[gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
Kathy Kleiman
kathy at kathykleiman.com
Wed Apr 26 14:28:18 UTC 2017
Hi Brian, The US Trademark Office drew a bright line and so did we. Kathy
On 4/26/2017 4:00 AM, Beckham, Brian 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://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>
> [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 <mailto: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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