[gnso-rpm-wg] TMCH Blog

Thu Feb 2 19:23:27 UTC 2017

George:

The evidentiary weight of a trademark registration differs from
jurisdiction to jurisdiction. In the US, a certificate of registration
from the USPTO does have some proof value, that is subject to certain
defenses for 5 years and a lesser set of defenses should the mark reach
incontestable status after 5 years. I think making sweeping statements
like those contained in your closing paragraph are not helpful.

J. Scott

J. Scott Evans | Associate General Counsel - Trademarks, Copyright,
Domains & Marketing |
Adobe 
345 Park Avenue
San Jose, CA 95110
408.536.5336 (tel), 408.709.6162 (cell)
jsevans at adobe.com
www.adobe.com

On 2/2/17, 11:19 AM, "gnso-rpm-wg-bounces at icann.org on behalf of George
Kirikos" <gnso-rpm-wg-bounces at icann.org on behalf of icann at leap.com> wrote:

>Marc: I used the Wikipedia link as a fairly neutral starting point for
>the theory of signalling, and not "authoritative". Would you consider
>the Nobel Prize in Economics for work on signalling to be
>"authoritative" enough for you?
>
>http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/pr
>ess.html
>
>Or should I have provided (like most of the posts to this list) no
>external references at all, and simply allow people to go to Google on
>their own? Which aspect of the concept of signalling do you disagree
>with?
>
>As for "registrations is proof that the marks are not only worthy of
>protection, but that they are in fact protected under the law of the
>issuing jurisdiction."
>
>Hmmm, that's not correct, given that TM registrations can be and are
>disputed and cancelled. Trademark registration is *evidence* and
>*notice* of a *claim* to a trademark right (perhaps even a strong
>claim), but are not "proof" of anything as a "fact."
>
>Sincerely,
>
>George Kirikos
>416-588-0269
>http://www.leap.com/
>
>
>On Thu, Feb 2, 2017 at 2:06 PM,  <trachtenbergm at gtlaw.com> wrote:
>> George,
>>
>> Thank you for your economics tutorial based on Wikipedia - certainly an
>>authoritative source.
>>
>> Regardless I don¹t think your application of this to the TMCH is
>>appropriate and disagree with your description  of how the TMCH
>>functions. When trademark holders submit their registrations to the
>>TMCH,  they are not trying to prove that their marks are "worthy" of
>>protection.  The fact that they have registrations is proof that the
>>marks are not only worthy of protection, but that they are in fact
>>protected under the law of the issuing jurisdiction.
>>
>> Best regards,
>>
>> Marc H. Trachtenberg
>> Shareholder
>> Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago,
>>IL 60601
>> Tel 312.456.1020
>> Mobile 773.677.3305
>> trachtenbergm at gtlaw.com | www.gtlaw.com
>>
>>
>>
>>
>>
>> -----Original Message-----
>> From: gnso-rpm-wg-bounces at icann.org
>>[mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
>> Sent: Thursday, February 02, 2017 12:58 PM
>> To: gnso-rpm-wg
>> Subject: Re: [gnso-rpm-wg] TMCH Blog
>>
>> To continue the "economics tutorial", this is all directly related to
>>the concept of signalling:
>>
>> 
>>https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wik
>>i_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7e
>>HT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3J
>>WuGXUa1FwI&s=_-ZU3Mu11NJjQnuoQdYhV9epeypY8SYFTzL35TJgjqs&e=
>>
>> The classic example comes from the education credentials market. How
>>does a job candidate signal that they're a high quality hire? The idea
>>is that high quality job candidates can obtain good degrees, and it's
>>much costlier for low quality job candidates to get those same
>>credentials.
>>
>> Let's apply this to the TMCH -- implicitly, trademark holders are
>>jumping through hoops at present to determine that their marks are
>>"worthy" of protection. The hoops they're jumping through are:
>>
>> 1. pay the TMCH fees, and
>> 2. show evidence of national TM registration in a jurisdiction, and 3.
>>show proof of use
>>
>> However, unlike the academic credentials market above, where "good"
>> and "bad" job candidates face different costs, in the TMCH the "good"
>> and "bad" trademark holders face essentially the SAME costs! (i.e. the
>>fees are the same, one can get a Pakistani TM for under $10, and one can
>>throw up a webpage for free to show "proof of use").
>>
>> In other words, the mechanisms for signalling are entirely broken in
>>the TMCH. Economics 101. The "bad guys" certainly know it's broken. As a
>>policymaking body, we should understand *why* it's broken, and either
