[gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Kathy Kleiman kathy at kathykleiman.com
Wed Apr 26 03:12:07 UTC 2017


Hi Paul,
Apologies. I saw your thanks, but not your notes farther down. (For 
those of us skimming hundreds of emails, feel free to use use 
red/green/stars/asterisks to designate comments...) I caught it on a 
re-read...

Quick note that the purpose of this recommendation is to share what is 
clearly before the Working Group: that rules created for the Trademark 
Clearinghouse process are not being followed. The goal is not to delve 
into motive or intent, but rather compliance and review. The actions of 
our TMCH database provider, as an ICANN contractor, must follow and 
comply with the rules as set out by the ICANN Community.

If we want to change the rules, that's fine; we can do it by consensus. 
But until that happens, the rules adopted unanimously by the GNSO 
Council and ICANN Board are the policy. It's not for third parties to 
make their own or follow a different set.

Paul, I'll respond to what I think are your questions below. My answers 
are preceded by =>
Best, Kathy

On 4/19/2017 8:23 PM, icannlists wrote:
>
> Hi Kathy,
>
> Thank you so much for being willing to put forward a proposal.  I know 
> this is hard work (having put forward one on the GIs myself this 
> week!) so it is appreciated.
>
> I am getting my initial thoughts on this out to the list on this as 
> quickly as possible in the hopes that your proposal can be reworked a 
> bit prior to our next WG call.  A few thoughts:
>
> 1.We have learned that Deloitte is accepting the words of design 
> marks, composite marks, figurative marks, stylized marks, mixed marks, 
> and any similar combination of characters and design (collectively 
> “design marks”).
>
> We spent the better half of our last call untangling these definitions 
> and to see them lumped in together again when these are not the same 
> things makes the proposal impossible to read for we trademark folks.  
> It would be great if we could include the clarity we achieved last week.
>
==> The category is meant to be comprehensive and international.
>
> 2.However, the rules adopted by the GNSO Council and ICANN Board 
> expressly bar the acceptance of design marks into the TMCH Database.
>
>
This is just inaccurate as written, mostly, but not entirely, by the way 
you have defined the terms.  For example, I know of no GNSO Council 
prohibition that would reject a mark just because it is in a cursive 
font instead of plain block font.  Can you either fix this or send us to 
a link supporting the claim?  Perhaps if you unpack your collective 
definition, resulting a more precise claim and provide the link, that 
might give us something to talk about. As written now, I’ve just come to 
a halt on it because it doesn’t reflect the facts on the ground.

==> Paul, what I wrote is nearly a direct quote. Please see the 
"Expanded Discussion" discussion which follows in my recommendation 
directly below the opening section and explains exactly where this 
sentence comes from and what it references. I'm happy to paste some of 
this discussion here too. The STI Final Report (adopted by GNSO Council 
and ICANN Board) stated:

*“*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).*(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.) *Emphasis added. /Section //4.1, 
National or Multinational Registered Marks, 
/https://gnso.icann.org/en/issues/sti/sti-wt-recommendations-11dec09-en.pdf


==> The words mean exactly what they say - only marks registered as text 
can be registered into the Trademark Clearinghouse;  nothing that 
"provide[s] protection for letters and words only within the content of 
their design or logo." It states why: "the STI was under a mandate not 
to expand existing trademark rights." The issue was the balancing of 
underlying concept adopted here as part of the rights of trademark 
owners and the rights of current and future registrants. Domain names 
are text based.


==> We certainly meant to differentiate a trademark in a "cursive font 
instead of a plain text font." That's the whole purpose for Section 
4.1's text, and the unusual extra step of including the explanation 
right next to it. Those of us who worked on this section (including 
myself and Dr. Konstantinos Komaitis, whose PhD became the book /The 
Current State of Domain Name Regulation: Domain Names as Second Class 
Citizens in a Mark-Dominated World) /spent a lot of time on this issue. 
In evaluating it, the STI Final Report followed the guidance of experts 
such as those at the US Trademark Office regarding the different 
representation of marks:

[USPTO *Representation of Mark*]  "During the application process for a 
standard character mark, the USPTO will depict the mark in a simple 
standardized typeface format.  However, it is important to remember that 
this depiction does not limit or control the format in which you 
actually "use" the mark.  In other words, the rights associated with a 
mark in standard characters reside in the wording (or other literal 
element, e.g., letters, numerals, punctuation) and *not* in any 
particular display.  Therefore, registration of a standard character 
mark would entitle you to use and protect the mark in any font style, 
size, or color.  It is for this reason that a standard character mark 
can be an attractive option for many companies."

