[gnso-rpm-wg] Recommendation for TMCH Charter Question #7

Wed Apr 12 05:52:51 UTC 2017

I guess this is not actually intended to be an "answer" to Question 7, but
rather is supposed to be a proposal for a change to the current
implementation of the TMCH with regard to "design marks."

The first problem I see here is a that the term "design mark" is being used
to refer to a number of types of marks that are not in fact "design marks."
 The USPTO uses the term "design mark" to refer to a mark consisting of a
design element, or a combination of stylized wording and a design.  A mark
consisting of text in a particular font is not considered a design mark.
Rather, it is a stylized mark.  However, the proposal refers to "special
lettering" and lumps that in with design marks.  That seems clearly
incorrect.  As a type of mark containing only text it would seem to make
more sense to classify these as "text marks".

The attempt to exclude any mark where the registration includes "logos
[which can refer to stylized text marks], special lettering, colors [!]
and/or other design, pattern and lettering aspects and features" is clearly
overbroad and goes way beyond what is commonly understood to be a "design
mark."

The reference to "figurative marks" is also ambiguous at best.  This is an
EU term and as I understand it, a "figurative mark" contains no text
elements at all.  I don't there's any danger that such figurative marks are
being registered in the TMCH.  Another classification is a "figurative mark
with text" which covers anything from a word in a particular font (which in
US classification would not be a design mark) to a combination of words and
design elements (which in US classification would be a "design mark").
Perhaps this was what was meant, but if it is, it is clearly overbroad as
well.

There is no clear definition of what a "text mark" is.  Notably, the STI
does not talk about "text only" marks or about "standard form" marks (marks
consist of only text without any indication of font, color, etc.), but
rather to text marks.  A "figurative mark with text" could easily be
classified as a "text mark."  (Perhaps the litmus test should be whether
the law provides that a mark provides protection only within the context of
the design or logo.  If the protection is that narrow, it would be
considered a design mark.  If protection is broader than that, it is a text
mark.

I have no idea what a "transformative mark" is (and brief Internet research
is unhelpful) so I can't comment on the registrability of such marks.
However, if this is not a commonly understood term, it should not be used.

If we look back to the STI paper (which may not be the last or only word on
the subject), we see that their concern was with "design marks" that  "provide
protection for letters and words only within the context of their design or
logo."  Off the top of my head I am fairly certain that stylized marks
(e.g., words in particular fonts and/or colors or stylized text) provide
protection beyond the context of their design or logo (e.g., such a
registration can be used as the basis for a claim of infringement against a
mark that only infringes the textual elements of the registration).  As
such, stylized marks would not raise the concern expressed by the STI and
should not be excluded from the TMCH.  (This should of course be subjected
to some actual research and analysis, rather than relying solely on my
say-so.  In addition, I'm only referring to US law; law in other
jurisdictions would need to be reviewed as well.)

It would be best for us to focus on this litmus test of "design marks that
provide protection for letters and words only within the context of their
design or logo."  The question of which marks provide protection this
narrow is a legal question that I can't answer off the top of my head (and
even if I tried, it would not be the last word on the subject).  This
requires further research and analysis.  Such marks should be excluded,
since they are not protectable at all without the context of the design or
logo.  But marks that fail this litmus test should not be excluded.

I think the disclaimer issue -- design marks with letters or words all of
which have been disclaimed -- is an easier case.  This appears to clearly
qualify as a "design mark that provides protection for words only within
the context of their design or logo."

I would suggest that the only change to current practice should be
prohibiting the registration in the TMCH of words in a design mark where
all the words have been disclaimed.  If there are other categories that
clearly pass the litmus test of "design marks that  provide protection for
letters and words *only within the context of their design or logo*" then
we can consider prohibiting those as well.  But this needs to be done
carefully, and with reference to actual legal standards and commonly used
legal terminology.

Greg

*Greg Shatan *C: 917-816-6428 <(917)%20816-6428>
S: gsshatan
Phone-to-Skype: 646-845-9428 <(646)%20845-9428>
gregshatanipc at gmail.com

On Mon, Apr 10, 2017 at 1:34 PM, Beckham, Brian <brian.beckham at wipo.int>
wrote:

> Kathy,
>
>
>
> Apologies if this is a stupid question, but would you be able to help me
> better understand how your below proposal is meant to relate to the current
> charter question 7 (which currently reads:  “How are design marks currently
> handled by the TMCH provider?”).
>
>
>
> I will confess that at times it has not been clear to me whether these
> charter questions were meant to be answered by the WG along the way, or
> whether they were supposed to be refined by the WG for their inclusion in
> the Initial Issues Report, which would then be put out for public comment.
> I have understood that it is the latter, but the WG often seems to stray
> into the former.
>
>
>
> Thanks for clarifying!
>
>
>
> Brian
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at ic
> ann.org] *On Behalf Of *Kathy Kleiman
> *Sent:* Monday, April 10, 2017 4:28 PM
> *To:* Phil Corwin; gnso-rpm-wg at icann.org; J. Scott Evans
> *Subject:* [gnso-rpm-wg] Recommendation for TMCH Charter Question #7
>
>
>
> 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 Marks The TC Database should be
> required to include nationally or multinationally registered “text mark”
> trademarks, from all jurisdictions, (including countries where there is no
> substantive review).” https://gnso.icann.org/en/issu
> es/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 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.)
>
> 3. The Applicant Guidebook adopted the same strictures, namely: “3.2:Standards
> for inclusion in the Clearinghouse
>
> 3.2.1 Nationally or regionally registered word 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.”
>
>      C.            *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.
>
>    1.  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 <(202)%20559-8597>/Direct*
>
> *202-559-8750 <(202)%20559-8750>/Fax*
>
> *202-255-6172 <(202)%20255-6172>/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 ic
> ann.org <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 ic
> ann.org <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
> *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> <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 <(425)%20679-4330> | F +1 425.679.7251 <(425)%20679-7251>
>
> M +1 425.241.1459 <(425)%20241-1459>
>
> Expedia, Inc.
>
> 333 108th Avenue NE | Bellevue | WA 98004
>
> MiGraham at Expedia.com
>
>
>
>
>
>
>
>
>
> -----Original Message-----
>
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org <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
>
> 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> <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 <(416)%20588-0269>
>
> http://www.leap.com/
>
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