[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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