"The stylized/design format, on the other hand, is appropriate if you 
wish to register word(s) by themselves or combined to form a phrase of 
any length and/or letter(s) having a particular stylized appearance, a 
mark consisting of a design element, or a combination of stylized 
wording and a design. Once filed, any design element will be assigned a 
“design code,” as set forth in the Design Search Code Manual 
<http://tess2.uspto.gov/tmdb/dscm/index.htm>."

"Here is an example of a standard character mark:

Standard mark example"

"Here are some examples of special form marks:

Stylized mark example Design mark example

Design mark example"

Quotes above from 
https://www.uspto.gov/trademarks-getting-started/trademark-basics/representation-mark

The rest of the recommendation follows from these finding. Again, this 
not a matter of a good job or a bad job -- no value judgement is 
intended. Rather it is a compliance and review issue. Are the rules 
followed?  The answer is no.

Best, Kathy

>
> 3.Accordingly, Deloitte is currently in breach of the rules that ICANN 
> adopted and must revise its practice to follow the ruls adopted by the 
> GNSO Council and ICANN Board for TMCH operation.
>
> In order to buy this conclusion, the premises have to be correct, but 
> the premises (as mentioned in 1 and 2) are not close to ready.  I have 
> to suspend consideration of the conclusion contained in this paragraph 
> due to the faulty syllogism we have in front of us.  Maybe if you make 
> the edits in 1 and 2 suggested, we can then examine whether or not 
> your paragraph 3 conclusion is correct, partially correct, or incorrect.
>
> 4.Alternatively, the Working Group by Consensus may CHANGE the rules 
> and present the GNSO Council and ICANN Board with an expanded set of 
> rules that Deloitte, or any future TMCH Provider, must follow.
>
> I guess I don’t understand this.  Are you saying that if Deloitte is 
> not in breach by letting in marks written in cursive fonts, then the 
> WG can by Consensus propose changes?  I’m not sure that the two things 
> are connected.
>
> 5.In all events, we have a BREACH SITUATION which must be remedied. 
> Further details, information and explanation below.
>
> Same response as #3 above.  Also, this really confused paragraph 4 for 
> me further.  It seemed like paragraph 4 indicated that if paragraph 3 
> were not accurate, consensus driven solutions would be possible (again 
> not sure those two things are connected) but then you go on to say in 
> 5 that conclusions in 3 are a foregone conclusion (thus obviating any 
> perceivable need for paragraph 4).
>
> I’m sure other thoughts will come to me as we dig in to either this 
> version or an amended version, but these were the issues that jumped 
> out at me right away.  If you could respond to the full list on this 
> as soon as practical, I would appreciate it.
>
> Best,
>
> Paul
>
> *From:*gnso-rpm-wg-bounces at icann.org 
> [mailto:gnso-rpm-wg-bounces at icann.org] *On Behalf Of *Kathy Kleiman
> *Sent:* Wednesday, April 19, 2017 6:18 PM
> *To:* gnso-rpm-wg at icann.org
> *Subject:* [gnso-rpm-wg] Recommendation for Questions #7 and #16 
> (Design Mark and Appropriate Balance)
>
> Hi All,
>
> As promised, I am resubmitting a new version of my earlier 
> recommendation. It now addresses issues from Question #7 (Design 
> Marks) and #16 (Appropriate Balance). I submit this recommendation to 
> the Working Group in my capacity as a member and not as a co-chair.
>
> Text below and also attached as a PDF.
>
> Best, Kathy
>
> *------------------------------------------------------*
>
> *Design Mark Recommendation for Working Group - for Question #7 and 
> Question #16 of TMCH Charter Questions (#7, /How are design marks 
> currently handled by the TMCH provider?; /and #16, /Does the scope of 
> the TMCH and the protections mechanisms which flow from it reflect the 
> appropriate balance between the rights of trademark holders and the 
> rights of non-trademark registrants?)/*
>
> We (the RPM Working Group) have found a problem:
>
> 1.We have learned that Deloitte is accepting the words of design 
> marks, composite marks, figurative marks, stylized marks, mixed marks, 
