[gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)

Winterfeldt, Brian J. BWinterfeldt at mayerbrown.com
Wed Feb 22 17:49:03 UTC 2017 

Hi all,

In reviewing the list of suggested design marks, I had a few concerns.  I understand that the primary purpose of the exercise is to “test” whether the TMCH would accept these marks based on their existing criteria for handling “device/image” marks as the term is used in the TMCH Guidelines.  But I’m not sure I understand why the three specific marks in the list were selected, and question whether they are appropriate examples for this purpose.

Even without any design elements, each of the three marks (PARENTS, FRUIT OF THE LOOM, and CARS) do not appear to be generic in connection with the goods/services in the respective registrations.  Yes, each mark is composed of words which one could locate in a dictionary but this does not make the marks “generic” in the trademark context because they are tied to goods/services that are not synonymous with the dictionary definition (or a genus or species thereof).  By way of comparison, APPLE is synonymous with a species of fruit and would be generic if used in connection with apples, or perhaps even fruit as a category.  But PARENTS is not synonymous with magazines (even magazines about parenting, child-rearing, etc.), nor are “parents,” as defined in the dictionary, related in any ordinary meaning of the word to magazines.  Similarly, the term CARS would be generic if used in connection with cars, perhaps even a genus or species of car.  But CARS is not synonymous with the goods/services associated with the cited registration, namely “Clothing, namely, belts, coats, gloves, head wear, infantwear, jeans, pants, polo shirts, rainwear, scarves, sweat pants, sweat shirts, and wrist bands.”  See CARS (U.S. Reg. No. 3419857<tel:3419857>) (Apr. 29, 2008).

Finally, FRUIT OF THE LOOM is itself not a generic phrase or term that one would find in the dictionary, even though it is composed of individual words that one could find in the dictionary.  It is a coined phrase that is generally considered to be a “suggestive” trademark, as it “requires imagination, thought and perception to reach a conclusion as to the nature of the goods.”  See, e.g., Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, at 10-11<x-apple-data-detectors://3> (quoting 3 Callmann, Unfair Competition, Trademarks and Monopolies § 71.2 (3d ed.)).  Other examples of suggestive trademarks include similar coined phrases composed of individual dictionary words, like CHICKEN OF THE SEA or COPPERTONE.  But suggestive marks are deemed to be inherently distinctive within the meaning of trademark law, and again would not require any design elements to be registrable (at least under US law).

Thus, unsurprisingly, we were able to locate corresponding registrations for just the basic word mark, without any design elements, for both the PARENTS and FRUIT OF THE LOOM marks.  See, e.g., PARENTS (U.S. Reg. No. 2631504<tel:2631504>) (Oct. 8, 2002); FRUIT OF THE LOOM (U.S. Reg. No. 1876708<tel:1876708>) (Jan. 31, 1995).  While our preliminary search did not yield a basic word mark for CARS owned by the same entity as the listed CARS design mark (Disney), this is likely because they only use the design mark in commerce and would not be able to show actual use in commerce of the basic word mark, a fundamental requirement of trademark registration in the US.  That said, there are numerous word mark registrations for CARS owned by various other entities in connection with a wide variety of goods and services.  See, e.g., CARS (U.S. Reg. No. 1862371<tel:1862371>) (Nov. 15, 1994) (used in connection with “computer software for contract administration and rebate management for use by pharmaceutical companies”); CARS (U.S. Reg. No. 3486890<tel:3486890>) (June 3, 2008) (used in connection with “Financial information services, namely, providing ratings and analysis of community development financial institutions, commonly referred to as CDFIs, to assist investors and donors in investment decision-making”).

I tend to agree with some other comments that we might want to focus on marks where the underlying word element is expressly disclaimed in the registration, which is not the case with the three examples above, to see how the TMCH handles such marks.  Ultimately, again, we do not believe it is appropriate for the TMCH to be making judgment calls as to the validity of a submitted mark, so long as the mark is valid and subsisting in the jurisdiction where it is protected (i.e. registered in the national or regional trademark office, protected by statute, or by judicial decree, per the three primary modes of protection described in the TMCH Guidelines).

Finally, for the reasons enumerated by Lori, I’m not sure it would be appropriate to request that the TMCH divulge its own examples of marks currently in the TMCH that represent examples of recorded device/image marks.

I hope this information and suggestions are helpful as the Working Group considers next steps with respect to reverting to Deloitte with additional or clarifying questions around the issue of “device/image” (or “design”) marks.

