[gnso-rpm-wg] Text/design marks

Fri Apr 14 13:04:41 UTC 2017

First, I agree that words that cannot be protected as trademarks should not be registered in the TMCH. However many of the cases you cite below are not relevant to the TMCH. A registration for BOX in the TMCH will not prevent the owner of BOX SOLUTIONS from obtaining boxsolutions.tld. Also, the NIKE case appears off point because a TMCH registrant cannot block the use of similar words with similar meanings. The one problem you, George and Paul K. Have identified is the block of an identical TLD-string for non-infringing uses (apple.food for apple pie recipe lovers). I think we can recommend a solution for that scenario.

J. Scott

Sent from my iPhone

> On Apr 13, 2017, at 11:20 PM, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu> wrote:
> 
> Let me try my question about different kinds of word marks again by
> asking a couple of people who participated in the chat if they could
> elaborate.
> 
> 
> 
> Martin Silva mentioned “mixed marks” in the civil law countries, “text
> marks that are represented in an specific figurative way (form+color)
> and are only protected in those designs.”  Do you have any particular
> countries in mind? That sounds like an important concept for this
> discussion.
> 
> 
> 
> John McElwaine said: “Many countries apparently require ‘a depiction’
> of the mark with no distinction between text, stylization or included
> designs.”  Do you have specific countries in mind?  I think that could
> offer useful information to figure out what distinctions are or aren’t
> available.
> 
> 
> 
> Sorry if I missed others, especially in the audio portion—the
> transcript isn’t up yet.
> 
> 
> 
> Michael R Graham asked me in the chat: Please provide cases supporting
> "weaker" protection statement for stylized word registered marks.
> 
> 
> 
> As I said on the call, there’s a distinction between protection and
> infringement.  Koke infringes Coke for soft drinks, but Koke isn’t a
> “protected” mark of Coca-Cola’s.  Unless the TMCH is supposed to
> expand coverage of marks beyond what’s registered or validated by a
> court, the fact that a stylized mark might (or might not) be infringed
> by a use that doesn’t have the same stylization isn’t relevant.  I
> agree with Greg Shatan that “strength” of the mark isn’t relevant to
> what goes into the TMCH, but precisely because that’s true we should
> be particularly careful to ensure that marks that are only valid
> because of elements that can’t go into the TMCH—that is, stylization
> or design elements—can’t have their textual portions in the TMCH.
> 
> 
> 
> For US jurisprudence on the limited scope of stylized marks v.
> standard character marks:
> 
> Kelly–Brown v. Winfrey, 95 F.Supp.3d 350, (S.D.N.Y. 2015) (dealing
> with special form mark whose words were unprotectable absent
> stylization), aff’d, Kelly–Brown v. Winfrey, 659 Fed.Appx. 55 (2d.
> Cir. 2016); Time, Inc. v. Petersen Pub. Co., LLC, 173 F.3d 113, 118-19
> (“[T]he law of trademark accords stronger protection to the stylized
> version of certain words used as trademarks than to those words
> themselves ….[T]rademark rights in the stylized appearance of a word
> are distinct from trademark rights in the word itself”) (2d Cir.1999);
> Gruner + Jahr USA Publ'g Div. of Gruner + Jahr Printing & Publ'g Co.
> v. Meredith Corp., 991 F.2d 1072, 1077–78 (2d Cir. 1993) (observing,
> for purposes of a likelihood of confusion analysis, that “the district
> court ... properly distinguished between the strength of the
> [composite] trademark PARENTS [consisting of those words rendered in a
> particular visual style] and the weak, descriptive nature of what it
> called the ‘mere word ‘parents,’ ' ”); King of the Mountain Sports,
> Inc. v. Chrysler Corp., 185 F.3d 1084, 1090–91 (10th Cir.1999)
> (holding that two differently stylized marks using the same two words
> were not similar); Neopost Industrie B.V. v. PFE Intern., Inc., 403
> F.Supp.2d 669 (N.D. Ill. 2005) (registration of stylized mark didn’t
> extend protection to nonstylized uses); Federation Internationale De
> Football Ass'n v. Nike, Inc., 285 F.Supp.2d 64, 72-73 (D.D.C. 2003)
> (“[E]ven after a descriptive term has become distinct, its power to
> preclude other uses of closely related descriptive terms is diminished
> where the senior owner has used its mark only in a particular,
> stylized way. For even if that overall stylized mark is strong, the
> trademark value of the words themselves may be quite weak.”); see also
> In re K-T Zoe Furniture, Inc., 16 F.3d 390 (Fed. Cir. 1994) (stylized
> form was registrable, but words alone were descriptive and
> unregistrable); Igloo Products Corp. v. Brantex, Inc., 202 F.3d 814
> (5th Cir. 2000) (registration of composite mark didn’t provide
> presumption of validity for words alone); In re Box Solutions Corp.,
> 79 U.S.P.Q.2d 1953 (TTAB 2006) (finding no likelihood of confusion
> between two stylized marks despite identical goods and overlap in
> words BOX and BOX SOLUTIONS).
> 
> 
> 
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
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