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

icannlists icannlists at winston.com
Wed Apr 26 16:32:49 UTC 2017


Thanks Mary.

It is helpful, especially in noting that we need a common vocabulary.  Rebecca has set forth some arguments with citations to cases and secondary sources.  Her comments, which have to do with stylized marks, will need a good study and some research in advance of response.  It will be impossible to respond in a clear way if stylized marks are lumped in by Kathy's omnibus definition.

Thanks Rebecca.

I'm looking forward to reading through your recent substantive post in more detail.  In the interim, though, let's consider whether or not we are accidently baking in a presupposition that just because a mark is registered in a stylized version that the textual elements are inherently descriptive without secondary meaning or generic. The example of the stylized version of Coca Cola (Stylized) is a great example since it is neither of those things, even when it appears in the special font (which can apparently be found here: http://www.dafont.com/loki-cola.font).

More soon.

Best,
Palu



-----Original Message-----
From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Mary Wong
Sent: Wednesday, April 26, 2017 9:33 AM
To: Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu>; J. Scott Evans <jsevans at adobe.com>; gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

If staff may be permitted to add further notes to this discussion, may I suggest that discussion recall what the basic question seems to be, i.e. whether the TMCH was intended to accept “word marks” that are not purely composed of text/letter/numeral/standard characters, and, if so, to what extent (e.g. stylized text marks vs stylized text with or integrated with graphics vs entirely graphical representations?

From ongoing Working Group discussions, it seems clear that the analysis is complicated by at least two fundamental challenges – (1) there is no universal definition or agreement as to what constitutes a “design mark” (nor is that phrase used as a definitive term in many jurisdictions); and (2) the scope of protection afforded to such marks (or even to stylized text marks).

Here’s how the US Patent & Trademark Office (USPTO) explains stylized text and standard character marks in “plain English”: https://www.uspto.gov/trademarks-getting-started/trademark-basics/representation-mark; and here’s how the European Union IP Office (EUIPO) explains the various types of trademarks: https://euipo.europa.eu/ohimportal/en/trade-mark-definition. More detailed information about EU practice on what is known as “figurative marks” can be found in the Common Communication issued in October 2015 on the so-called Convergence Program no. 3:  https://www.tmdn.org/network/documents/10181/278891cf-6e4a-41ad-b8d8-1e0795c47cb1 - and Working Group members much more knowledgeable about US, EU (including Community Trademark) and other jurisdictions’ treatment of registrable marks can add to this or correct me.

One basic principle determining the final structure and scope of the TMCH was that it should not differentiate between jurisdictions in its treatment of and acceptance of marks, whether that differentiation was to require (or not) so-called substantive review/evaluation, or in the types of word marks that afforded legal rights in the mark as a source identifier (hence, incidentally, the inclusion of “marks protected by statute or treaty”). This principle was noted multiple times throughout the process of community consultation on the evolution of the Applicant Guidebook (AGB).

As such, and returning to the basic question outlined above, the analysis of Deloitte’s guidelines and practices could also focus on whether or not these align with the intent and principles underlying the TMCH as described in the AGB.

I don’t know if the above is helpful, but offer it in the hope that it might be.

Cheers
Mary

On 4/26/17, 10:14, "gnso-rpm-wg-bounces at icann.org on behalf of Rebecca Tushnet" <gnso-rpm-wg-bounces at icann.org on behalf of Rebecca.Tushnet at law.georgetown.edu> wrote:

    According to the Second Circuit, the only court to my knowledge to
    address the issue, PARENTS is a descriptive term for a magazine about
    parenting; the stylized version is protectable, but not the word. For
    your convenience, it's Gruner + Jahr USA Pub. v. Meredith Corp., 991
    F.2d 1072 (2d Cir. 1993) ("the trademark registration of the title
    PARENTS in its distinctive typeface did not confer an exclusive right
    to plaintiff on variations of the word 'parent,' such term being more
    generic than descriptive.").  If you have other citations, or even a
    specific section of McCarthy, I'd be happy to talk about it.  Below, I
    reproduce McCarthy section 11:30 on stylized marks (images omitted).

