[gnso-rpm-wg] Recommendation for TMCH Charter Question #7
Kathy Kleiman
kathy at kathykleiman.com
Mon Apr 10 14:28:20 UTC 2017
All,
Clearly the Working Group is ready to move on to Sunrise, TM Claims and
Private Purposes, as am I. In an effort to help us complete the current
16 TMCH Charter Questions, I submit the recommendation below on Design
Marks for Question #7. In doing so, I am a) removing my hat as Co-Chair
and b) attempting to follow the outline set out by Phil Corwin on 4/9
(below).
Best, Kathy
---------------------------------------------------------------------------
*I. Design Mark Recommendation for Working Group - for Question #7 of
TMCH Charter Questions
*
A. Rationale for the proposal – Whereas:
1. The GNSO Council & ICANN Board-adopted recommendations (based on the
STI Final Report) were very clear about the type of mark to be accepted
by the Trademark Clearinghouse:
“4.1 National or Multinational Registered MarksThe TC Database should be
required to include nationally or multinationally registered “text mark”
trademarks, fromall jurisdictions, (including countries where there is
no substantive
review).”https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf
2. The adopted recommendations were also very clear about the Harm that
the STI Group saw from putting design marks into the TMCH Database:
“[Also 4.1] (The trademarks to be included inthe TC are text marks
because “design marks” provide protection for letters and words only
within the contextof their design or logo and the STI was under a
mandate not to expand existing trademark rights.)
3. The Applicant Guidebook adopted the same strictures, namely:
“3.2:Standards for inclusion in the Clearinghouse
3.2.1 Nationally or regionally registeredword marks from all
jurisdictions” See our WG document “Selected TMCH Charter Questions
compared with AGB & other community-developed materials - 28 Feb 2017.docx”
*4. Nonetheless, **Deloitte is accepting into the TMCH database design
marks, figurative marks, trademarks registered with wording that
includes designs, fonts and special lettering, colors, **and even
disclaimers on the underlying words of the trademark**, provided the
word(s) and/or letter(s) are readable and extractable. Deloitte is
extracting words and letters from designs and other forms of logo,
special lettering and other transformations to put the unadorned words
and letters into the TMCH database. *
/B. Harm from the Current Form/
The harm from this acceptance is that it gives too much weight to a word
or letters which received a trademark – and gives too many rights to one
trademark owner over others in similar businesses, fields and interests.
Specifically, a design mark is protection granted solely in conjunction
with its design, logo, lettering, patterns and/or colors (as examples).
As discussed above, the GNSO's Recommendations clearly felt that such
entry into the TMCH would be an unfair advantage for one trademark owner
over others in similar fields of goods and services: “(The trademarks to
be included in the TC are text marks because “design marks” provide
protection for letters and words only within the context of their design
or logo and the STI was under a mandate not to expand existing trademark
rights.)” [TC is Trademark Clearinghouse]
In evaluating the harm of entry into the TMCH database, this Working
Group should consider the discussion of the US Trademark Office on the
subject of design marks and disclaimers. In offering this material, I do
not submit it as global law (which is not), but as persuasive in setting
out the harms of favoring one competitor over another when it comes to
protecting the most basic words of their profession or work:
**
USPTO -
https://www.uspto.gov/trademark/laws-regulations/how-satisfy-disclaimer-requirement
“Some words and designs in a mark are not registrable because they are
needed by other people/businesses to be able to describe their goods,
services, and/or business. A disclaimer in your registration makes clear
to others that they may use the disclaimed terms without raising legal
objections.
“Typically, portions of a mark that are not registrable and require a
disclaimer are the following:
*
*Merely Descriptive*Words/Designs: Words/designs that describe your
goods and/or services (CREAMY for yogurt; or a realistic picture of
a cue stick and eight ball for billiard parlor services).
*
*Laudatory Words*that describe an alleged superior quality of the
goods and/or services
(GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon
services)
*
*Generic*Words/Designs: Words/designs that are the common name of
your goods and/or services (ASPIRIN for pain relief medication; or a
realistic picture of a yo-yo for toys).
*
*Geographic*Words/Designs: Words/designs that describe the origin of
your goods or the location where your services are provided (VENICE
for glassware from Venice, Italy; or a realistic map of Canada for
air charter services originating from Canada).
*
*Business Type Designations*: Designations that merely indicate
information about the type or structure of your business, such as
"Corporation," "Inc.," "Company," "Ltd.," "Bros."
*
*Informational *Words: Words that merely provide information about
your goods, services, or business, such as net weight, volume
statements, lists of contents, addresses and contact information,
and the year the business was established.”
