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

Tue Dec 13 16:47:48 UTC 2016

All,
When we were in the TMCH Charter Questions Subgroup meetings, Phil 
Corwin mentioned something that stayed with me. He pointed out that 
Charter Questions are really here to guide the WG to an area of inquiry 
- not define, limit or shape that discussion. I think this analysis 
makes sense and I have thought about it often since he said it.

I would respectfully submit that this revised Charter Question is 
designed to start a discussion - -not define, limit or shape them. This 
is not a "certified question" to a Court which must be narrowly 
construed. It is a broader question reflecting an issue of importance to 
the Community, placed in our Charter by the GNSO Council who has asked 
us to conduct an inquiry into it. (Note: the GNSO Council sent us 
several questions on this issue.) Thus, it is a "kick off" question to 
start a discussion/inquiry -- and many more questions and issues may 
flow from it (as the email discussion shows it will!)

So I would ask that we take a deep breath, and accept the question for 
what it is -- a starting point.
A kick off...
Best, Kathy

On 12/13/2016 10:06 AM, John McElwaine wrote:
> 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: 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; 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: 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; 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)
> 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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>>>>>>> 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
>>>>>>>>
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