    I don't dislike the RPMs; if I did, I'd just be advocating to get rid
    of them.  I do think that Deloitte ignored the limits on what should
    go into the TMCH, and those limits exist for a good reason.  I see the
    proposal on the table as a solution to that problem.  What solutions
    do you see?

    2 McCarthy on Trademarks and Unfair Competition § 11:30 (4th ed.)



    Even if a descriptive word or composite of words is not registrable as
    a trademark, a distinctive display of the words is registrable in the
    same way as any distinctive picture.1 For example, while the term
    CONSTRUCT-A-CLOSET is merely descriptive of components used to
    construct storage systems in a closet, the illustrated distinctive
    display of the words was held to present a distinctive design which is
    registrable with the words per se disclaimed.2 But such a picture
    registration is not infringed by use of the exact same words in a
    significantly different letter style or display.3



    For example, where plaintiff owned a registration of the word TEEN in
    upper case block letters, preceded by an apostrophe, for magazines,
    the court refused to enjoin PEOPLE magazine's use of TEEN PEOPLE for a
    magazine aimed at teenagers.  The court found that the word “Teen” in
    plaintiff's registration, apart from its particular stylized
    presentation, was “an extremely weak mark,” not strong enough that
    confusion was likely to result from defendant's TEEN PEOPLE magazine
    mark.4

    The Federal Circuit held that the distinctive display of the
    descriptive words THE SOFA & CHAIR COMPANY (Fig. 11:30B) was
    registerable, but that a disclaimer of the words apart from the
    display was necessary because distinctiveness was proven only for the
    display of the words, not the words themselves.5



    Secondary meaning in descriptive words shown in a stylized
    presentation or logo does not give distinctiveness to the words alone,
    apart from the distinctive graphic image.6

    1

    See discussion of the parallel issue of distinctive display of generic
    names at § 12:40. See T.R. Lee, E.D. DeRosia & G.L. Christensen, An
    Empirical and Consumer Psychology Analysis of Trademark
    Distinctiveness, 41 Ariz. St. L. Jour. 1033, 1099 (2009) (“If a
    descriptive word mark is presented in a spatial placement, size and
    style that matches the consumer's schematic mental model of what a
    product package and brand look like, the word may be perceived as a
    source indicator even if its semantic meaning is ‘merely
    descriptive.’”). Author's Comment: The authors conclude that this
    observation “debunks” the premise of the traditional spectrum of
    distinctiveness. I think the authors erroneously conflate a word with
    the way in which the word is visually displayed. The two may consist
    of two different trademarks.

    2

    In re Clutter Control, Inc., 231 U.S.P.Q. 588 (T.T.A.B. 1986).

    3

    Chicago Reader, Inc. v. Metro College Publishing, Inc., 495 F. Supp.
    441, 211 U.S.P.Q. 411 (N.D. Ill. 1980) (while registration of
    descriptive term in distinctive type style and lettering is a strong
    mark, it is not infringed by use in a different lettering style).

    4

    Time, Inc. v. Petersen Pub. Co., 976 F. Supp. 263, 44 U.S.P.Q.2d 1478
    (S.D.N.Y. 1997) (“Its ‘TEEN trademark in its distinctive style does
    not entitle Petersen to prevent a competitor from using the generic
    word ‘teen’ as part of a different trademark, to denote a magazine
    that is targeted to teenagers.”).  See later proceedings at Time, Inc.
    v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 50 U.S.P.Q.2d 1474 (2d Cir.
    1999) (affirming jury verdict of no infringement, court of appeals
    remarked that: “[T]rademark rights in the stylized appearance of a
    word are distinct from trademark rights in the word itself.”).

    5



    In re K-T Zoe Furniture, 16 F.3d 390, 29 U.S.P.Q.2d 1787 (Fed. Cir.
    1994) (“[T]he words and the stylized script of ‘the sofa & chair
    company’ are separable elements and that only the script design of the
    words was shown to have acquired secondary meaning.”).

