[Gnso-igo-ingo-crp] Question about ICANN General Counsel report on USPTO practice relating to IGO identifiers protected by Article 6ter

Tue Sep 16 04:12:22 UTC 2014

All,

Here is the relevant text from the Lanham Act, section 2a and 2b.  Although the opinion linked below indicates likelihood of confusion is not the test you will find substantially equivalent language in Section 2(a), copied below ("disparage or falsely suggest a connection with")"

/////////////
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501 (9) of title 19) enters into force with respect to the United States.
(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

Regards,

Paul Keating

> On 15 Sep 2014, at 04:01 pm, Mary Wong <mary.wong at icann.org> wrote:
> 
> Dear all,
> 
> Staff thought we should follow up on George’s question regarding ICANN General Counsel’s point on the United States Patent & Trademark Office (USPTO) process relating to IGOs and Article 6ter. We hope that the following information from the USPTO will help: http://tmep.uspto.gov/RDMS/mashup/html/page/manual/TMEP/Apr2014/TMEP-1200d1e4645.xml
> 
> The link briefly describes generally how a country deals with a notification of a protected IGO under Article 6ter (including the treaty-prescribed period for national objections) as well as the USPTO’s practice regarding attempted trademark registrations in this regard.
> 
> Cheers
> Mary
> 
> Mary Wong
> Senior Policy Director
> Internet Corporation for Assigned Names & Numbers (ICANN)
> Telephone: +1 603 574 4892
> Email: mary.wong at icann.org
> 
> 
> From: Phil Corwin <psc at vlaw-dc.com>
> Date: Monday, September 15, 2014 at 12:40 PM
> To: George Kirikos <icann at leap.com>, "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
> Subject: Re: [Gnso-igo-ingo-crp] Attachments (Re: Agenda and documents for WG meeting on Monday 15 September)
> 
> Thanks for raising that, George, We can get into those details on today’s call.
>  
> Philip S. Corwin, Founding Principal
> Virtualaw LLC
> 1155 F Street, NW
> Suite 1050
> Washington, DC 20004
> 202-559-8597/Direct
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>  
> Twitter: @VlawDC
>  
> "Luck is the residue of design" -- Branch Rickey
>  
> From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of George Kirikos
> Sent: Monday, September 15, 2014 6:49 AM
> To: gnso-igo-ingo-crp at icann.org
> Subject: Re: [Gnso-igo-ingo-crp] Attachments (Re: Agenda and documents for WG meeting on Monday 15 September)
>  
> It's unclear to me how General Counsel arrived at some of his conclusions. e.g for the United States and IGO Protections, (right-most column), it was stated (with no reference/authority) that:
> 
> "The US Patent and Trademark Office is required to refuse registrations of marks that conflict with registered marks of IGOs, so no registration is possible (once the marks are identified to the USPTO by a member country of the Paris Convention).  No special protection seems to exist to bar the delegation of top- or registration of second-level domains containing the IGO names or acronyms by ICANN, a registry or registrar."
> 
> Yet, consider the example of the mark "IEA". It's registered by the International Energy Association, an IGO according to:
> 
> http://en.wikipedia.org/wiki/List_of_intergovernmental_organizations
> 
> via the Article 6ter convention:
> 
> http://tsdr.uspto.gov/#caseNumber=89001408&caseType=SERIAL_NO&searchType=statusSearch
> 
> with a filing on March 20, 2002. Yet, the identical mark "IEA" was registered 2 years later (on  May 4, 2004):
> 
> http://tsdr.uspto.gov/#caseNumber=76518784&caseType=SERIAL_NO&searchType=statusSearch
> 
> by a different entity, for "arranging and providing for the return of mortal remains to designated locations". Reviewing the documents for that application, it appears that markholder sought no special permission from the International Energy Association, yet was not refused the mark.
> 
> I think this hinges on the meaning of "conflict", perhaps -- i.e there's no conflict if the goods and services are unrelated. So, General Counsel's analysis might be correct if it permits concurrent registrations of unrelated goods/services for the same mark. Does that make sense? Thoughts?
