[gnso-rpm-wg] TMCH Blog

Thu Feb 2 20:36:30 UTC 2017

J. Scott: I'm not a lawyer, nor am I practising trademark law. I made
a reference to INTA's website, and to the USPTO's own research, in
furtherance of a discussion we're having on this list. What makes you
think I'm not allowed to do so? If you have a problem with the content
of my messages, dispute the content, rather than seeking to silence
the speaker of that content.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Thu, Feb 2, 2017 at 3:29 PM, J. Scott Evans <jsevans at adobe.com> wrote:
> 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=
>>>> > _______________________________________________
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>>>> > 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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