> and any similar combination of characters and design (collectively 
> “design marks”).
>
> 2.However, the rules adopted by the GNSO Council and ICANN Board 
> expressly bar the acceptance of design marks into the TMCH Database.
>
> 3.Accordingly, Deloitte is currently in breach of the rules that ICANN 
> adopted and must revise its practice to follow the rules adopted by 
> the GNSO Council and ICANN Board for TMCH operation.
>
> 4.Alternatively, the Working Group by Consensus may CHANGE the rules 
> and present the GNSO Council and ICANN Board with an expanded set of 
> rules that Deloitte, or any future TMCH Provider, must follow.
>
> 5.In all events, we have a BREACH SITUATION which must be remedied. 
> Further details, information and explanation below.
>
> Expanded Discussion
>
> /A. Expressly Outside the TMCH Rules Adopted by the GNSO Council & 
> ICANN Board/
>
> The GNSO Council & ICANN Board-adopted rules (based on the STI Final 
> Report and IRT Recommendations) that 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/issues/sti/sti-wt-recommendations-11dec09-en.pdf
>
> Further, the adopted rules themselves are very clear about the Harm of 
> 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.)*
>
> The Applicant Guidebook adopted the same requirements, as it must and 
> should, namely:
>
> “3.2:Standards for inclusion in the Clearinghouse
>
> 3.2.1Nationally or regionally registered word marks from all 
> jurisdictions”
>
> /Nonetheless, and in violation of the express rules adopted by the 
> GNSO Council and ICANN Board and placed into the Applicant Guidebook, 
> TMCH Provider Deloitte is accepting into the TMCH database words and 
> letters it has extracted from composite marks, figurative marks, 
> stylized marks, composite marks and mixed marks. Deloitte is removing 
> words and letters from designs, patterns, special lettering and other 
> patterns, styles, colors, and logos which were integral to the 
> trademark as accepted by the national or regional trademark office./
>
> /B. Harm from the Current Form/
>
> The harm from this acceptance is that it violates the rules under 
> which Deloitte is allowed to operate. It creates a situation in which 
> Deloitte is operating under its own authority, not that of ICANN and 
> the ICANN Community. Such action, in violation of rules clearly 
> adopted by the GNSO Council and ICANN Board and written into the New 
> gTLD Applicant Guidebook, gives too much power to Deloitte -- a 
> contractor of ICANN, to make its own rules and adopt its own protocol 
> without regard to the scope, breadth and reach of the governing rules.
>
> It is the type of misconduct anticipated by the GNSO Council and ICANN 
> Board, and why the rules demand that ICANN hold a close relationship 
> with the TMCH Provider /by contract/ to allow close oversight and 
> correction of misinterpretation or failure to follow the rules. (See, 
> 3.1 in /Relationship with ICANN/, Special Trademark Issues Review Team 
> Recommendations).
>
> /C. Presumption of Trademark Validity Does Not Extend to Non-Stylized 
> Version of the Registration Marks/
>
> Further, words and letters within a composite marks, figurative marks, 
> stylized marks, and mixed marks are protected within the scope of the 
> designs, logos, lettering, patterns, colors, etc. That's not a Working 
> Group opinion, that's a legal opinion echoed through case law and UDRP 
> decisions.
>
> In WIPO UDRP Decision /Marco Rafael Sanfilippo v. Estudio Indigo/, 
> Case No. D2012-1064, the Panel found:
>
> “Complainant has shown that it owns two trademark registrations in 
> Argentina. The Panel notes that both registrations are for “mixed” 
> marks, where each consists of a composition made of words and graphic 
> elements, such as stylized fonts, a roof of a house, etc. See details 
> of the registrations with drawings at section 4 above.
>
> “As explained on the INPI website, “[m] ixed (marks) are those 
> constituted by the combination of word elements and figurative 
> elements together, or of word elements in stylized manner.” 
> Accordingly, the protection granted by the registration of a mixed 
> mark is for the composition as a whole, and not for any of its 
