[gnso-rpm-wg] TMCH Blog

Thu Feb 2 20:08:06 UTC 2017

In US, one of the benefits of registration is a presumption of validity of
ownership, and exclusivity with respect to the goods/services covered by
the registration. Only by successfully challenging the registration would
the owner lose that benefit. After 5 years, assuming certain documents are
filed, the registration becomes conclusive evidence in certain respects.

On Thu, 2 Feb 2017 at 21:25 Lori Schulman <lschulman at inta.org> wrote:

> As a clarification to the point of law, TM rights are presumed until they
> are challenged.  George, to your point, TM rights may certainly be
> challenged.  However, the presumption is with the owner  of the TM
> registration until such challenge prevails.  Under U.S. law, TM
> registrations are proof of right.  They are more than a notice of claim.
> An application is the notice of claim, the resulting registration presumes
> the right.  I certainly welcome trademark practitioners from jurisdictions
> to weigh in on whether registrations are “notice of a claim” or considered
> proof of ownership until otherwise successfully challenged.
>
>
>
> Lori
>
>
>
> Lori S. Schulman
>
> Senior Director, Internet Policy
>
> *International Trademark Association (INTA)*
>
> +1-202-704-0408, Skype: lsschulman
>
>
>
> [image: cid:image005.jpg at 01D270D2.1801CD20]
>
>
>
> *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 2:19 PM
> *To:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
>
>
> *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?
>
>
> http://www.nobelprize.org/nobel_prizes/economic-sciences/laureates/2001/press.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 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
> > 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 <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_wiki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&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=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6g71cr0vEGbww0X9qgsNDU&e=
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> >
> > 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 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
> >> 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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-- 
jonathan matkowsky, vp - ip & head of global brand threat mitigation
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