* * *
“Descriptive, generic, geographic, or otherwise unregistrable wording,
designs, or symbols are needed by other people/businesses to describe or
market their goods and/or services (in advertising, on the web, etc.) or
to convey a message. Additionally, businesses often include in their
mark business identifiers that others may need to use to describe their
businesses. Because these words and/or designs need to be used by
others, they should not become the proprietary domain of any one party
and must be disclaimed.”
100.
/*Recommendation*/
/**/
1.
In the interest of the fairness and balance sought by the original
GNSO Council and Board-adopted recommendations and hopefully by this
Working Group as well, the Working Group should require that
Deloitte (and any future providers of TMCH verification services)
accept only trademarks registered as “word marks” per se into the
TMCH database – not words, characters and numbers extracted from
design marks, transformative, figurative marks and other trademarks
from amidst with patterns, logos, special lettering, colors and/or
other design, pattern and lettering aspects and features.
2.
Timing [Note: this is a proposal for our WG]: In fairness to the
current registrants of such marks, the Working Group recommends that
current registration continue in the TMCH Database for a period of
no longer than a year – to be canceled during the normal review of
TMCH registrations which we understand Deloitte conducts on an
annual basis.
3. We urge Deloitte to bring to the Working Group any questions
regarding this policy so that the Working Group can facilitate a
discussion of rules consistent with this recommendation.
On 4/9/2017 11:50 AM, Phil Corwin wrote:
>
> Some excellent comments on this thread.
>
> It’s not clear to me whether it’s the Board’s policy to require new
> gTLD registries to offer both a sunrise registration period and a
> claims notice period of at least 90 days, or a staff implementation
> decision, but that’s probably not the most important consideration now
> given that it was the standard practice for the first round. Jon has
> identified an issue that might have fallen through the cracks
> otherwise since it is about the relationship between the two
> TMCH-based RPMs rather than their separate operation.
>
> If there is indeed sentiment to consider modifying that requirement,
> but if there is also some consensus that the availability of sunrise
> is more important for TM holders, then a proposal to simply substitute
> “or” for “and” may not be viable because that would leave the
> possibility that some new gTLDs in subsequent rounds would choose TM
> Claims and have no Sunrise period. So maybe a more nuanced approach
> would be to require Sunrise but leave Claims as a voluntary option.
> But that could mean no generation of TM Claims at many gTLDs in
> subsequent rounds.
>
> Please understand that I am not advocating this change, just thinking
> out loud about the considerations that would come into play if any
> change was contemplated.
>
> Here’s how this co-chair would hope our internal decision process
> plays out on this or any other policy/implementation matter:
>
> ·A proponent of making a change to present policy and practice should
> articulate the rationale for the proposal and the benefits expected to
> flow from its adoption.
>
> ·The proponent should also be candid about what costs or burdens might
> be imposed on various parties if it is adopted and explain why those
> costs are outweighed by the envisioned benefits.
>
> ·If an adopted change would not be self-executing but would require
> significant implementation details then the proponent should at least
> explain the basics how that would be practically effected.
>
> I believe that if proponents of making a change follow those
> suggestions it will set the stage for at least a fully informed debate
> and subsequent decisionmaking.
>
> Hope that is helpful.
>
> Best regards
>
> *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/*
>
> *From:*gnso-rpm-wg-bounces at icann.org
> [mailto:gnso-rpm-wg-bounces at icann.org] *On Behalf Of *Paul McGrady
> *Sent:* Sunday, April 09, 2017 10:57 AM
> *To:* 'Kathy Kleiman'; gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] [Renamed] Or or And
>
> Thanks Kathy.
>
> I think if we were going to ask the Board to undo their standing
> policy of “and” we would need a good reason and I haven’t seen any
> emerge on this list. The more we tinker with what is not broken, the
> more we risk not only bringing Phase 1 to a halt, but having to reopen
> the issue of the separation of Phase 2. I don’t think we could get
> buy-in from the consumer protection community to go along with “or” in
> Phase 1 if there is any chance that the UDRP will be weakened in Phase
> 2. Hopefully, we can do what Phil suggested in his recent posts and
> look to incremental improvements, rather than sea changes.
>
> Best,
>
> Paul
>
> *From:*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 *Kathy Kleiman
> *Sent:* Sunday, April 09, 2017 9:21 AM
> *To:* gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
> *Subject:* [gnso-rpm-wg] [Renamed] Or or And
>
> I think Jon raises an important point. The recommendations of the STI
> (as adopted by the GNSO Council and the ICANN Board) were for the New
> gTLD Registry to choose between a Sunrise Period OR the 90 day TM
> Claims Notice -- "at registry discretion" (as Jon notes below).
>
> Is this something we should make a note to review -- and accordingly
> pass on as a question to the Sunrise Period and TM Claims Subgroups:
> is the right conjunction "or" or "and"? Should we return to the policy
> of allowing registries to choose Sunrise Period OR TM Claims for their
> roll-outs and would that provide a more balanced set of protections?
