[gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
J. Scott Evans
jsevans at adobe.com
Wed Apr 26 13:38:46 UTC 2017
Rebecca:
You are simply wrong on the law.
Sent from my iPhone
> On Apr 26, 2017, at 6:37 AM, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu> wrote:
>
> How does stylization translate into the DNS? We know that stylized
> PARENTS and OWN YOUR POWER, to take two examples already discussed,
> provide no trademark rights in the words "parents" and "own your
> power." Accepting stylized versions, as Deloitte currently does, thus
> gives TMCH protection to words as to which there is no underlying
> trademark protection. "Text" is not an invention by ICANN.
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
>
>
>> On Wed, Apr 26, 2017 at 9:31 AM, icannlists <icannlists at winston.com> wrote:
>> +1 Brian B. and J. Scott.
>>
>>
>>
>> The T Markey (stylized) example Kathy gave proves the point I am trying to
>> make. There is nothing about that mark which would not translate into the
>> DNS or would limit analysis of it by a trademark office on absolute grounds.
>> So long as we continue to mash up Stylized marks with other design and
>> composite marks, we simply don’t have a functional vocabulary to have this
>> conversation. In other words, we have to use well established trademark
>> vocabulary to talk about trademarks. We can’t invent our own language and
>> then evaluate the TMCH rules through the new language rather than the
>> language it was written in.
>>
>>
>>
>> Best,
>>
>> Paul
>>
>>
>>
>>
>>
>>
>>
>> From: J. Scott Evans [mailto:jsevans at adobe.com]
>> Sent: Wednesday, April 26, 2017 6:41 AM
>> To: Beckham, Brian <brian.beckham at wipo.int>
>> Cc: Kathy Kleiman <kathy at kathykleiman.com>; icannlists
>> <icannlists at winston.com>; gnso-rpm-wg at icann.org
>>
>>
>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design
>> Mark and Appropriate Balance)
>>
>>
>>
>> I have several problems with this proposal too. Kathy's conclusory statement
>> about how he breadth of protection afforded by a composite or stylized mark
>> is incorrect. Second, and more importantly, I am bothered by all the
>> hyperbole and accusatory language like "breach", etc. this language is
>> emotional and charged with negativity. I think it is inappropriate and not
>> productive.
>>
>>
>>
>> J. Scott
>>
>> Sent from my iPhone
>>
>>
>> On Apr 26, 2017, at 1:10 AM, Beckham, Brian <brian.beckham at wipo.int> wrote:
>>
>> Kathy,
>>
>>
>>
>> It’s not clear that the reference to “only marks registered as text” is
>> necessarily incompatible with the “T. MARKEY” examples provided. The
>> second, stylized version shows a “mark registered as text”. It simply
>> happens to be text in a stylized (non-standard) form.
>>
>>
>>
>> In other words, a mark “registered as text” may not necessarily be
>> exclusively the same as (in USPTO parlance) “a standard character mark”.
>>
>>
>>
>> It may therefore not be entirely accurate to suggest that if the TMCH
>> allowed the second “T. MARKEY” example in stylized form (again, arguably a
>> mark “registered as text”) versus the standard character version, it would
>> somehow be “expand[ing] existing trademark rights”.
>>
>>
>>
>> Brian
>>
>>
>>
>> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
>> On Behalf Of Kathy Kleiman
>> Sent: Wednesday, April 26, 2017 5:12 AM
>> To: icannlists; gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design
>> Mark and Appropriate Balance)
>>
>>
>>
>> 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://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en.pdf&data=02%7C01%7C%7C9634d6087c074d32337508d48ca96206%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636288106505848556&sdata=hiv9%2Fm8w018T3t1y%2FbUYhcAiim2riM%2BPNuF15BkTY%2F0%3D&reserved=0
>>
>>
>>
>> ==> 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."
>>
>> "Here is an example of a standard character mark:
>>
>> <image001.jpg>"
>>
>> "Here are some examples of special form marks:
>>
>> <image002.jpg> <image003.jpg>
>>
>> <image004.jpg>"
>>
>> Quotes above from
>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.uspto.gov%2Ftrademarks-getting-started%2Ftrademark-basics%2Frepresentation-mark&data=02%7C01%7C%7C9634d6087c074d32337508d48ca96206%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636288106505848556&sdata=71xhrgyiegxP1VDZdQa0adJW2eu5zd6KP6QTmKAi8d8%3D&reserved=0
>>
>> 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://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fgnso.icann.org%2Fen%2Fissues%2Fsti%2Fsti-wt-recommendations-11dec09-en.pdf&data=02%7C01%7C%7C9634d6087c074d32337508d48ca96206%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C1%7C636288106505848556&sdata=hiv9%2Fm8w018T3t1y%2FbUYhcAiim2riM%2BPNuF15BkTY%2F0%3D&reserved=0
>>
>>
>>
>> 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
>>
>> 3.2.1 Nationally 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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