[gnso-rpm-wg] TMCH Blog

Thu Feb 2 22:05:01 UTC 2017

George,

I believe that your mention about exceptions to incontestability in US is universally accepted as ground to cancel rights: bad faith and fraud. Gaming the system basically is using a legal system to do something that is wrong for the right of others. The fact that some trademark owners can behave bad is nothing that can be used for create or correct the international domain legal system.

Hector

Héctor Ariel Manoff
Vitale, Manoff & Feilbogen
Viamonte 1145 10º Piso
C1053ABW Buenos Aires
República Argentina
Te: (54-11) 4371-6100
Fax: (54-11) 4371-6365
E-mail: amanoff at vmf.com.ar
Web: http://www.vmf.com.ar
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-----Mensaje original-----
De: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] En nombre de George Kirikos
Enviado el: jueves, 02 de febrero de 2017 17:37
Para: J. Scott Evans
CC: gnso-rpm-wg
Asunto: Re: [gnso-rpm-wg] TMCH Blog

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=
>>>> > _______________________________________________
>>>> > 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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