Best regards,

Brian

Brian J. Winterfeldt
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP
bwinterfeldt at mayerbrown.com<mailto:bwinterfeldt at mayerbrown.com>
1999 K Street, NW<x-apple-data-detectors://2/2>
Washington, DC  20006-1101<x-apple-data-detectors://2/2>
202.263.3284<tel:202.263.3284> direct dial
202.830.0330<tel:202.830.0330> fax

1221 Avenue of the Americas<x-apple-data-detectors://3/0>
New York, New York  10020-1001<x-apple-data-detectors://3/0>
212.506.2345<tel:212.506.2345> direct dial

On Feb 22, 2017, at 4:08 PM, Lori Schulman <lschulman at inta.org<mailto:lschulman at inta.org>> wrote:

Paul,

Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant.  It’s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names.

Lori

Lori S. Schulman
Senior Director, Internet Policy
International Trademark Association (INTA)
+1-202-704-0408, Skype: lsschulman

[cid:image005.jpg at 01D270D2.1801CD20]

From: gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Keating
Sent: Wednesday, February 22, 2017 4:58 PM
To: J. Scott Evans <jsevans at adobe.com<mailto:jsevans at adobe.com>>
Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)

J. Scott,

I see no reason why we cannot ask for this information.  It is a discreet set of data points that is of material importance.

Can you please provide an explanation for your opposition?

Paul


From: "J. Scott Evans" <jsevans at adobe.com<mailto:jsevans at adobe.com>>
Date: Wednesday, February 22, 2017 at 3:32 PM
To: Paul Keating <paul at law.es<mailto:paul at law.es>>
Cc: Georges Nahitchevansky <ghn at kilpatricktownsend.com<mailto:ghn at kilpatricktownsend.com>>, Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>, "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)

I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered.

Sent from my iPhone

On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul at law.es<mailto:Paul at law.es>> wrote:
Then I s suggest we do both?

Send the examples AND ask for the list.

Paul

From: Georges Nahitchevansky <ghn at kilpatricktownsend.com<mailto:ghn at kilpatricktownsend.com>>
Date: Wednesday, February 22, 2017 at 2:00 PM
To: "J. Scott Evans via gnso-rpm-wg" <jsevans at adobe.com<mailto:jsevans at adobe.com>>, Paul Keating <paul at law.es<mailto:paul at law.es>>, Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Cc: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)

+1

From: J. Scott Evans via gnso-rpm-wg
Sent: Wednesday, February 22, 2017 5:48 AM
To: Paul Keating; Mary Wong
Reply To: J. Scott Evans
Cc: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)


Team:

I disagree with Paul. I think asking Deloitte to tell us if the textual elements of Rebecca’s examples and for an explanation of their analysis would be very enlightening and helpful.

J. Scott Evans

From: <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Paul Keating <paul at law.es<mailto:paul at law.es>>
Date: Wednesday, February 22, 2017 at 12:10 AM
To: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Cc: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)

While a laudable effort imho this will not likely receive a useful response. It might be more productive to simply request a list of those
Figurative marks that have been accepted.

Alternatively ask what rules are applied in practice to determine the "prominent" textual aspects of a figurative mark.

The issue I feel is not the figurative containing textual elements otherwise registrable. Rather we are really after a figurative mark used to protect a textual element not otherwise protectable as a trademark.  E.g. "Fast Cars" with a green squiggly mark to claim rights in fast cars to sell automobiles.

Sincerely,
Paul Keating, Esq.

On Feb 22, 2017, at 7:47 AM, Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:
Dear all,

I’m sending this message on behalf of Rebecca Tushnet in relation to one Action Item from the 15 February Working Group call. This was for her to take the lead in suggesting some examples of design marks that we can send to Deloitte for their opinion on whether the examples will or will not likely be accepted into the TMCH.

Please review the attached examples and send your comments to this list. Thank you.

Cheers
Mary

From: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Date: Monday, February 20, 2017 at 12:23
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Re: Action items and updated documents from Working Group call of 15 February

Dear all,

This is just a gentle reminder to circulate your suggestions this week for follow up questions and clarifications for Deloitte, based on the Working Group’s discussions to date of the tables for Categories 1 – 6.

To assist those who were not able to attend both sessions where the tables were discussed:

·         Wiki page containing call recording, transcript and updated table from 15 February (discussion of Categories 3 – 6): https://community.icann.org/x/TZ3DAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FTZ3DAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=Inh425CmRwEvSeCEOcHe1okhyvKs%2BkY3o2CgfE4z%2Bb0%3D&reserved=0>

·         Wiki page containing call recording, transcript, AC chat, updated table from 8 February (last discussion of Categories 1 -2), and compilation of TMCH Dispute Resolution Procedures:  https://community.icann.org/x/Q53DAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FQ53DAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=W5rbPPyEsO%2BNhGdpp8LV2kNVNqySLO3rZFghb0RvJw8%3D&reserved=0>.