>>(1) make stronger signals to differentiate and distinguish between
>>worthy and unworthy marks, or (2) as I suggested earlier, set an
>>explicit direct price to change the balance and behaviour directly.
>>
>> Sincerely,
>>
>> George Kirikos
>> 416-588-0269
>> 
>>https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIGa
>>Q&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&
>>m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6g71
>>cr0vEGbww0X9qgsNDU&e=
>>
>>
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>> On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann at leap.com> wrote:
>>> Hello,
>>>
>>> (and trying to combine multiple responses in one email)
>>>
>>> On Thu, Feb 2, 2017 at 12:51 PM,  <trachtenbergm at gtlaw.com> wrote:
>>>> I think you are trying to apply domain speculation thinking where it
>>>>is all about monetary value to protection of trademark rights, which
>>>>is not necessary focused or valued in terms of specific monetary
>>>>value.  They are not the same thing.
>>>>
>>>> If life isn¹t fair is an acceptable justification then why change the
>>>>current system because it is not fair that some may have gamed it by
>>>>using trademark registrations obtained solely for the purpose of
>>>>registering valuable domain names during sunrise?  You can¹t have it
>>>>both ways.
>>>
>>> 1. The "domain speculation thinking" is your term for what is simply
>>> rational economic decision-making. Even for trademark protection,
>>> rational trademark holders prioritize enforcement based on a
>>> comparison between the economic benefit of stopping the abuse relative
>>> to the economic cost of that enforcement.
>>>
>>> 2. The "life isn't fair" in my statement was referencing the fact that
>>> not everyone has the same wealth. That is entirely different from
>>> those misusing trademark registrations obtained solely for the purpose
>>> of registering valuable domain names -- those TMs would be invalid in
>>> jurisdictions requiring use (and thus shouldn't have been granted in
>>> the first place).
>>>
>>> 3. Some folks continue to dance around the issue, and ignore the
>>> economics completely. Each and every time you try to add a wrinkle to
>>> the procedure (i.e. "tweaks" that seek to give better proof of use, or
>>> other modifications), all that does is slightly change the "costs" for
>>> some actors, but doesn't change the underlying economics by much. i.e.
>>> it attempts to impose a "price" indirectly, rather than explicitly and
>>> directly setting a price that would actually change behaviour.
>>>
>>> 4. For those saying "small" trademark holders would be affected ---
>>> fine, change the economics accordingly --- should the quota be 10,000
>>> marks? Should the cost be $1? Once you make the cost explicitly be $1,
>>> that just says "Fine, we're going to accept all the gaming behaviour,
>>> because we're prepared to look the other way!" That's an invitation to
>>> those who are misusing the sunrise periods to continue doing what
>>> they're doing.
>>>
>>> While some constituencies in the GNSO might be fine with that balance
>>> (i.e. accept every TM, and allow all kinds of abuse of the sunrise
>>> periods), other constituencies might draw the line for that balance
>>> elsewhere.
>>>
>>> 5. Let me give you an example -- ACPA allows damages of up to $100,000
>>> for cybersquatting. That's an explicit cost on cybersquatters that
>>> they take into account, and has a deterrent effect. What if that limit
>>> instead was $500? Behaviour would obviously change accordingly,
>>> because cybersquatters are rational.
>>>
>>> 6. A further example -- it costs $1000+ to file a UDRP (on top of
>>> legal costs, so a number like $5000 might be more relevant for those
>>> who use lawyers). If the total costs were $300, there would be a lot
>>> more filings (which would reduce the benefits of cybersquatting, and
>>> thus change the economics of abuse).
>>>
>>> In conclusion, the economics of all the actors are paramount, and seem
>>> to be mostly ignored. By focusing on those economics directly, as
>>> policymakers we can precision-target the policies to directly target
>>> those behaviours, and reduce all the "collateral damage" on the
>>> innocent actors.
>>>
>>> Sincerely,
>>>
>>> George Kirikos
>>> 416-588-0269
>>> https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=Dw
>>> IGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBz
>>> Cxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r2
>>> 4YJ9m6g71cr0vEGbww0X9qgsNDU&e=
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