    6

    Leejay v. Bed, Bath & Beyond, Inc., 942 F. Supp. 699, 40 U.S.P.Q.2d
    1209 (D. Mass. 1996) (while the plaintiff's stylized presentation of
    the descriptive words “bed & bath” for retail stores selling items for
    the bedroom and bathroom may have acquired secondary meaning, the
    words themselves have no secondary meaning).

    Rebecca Tushnet
    Georgetown Law
    703 593 6759


    On Wed, Apr 26, 2017 at 9:53 AM, J. Scott Evans <jsevans at adobe.com> wrote:
    > I don't need a citation for black letter trademark. I can point you to McCarthy. I am fully aware that cause celeb with some IP academics is word exhaustion. However, ignoring that PARENTS is a suggestive mark for publications or that certain, even if initially descriptive, can become (at least in the US) a strong mark. I get you are fundamentally opposed to any mark having protection beyond its goods and services (even though both the ACPA and Dilution both embrace those concepts). I also know that trademark law is very fact specific with multi-factored tests to prove infringement. For this reason, you and I could throw citations to support our positions all day long. Let's focus on solutions. I acknowledge you dislike the RPMs and think they are overreaching.
    >
    > Sent from my iPhone
    >
    >> On Apr 26, 2017, at 6:44 AM, Rebecca Tushnet <Rebecca.Tushnet at law.georgetown.edu> wrote:
    >>
    >> Citation needed.
    >> Rebecca Tushnet
    >> Georgetown Law
    >> 703 593 6759
    >>
    >>
    >>> On Wed, Apr 26, 2017 at 9:38 AM, J. Scott Evans <jsevans at adobe.com> wrote:
    >>> 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://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fgnso.icann.org-252Fen-252Fissues-252Fsti-252Fsti-2Dwt-2Drecommendations-2D11dec09-2Den.pdf-26data-3D02-257C01-257C-257C9634d6087c074d32337508d48ca96206-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C1-257C636288106505848556-26sdata-3Dhiv9-252Fm8w018T3t1y-252FbUYhcAiim2riM-252BPNuF15BkTY-252F0-253D-26reserved-3D0&d=DwIGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=jk8b7VD3EbipirdboILPBAS_9QeCCf4z52Mf08v6REk&s=gNyYA6cfz3O0LLDMvN7vRlEBXkLTAIOwohq3qtzrDd8&e=
    >>>>>
    >>>>>
    >>>>>
    >>>>> ==> 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://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.uspto.gov-252Ftrademarks-2Dgetting-2Dstarted-252Ftrademark-2Dbasics-252Frepresentation-2Dmark-26data-3D02-257C01-257C-257C9634d6087c074d32337508d48ca96206-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C0-257C636288106505848556-26sdata-3D71xhrgyiegxP1VDZdQa0adJW2eu5zd6KP6QTmKAi8d8-253D-26reserved-3D0&d=DwIGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=jk8b7VD3EbipirdboILPBAS_9QeCCf4z52Mf08v6REk&s=7rnlsE4Ir8I6u7hsZgbUw3ILTA95I3nykrvHcepB4sE&e=
    >>>>>
    >>>>> 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://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fgnso.icann.org-252Fen-252Fissues-252Fsti-252Fsti-2Dwt-2Drecommendations-2D11dec09-2Den.pdf-26data-3D02-257C01-257C-257C9634d6087c074d32337508d48ca96206-257Cfa7b1b5a7b34438794aed2c178decee1-257C0-257C1-257C636288106505848556-26sdata-3Dhiv9-252Fm8w018T3t1y-252FbUYhcAiim2riM-252BPNuF15BkTY-252F0-253D-26reserved-3D0&d=DwIGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=jk8b7VD3EbipirdboILPBAS_9QeCCf4z52Mf08v6REk&s=gNyYA6cfz3O0LLDMvN7vRlEBXkLTAIOwohq3qtzrDd8&e=
    >>>>>
    >>>>>
    >>>>>
    >>>>> 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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    >>>>> under applicable tax laws and regulations.
    >>>>>
    >>>>>
    >>>>>
    >>>>> World IP Day 2017 – Join the conversation
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