> constituting elements in particular. Thus, Complainant is not correct 
> when he asserts that it has trademark rights in the term “cabañas” 
> (standing alone), based on these mixed trademark registrations.”
>
> Similarly, in the US, federal courts have found that *the presumption 
> of trademark validity provided by registration does not extend to the 
> non-stylized versions of the registration marks*. See e.g.,
>
> /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); 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).
>
> /D. Beyond the Scope of the TMCH Protection that the GNSO Council and 
> ICANN Board Agreed to Provide Trademark Owners. /
>
> As has been pointed out in our Working Group calls, the STI 
> evaluations and IRT evaluations were long and hard and both groups 
> decided in their recommendations to protect only the word mark – the 
> text itself when the text was registered by itself. Neither allowed 
> for the extraction of a word or letters from amidst a pattern, style, 
> composite or mixed marks; neither created a process for doing so; 
> neither accorded the discretion to the TMCH Provider (now Deloitte) to 
> adopt any processes to handle this process independently.
>
> The STI clearly elaborated its reasoning: that extracting a word or 
> letters from a larger design, gives too many rights to one trademark 
> owner over others using the same words or letters. As clearly 
> elaborated in the STI Recommendations and adopted by the GNSO Council 
> and ICANN Board (unanimously), it would be an unfair advantage for one 
> trademark owner over others using the same words or letters. 
> Specifically:
>
> *“(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.)” *
>
> **
>
> To the extent that Deloitte as a TMCH Provider is operating within its 
> mandate, and the limits of the rules and contract imposed on it, /it 
> may not take steps to expand existing trademark rights/. The rights, 
> as granted by national and regional trademark offices are rights that 
> expressly include the patterns, special lettering and other styles, 
> colors, and logos that are a part of the trademark granted by the 
> Trademark Office and certification provided by each Trademark Office 
> and presented to the Trademark Clearinghouse.
>
> II.*Breach and Correction*
>
> Accordingly, Deloitte is in breach of the rules that ICANN adopted and 
> must revise its practice to go to follow the rules adopted by the GNSO 
> Council and ICANN Board. Deloitte’s extraction of words and letters 
> from patterns, special lettering, styles, colors and logos, as 
> outlined above, violates the rules adopted by the GNSO Council and 
> ICANN Board for the Trademark Clearinghouse operation.
>
> Bringing Deloitte’s operation of the TMCH – and its terms and 
> requirements - rules does not require a consensus of the Working 
> Group. Rather, it is a fundamental aspect of our job as a Working 
> Group, as laid out by the GNSO Council in our charter, to review the 
> operation of the Trademark Clearinghouse in compliance with its rules. 
> As Deloitte is not operating in compliance with its rules in this 
> area, it is in breach and must come into compliance. The excellent 
> work of the Working Group in this area, and finding this problem 
> through hard work and research, should be sufficient for ICANN Staff 
> to act in enforcement of its contract and our rules. Point it out 
> clearly and directly to Deloitte, to ICANN Board and Staff, and to the 
> ICANN Community is one small additional step the Working Group might 
> take.
>
> Alternatively, the Working Group *by consensus* may CHANGE the rules 
> and present to the GNSO Council and ICANN Board a new set of standards 
> by which Deloitte (or any future TMCH provider) may use to accept the 
> design and stylized marks currently barred by the rules. But such a 
> step would require a *change* to the ICANN rules under which the 
> Trademark Clearinghouse operate, and then acceptance by the GNSO 
> Council and ICANN Board. ICANN contractors do not have the unilateral 
> power to make their own rules or to change the rule that are given them.
>
>
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