[gnso-rpm-wg] TMCH Blog
trachtenbergm at gtlaw.com
trachtenbergm at gtlaw.com
Thu Feb 2 19:24:51 UTC 2017
Sorry George. While it is true that TM registrations can be and are disputed and cancelled, while they are in force they are protected under the law of the issuing jurisdiction. The fact that a trademark, law, or even a contract for that matter may at some point be challenged and/or terminated/repealed does not mean that the trademark, law, or contract does not have any effect while still active/in force. Under your thinking there is no obligation to abide by any law or contract because there is the possibility that at some point in the future it may be challenged or repealed. Good luck with that argument in court!
Marc H. Trachtenberg
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
trachtenbergm at gtlaw.com | www.gtlaw.com
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 1:19 PM
Subject: Re: [gnso-rpm-wg] TMCH Blog
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?
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."
On Thu, Feb 2, 2017 at 2:06 PM, <trachtenbergm at gtlaw.com> wrote:
> Thank you for your economics tutorial based on Wikipedia - certainly an authoritative source.
> Regardless I don’t 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
> 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:
> 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.
> George Kirikos
> On Thu, Feb 2, 2017 at 1:36 PM, George Kirikos <icann at leap.com> wrote:
>> (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 isn’t 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 can’t 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
>> 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.
>> George Kirikos
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