> /Not a question to be debated now, /but one we might to queue up for
> the discussions ahead.
>
> (Cue the music for Conjunction Junction from Schoolhouse Rock for
> those from that generation...)
>
> Best, Kathy
>
> On 4/6/2017 3:46 PM, Jon Nevett wrote:
>
> Michael, This is very helpful perspective. The 2012 round was supposed to require either sunrise or claims at registry discretion. Late in the process, ICANN staff changed it to require both sunrise and claims. Based on your email and your IP perspective, is it fair to assume that sunrise is the much more important RPM between the two? Thanks. Jon
>
> On Apr 6, 2017, at 2:56 PM, Michael Graham (ELCA)<migraham at expedia.com> <mailto:migraham at expedia.com> wrote:
>
> From my point of view as a) an IP attorney generally and b) in-house counsel for Expedia, Inc., Sunrise is an essential part of the RPMs in order to ensure that the New gTLD program will provide the benefits it was intended to provide (Increasing Consumer Choice, Consumer Trust and Competition on the Internet) without unduly burdening either individuals or entities, or threatening any of their rights (be they privacy or intellectual property or expression). In regard to the use of Sunrise "preemption" by trademark owners, as indicated in the TMCH study, it is being used in a more limited manner than many presumed would be the case. Contrary to George's fears, for example, it seems clear from the study that Sunrise is not being used by trademark owners to monopolize generic terms. Nor is there any empirical evidence that it has had any negative effect on non-trademark owner registrants or applicants.
>
> As to points 1 and 2:
>
> 1: We have learned that there are sufficient numbers of either bad or uninformed (i.e. do not take the time to search to determine whether a term is a registered trademark) actors that we cannot rely on their declaration, and
>
> 2: Despite the success of the UDRP, forcing trademark owners to rely on UDRPs alone is a costly, time-consuming process that fails to satisfy the New gTLD program's charter -- it does not further any of the goals of the New gTLD system.
>
> In considering RPMs and the Application/Registration/DNS itself I think we need to always step back to consider: who benefits from and who is burdened by the various RPMs or their lack, and what is the cost and benefit to users/registrants/society. I raise this because it seems to me that personal profit motives have too often distorted and should not play as large a role in policy decisions as other types of considerations should.
>
> Michael R. Graham
>
> MICHAEL R. GRAHAM
>
> SENIOR CORPORATE COUNSEL
>
> GLOBAL DIRECTOR, INTELLECTUAL PROPERTY
>
> Expedia Legal & Corporate Affairs
>
> T +1 425.679.4330 | F +1 425.679.7251
>
> M +1 425.241.1459
>
> Expedia, Inc.
>
> 333 108th Avenue NE | Bellevue | WA 98004
>
> MiGraham at Expedia.com <mailto:MiGraham at Expedia.com>
>
> -----Original Message-----
>
> From: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 George Kirikos
>
> Sent: Thursday, April 06, 2017 11:21 AM
>
> To:gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
>
> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today
>
> Hi folks,
>
> On Thu, Apr 6, 2017 at 11:55 AM, J. Scott Evans<jsevans at adobe.com> <mailto:jsevans at adobe.com> wrote:
>
> Let’s all pause here. It seems that George and those in his “camp” believe that (and feel free to correct me if I am wrong) that Sunrise is not balanced (or “unfair”) because it gives the owner of a trademark a preemptive veto to us of the domain, even for non-infringing uses. If that is the case, could we not require the registrars to have a policy for allowing a third party with a legitimate use to get the string subject to the Sunrise registration provided they make a case that their use is non-infringing. Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain. If we could come up with this type system (which I believe Donuts uses in its DPML system) wouldn’t that get to the root of the concern (that is, provided I have accurately articulated the concern).
>
> We don't have to "come up with this type of system" -- killing the Sunrise period would achieve this *today*, because:
>
> (1) The domain name registration agreement *already* mandates the above. See Section 3.7.7.9 of:
>
> https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en
>
> "3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party."
>
> unless you're suggesting that each prospective registrant needs to provide more than that representation to "make a case" (in your words). Fees for domain name registrations would have to go up considerably, and registrars would need a process to vet who is "worthy" and who is illegitimate, and presumably a challenge/appeal mechanism for that vetting too?
>
> and,
>
> (2) As for "Of course, any such process would require the third party to agree that if the use became infringing that the owner of the original Sunrise could take back the domain" --- we already have something called the UDRP for that, or the courts, which every registrant agrees to as well, so that any TM owner (TMCH recordal or
>
> not) can challenge alleged misuse of a domain name.
>
> Sincerely,
>
> George Kirikos
>
> 416-588-0269
>
> http://www.leap.com/
>
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