> 
> I'm sure there are other examples out there (it took me 5 mins to find that one).
> 
> Sincerely,
> 
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>  
> 
> 
> 
> 
> 
> 
>  
> On Mon, Sep 15, 2014 at 6:23 AM, George Kirikos <icann at leap.com> wrote:
> This was a considerable amount of material to send just 1 business day before a call. I hope everyone had sufficient time to review. This is why I asked during the chat:
> 
> http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-September/000041.html
> 
> "George Kirikos:Can we have the draft work plan well in advance of the next meeting?"
>  George Kirikos:(if we're just seeing it for the first time next Monday, we won't be able to put forth meaningful comments/analysis)
> 
> Sincerely,
> 
> George Kirikos
> 416-588-0269
> http://www.leap.com/
> 
> 
> 
>  
> On Fri, Sep 12, 2014 at 5:08 PM, Mary Wong <mary.wong at icann.org> wrote:
> Apologies for forgetting the Work Plan attachments the first time!
>  
> Cheers
> Mary
>  
>  
>  
> From: Mary Wong <mary.wong at icann.org>
> Date: Friday, September 12, 2014 at 5:01 PM
> To: "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
> Subject: [Gnso-igo-ingo-crp] Agenda and documents for WG meeting on Monday 15 September
>  
> Dear WG members,
>  
> Please find below a proposed agenda for the upcoming WG call on Monday 15 September, which staff have suggested to our Co-Chairs but have not yet had a chance to discuss more fully. As such, it is subject to any changes that they may wish to make between now and our call: 
> Roll Call/Updates to SOIs
> Review Work Plan (see attached Work Plan Extract and full Work Plan Chart on which the Extract is based; we will use the Extract to walk the WG through each proposed phase on Monday)
> Discuss outcomes of prior research (see the list on the WG wiki space at https://community.icann.org/x/DrvhAg, as further explained below)
> Next steps
> For agenda item #3, we have added some documents comprising research, findings and other reports used by the original IGO-INGO PDP WG for its Final Report that was issued in November 2013. Among the documents added, WG members may wish to note in particular: 
>  
> (1) the ICANN General Counsel’s research report to that WG from May 2013 (https://community.icann.org/download/attachments/48347918/ICANN%20GCO%20Report%20to%20IGO%20INGO%20PDP%20WG%20May%202013.doc?version=1&modificationDate=1410554576915&api=v2);  
> (2) Annex 4 of the Final Issue Report that led to the initiation of that WG from October 2012 (https://community.icann.org/download/attachments/48347918/Final%20GNSO%20Issue%20Report%20on%20the%20Protection%20of%20International%20Organization%20Names%20in%20New%20gTLDs.pdf?version=1&modificationDate=1410554706870&api=v2);
> (3) The OECD’s report on cybersquatting to WIPO’s Standing Committee on Trademarks (SCT) from 2002 (https://community.icann.org/download/attachments/48347918/OECD%20Report%20on%20Cybersquatting%20to%20WIPO%20SCT%202002.pdf?version=1&modificationDate=1410554353329&api=v2);
> (4) The Red Cross movement’s report on special protections to WIPO’s SCT from 2002 (https://community.icann.org/download/attachments/48347918/IFRC%20Report%20to%20WIPO%20SCT%20on%20Special%20Protections%202002.pdf?version=1&modificationDate=1410554389301&api=v2); and
> (5) The WIPO Secretariat’s report on IGO protections, also from 2002 (https://community.icann.org/download/attachments/48347918/WIPO%20Secretariat%20Report%20on%20IGO%20Protections%202002.pdf?version=1&modificationDate=1410554411330&api=v2).
>  
> ICANN staff will summarize some of the key findings from these documents for further WG review and discussion under agenda item #3. We hope that this will provide a useful basis for WG members to decide on next steps in accordance with the proposed Work Plan (agenda item #4).
>  
> Thanks and cheers
> Mary
>  
> Mary Wong
> Senior Policy Director
> Internet Corporation for Assigned Names & Numbers (ICANN)
> Telephone: +1 603 574 4892
> Email: mary.wong at icann.org
>  
>  
>  
>  
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