[gnso-rpm-wg] TMCH Blog

[J. Scott Evans]

George:

Are you a trademark attorney? Are you an attorney? If not, I think it
would be best if you refrain from practicing law. If you are, I point you
to McCarthy on Trademarks & Unfair Competition for US practice and
Trademarks Throughout the World for a glimpse of international trademark
laws.

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, 12:23 PM, "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:

>Without belabouring the obvious:
>
>1. "Incontestability" is less absolute than it sounds. Since Marc
>appears to dislike links to Wikipedia, let me choose a reference that
>he might prefer, namely INTA:
>
>http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUn
>derstandIt.aspx
>
>"Despite the name, incontestability does not provide the registration
>with a complete shield against attack. Registrations are subject to
>cancellation at any time based on any of the following: (1)
>genericness; (2) functionality; (3) abandonment; (4) fraud on the
>USPTO; (5) immorality, deception or scandalousness; (6) disparagement;
>(7) false suggestion of a connection; (8) geographical indications on
>wines or spirits meeting certain requirements; (9) representation of a
>flag or coat of arms of any nation; or (10) representation or name of
>a living person without his or her consent or of a deceased president
>without the consent of his widow. So the shield of incontestability
>has been likened to the proverbial armor made of Swiss cheese rather
>than a coat made of metal."
>
>Let me repeat the "takeaway", namely "armor made of Swiss cheese."
>
>2. As for what is "fact" vs "evidence" re: the meaning of a TM
>registration, let me remind folks of some alarming statistics posted
>to this list last August:
>
>http://mm.icann.org/pipermail/gnso-rpm-wg/2016-August/000474.html
>
>"The results of the pilot program indicate that a substantial majority
>of foreign registrants, 73% under the Madrid Protocol and 65% under
>the Paris Convention, have submitted false declarations of use and
>have therefore received trademark protection to which they are not
>entitled in the United States."
>
>"During the two-year pilot program, the USPTO found that 51% of the
>audited registration owners were unable to satisfy these additional
>proof requirements. The USPTO cancelled 16% of the audited
>registrations in their entirety because the registration owners failed
>to respond to the request for additional proof or any other issues
>raised during the examination of the original affidavit. In addition,
>35% of the audited registration owners requested that some of the
>goods or services be deleted from their registration."
>
>"A register that does not accurately reflect marks in use in the
>United States for the goods/services identified in registrations
>imposes costs and burdens on the public."
>
>In order to have a balanced and thorough review of the TMCH, we need
>to keep these things in mind.
>
>Sincerely,
>
>George Kirikos
>416-588-0269
>http://www.leap.com/
>
>
>
>On Thu, Feb 2, 2017 at 3:08 PM, jonathan matkowsky
><jonathan.matkowsky at riskiq.net> wrote:
>> 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 ³notice of a claim² 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
>>>
>>>
>>>
>>>
>>>
>>> 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 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_wi
>>>ki_Signalling-5F-28economics-29&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB
>>>7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4
>>>g3JWuGXUa1FwI&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=DwIG
>>>aQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1
>>>c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWuGXUa1FwI&s=A_wfuQ-jCOYyo9r24YJ9m6
>>>g71cr0vEGbww0X9qgsNDU&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 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=
>>> > _______________________________________________
>>> > gnso-rpm-wg mailing list
>>> > gnso-rpm-wg at icann.org
>>> >
>>> > 
>>>https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailma
>>>n_listinfo_gnso-2Drpm-2Dwg&d=DwIGaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-
>>>UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=LGFzEnWv-myJ-WyHhwMfs41uWqUos4g3JWu
>>>GXUa1FwI&s=g9D6x_5yyONXbDzXKuaVg7WsGRorHP9u7RikcGTnhtY&e=
>>> >
>>> > 
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>>
>> --
>> jonathan matkowsky, vp - ip & head of global brand threat mitigation
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