 1:10 PM, "J. Scott Evans" < <mailto:jsevans at adobe.com>
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)  <mailto:jsevans at adobe.com>
jsevans at adobe.com 
>> <http://www.adobe.com> www.adobe.com
>> 
>> 
>> 
>> 
>> 
>> 
>> 
>> 
>>On 12/13/16, 4:06 AM, "Paul Keating" < <mailto:Paul at law.es> 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" < <mailto:jsevans at adobe.com>
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)  <mailto:jsevans at adobe.com>
jsevans at adobe.com 
>>>> <http://www.adobe.com> www.adobe.com
>>>> 
>>>> 
>>>> 
>>>> 
>>>> 
>>>> 
>>>> 
>>>> 
>>>>On 12/13/16, 3:44 AM, "Paul Keating" < <mailto:Paul at law.es> 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" 
>>>>>< <mailto:jonathan.agmon at ip-law.legal> 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
>>>>>> <mailto:jonathan.agmon at ip-law.legal> jonathan.agmon at ip-law.legal
>>>>>> <http://www.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 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:  <mailto:gnso-rpm-wg-bounces at icann.org>
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 Beckham, Brian
>>>>>>Sent: Tuesday, December 13, 2016 5:42 PM
>>>>>>To: Paul Keating < <mailto:Paul at law.es> Paul at law.es>; J. Scott Evans 
>>>>>>< <mailto:jsevans at adobe.com> jsevans at adobe.com>; George Kirikos <
<mailto:icann at leap.com> icann at leap.com>; 
>>>>>> <mailto:gnso-rpm-wg at icann.org> 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_calle>
http://www.circleid.com/posts/20161212_appearing_respondents_calle
>>>>>>d_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:  <mailto:gnso-rpm-wg-bounces at icann.org>
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 Paul Keating
>>>>>>Sent: Monday, December 12, 2016 10:24 PM
>>>>>>To: J. Scott Evans; George Kirikos;  <mailto:gnso-rpm-wg at icann.org>
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  <mailto:jsevans at adobe.com> 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)  <mailto:jsevans at adobe.com>
jsevans at adobe.com 
>>>>>>> <http://www.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 
>>>>>>> <mailto:icann at leap.com> 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/>
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>
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/> http://www.leap.com/
>>>>>>>>_______________________________________________
>>>>>>>>gnso-rpm-wg mailing list
>>>>>>>> <mailto:gnso-rpm-wg at icann.org> gnso-rpm-wg at icann.org
>>>>>>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>>> 
>>>>>>> 
>>>>>>>________________________________
>>>>>>> 
>>>>>>><ACL>
>>>>>>>_______________________________________________
>>>>>>>gnso-rpm-wg mailing list
>>>>>>> <mailto:gnso-rpm-wg at icann.org> gnso-rpm-wg at icann.org
>>>>>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>> 
>>>>>> 
>>>>>>_______________________________________________
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>>>>>> <https://mm.icann.org/mailman/listinfo/gnso-rpm-wg>
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>>>>>> 
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>>>>> 
>>>>> 
>>>> 
>>> 
>>> 
>> 
> 
> 
 
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