[gnso-rpm-wg] Text/design marks

Fri Apr 14 15:59:11 UTC 2017

Rebecca:

As I stated on the call Wednesday, when Sunrise registration were first developed, a EU trademark litigator was very vocal and, ultimately successful, in arguing that design/figurative marks (as opposed to word marks in stylized lettering) should not be included because the EU trademark office had no disclaimer requirement. I support this proposition. However, there may be other ways to solve the problem rather than an outright prohibition. On your specific point below, I think that the owner of a registration for the mark BOX is a stylized ribbon script for “online storage services” should be allowed to register in the TMCH. And, unless I am wrong, the owner of a TMCH registration for the stylized ribbon script mark BOX would not be able to prevent someone from registering boxsolutions.tld unless they had one a UDRP on that exact string. I think the information from Deloitte shows that use of trademark +50 is very sparse, so that probably is a very remote situation. Even then, however, I support a mechanism whereby the applicant that wants box.tld for a non-infringing use should be able to obtain the domain; provided they have to use it for the non-infringing use.

J. Scott Evans
408.536.5336 (tel)
345 Park Avenue, Mail Stop W11-544
Director, Associate General Counsel
408.709.6162 (cell)
San Jose, CA, 95110, USA
Adobe. Make It an Experience.
jsevans at adobe.com
www.adobe.com

On 4/14/17, 7:32 AM, "Rebecca Tushnet" <Rebecca.Tushnet at law.georgetown.edu> wrote:

    Since I was asked in chat to support the statement that registrations
    for stylized words are narrower in scope than registrations for words
    in standard text form, that was the statement I supported, and the
    cases all stand for that proposition.  Do you disagree?  For example,
    the registrants in the BOX case should neither have been able to put
    BOX in the TMCH nor BOX SOLUTIONS, since both of them had only
    stylized marks.
    Rebecca Tushnet
    Georgetown Law
    703 593 6759

    On Fri, Apr 14, 2017 at 9:04 AM, J. Scott Evans <jsevans at adobe.com> wrote:
    > 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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