Thanks and cheers
Mary

From: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Date: Thursday, February 16, 2017 at 18:37
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Action items and updated documents from Working Group call of 15 February

Dear all,

Please find attached the updated Tabular Summary for Categories 3-6 for your review (also posted to the Working Group wiki page with notes and recordings for this call, at https://community.icann.org/x/TZ3DAw)<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FTZ3DAw)&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=D0mgx8eiOFpQaLKN0vfLZY15QF%2BRYQ53xS3CELZoVqU%3D&reserved=0>. Please also note the following action items, which are also reflected in the updated table.

Action Items:


·         On Q7 (design marks) – Rebecca Tushnet to take the lead in developing a few examples of hypothetical design marks for sending to Deloitte for their views


·         On Q8 (Geographical Indicators) – Staff to confirm with OriGIn who may be able to submit G.I.s.


·         On Q9 (TM+50) – Working Group to review questions submitted by the Registries Stakeholder Group with a view toward agreement on whether to send them on to Deloitte


·         On Q14 (Accessibility) – Working Group to consider if there are additional/alternative sources that can provide us with more information.


·         [From last week] – please review the updated Tabular Summary for Categories 1 & 2 from last week and submit any follow up questions or suggestions for Deloitte to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FQ53DAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=W5rbPPyEsO%2BNhGdpp8LV2kNVNqySLO3rZFghb0RvJw8%3D&reserved=0>.


·         [From last week] – please review the TMCH Dispute Resolution Procedures and suggest areas for discussion or follow up to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FQ53DAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=W5rbPPyEsO%2BNhGdpp8LV2kNVNqySLO3rZFghb0RvJw8%3D&reserved=0>.

Next Steps:


·         Staff will compile additional suggestions received from Working Group members on possible questions and requests for follow up with Deloitte, from both Tabular Summaries for Categories 1 & 2 (from last week) and for Categories 3-6. Please try to submit your feedback by close of business in your time zone on Tuesday 21 February at the latest so that we can have a full list ready as soon as possible.

Thank you.

Cheers
Mary

From: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Date: Tuesday, February 14, 2017 at 11:08
To: "gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>" <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
Subject: Proposed agenda and documents for RPM Working Group call on 15 February

Dear all,

The proposed agenda for the next Working Group call, scheduled for 15 February 2017 at 1700 UTC, is as follows:


1.       Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest

2.       Review table for Categories 3-6, with view to developing additional questions for Deloitte or that require further information

3.       Next steps/next meeting

Please note that the table for Agenda Item #2 had been circulated previously, on 6 February, and is also available on our Working Group wiki space here: https://community.icann.org/x/_pHRAw<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2F_pHRAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=3xzSL6KYU336lGPb2Od95pGLp2frp97FCxFd2aUvxRs%3D&reserved=0>.

Please note also the Action Items from the meeting last week, which were as follows:


·         Over the next week, WG members to review the table for Categories 1 & 2 and the discussions to date, in order for staff to compile and send all follow up questions to Deloitte before ICANN58 so as to have an informed discussion with them at ICANN58 (updated table was circulated on 10 February and is also available here: https://community.icann.org/x/_pHRAw)<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2F_pHRAw)&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=dd7nVJJ2rVfUiPeVxbqjCcmNVA67r7s%2B25b3VAb7abU%3D&reserved=0>

·         WG members to also review the TMCH Dispute Resolution Procedures and agree on any follow up questions for Deloitte (the Procedures were circulated on 10 February and are also available here: http://trademark-clearinghouse.com/dispute)<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Ftrademark-clearinghouse.com%2Fdispute)&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=s8nvQhnkCDRKvqGYw8hpISNwkXP1hiN6diGLkgT0yaA%3D&reserved=0>.

Thanks and cheers
Mary


<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=4%2Bt3eev0uRSU5GF9ey2CkhXz81b9HAANcGLQovMSg94%3D&reserved=0>

________________________________

Confidentiality Notice:
This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner.
________________________________

***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=4%2Bt3eev0uRSU5GF9ey2CkhXz81b9HAANcGLQovMSg94%3D&reserved=0

__________________________________________________________________________


This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170222/028dc5fe/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 29526 bytes
Desc: image001.jpg
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170222/028dc5fe/image001-0002.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 29526 bytes
Desc: image001.jpg
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20170222/028dc5fe/image001-0003.jpg>

More information about the gnso-rpm-wg mailing list