[gnso-rds-pdp-wg] "Thanks" is Trademarked!

Sat Jun 11 14:05:46 UTC 2016

I personally have enjoyed the discussion on this but I would like to suggest that it is not contributing to our actions at hand and I recommend that we move on.  To the extent that any issues in this case might be helpful in our soon to begin deliberations on possible requirements, that will be the time to bring them up.  I am not suggesting that they will be relevant or not but we will have the opportunity to discuss that at the appropriate time.

I think all of us know that we will have at least two general points of view that will be at odds when we start deliberating.  If either side was as clear cut as some may think, I believe the Whois debate would have been settled a long time ago.  The fact is that it is still going on and that is why the WG exists.

Everyone will be encouraged to share their points of view as they relate to various areas of deliberation as long as it is done constructively and respectfully.  Then we will need to diligently work together in spite of our differences to find ways to bridge our differences and come up with solutions that most if not all of us can support.  This will be a big test of our willingness and commitment to make the multi-stakeholder model work for the good of the overall community and I will make every effort to help us pass that test.

Finally, let me say that I chose this point to intervene only because it was the most recent message in this thread.  My comments are not directed at Sam as the most recent contributor or Carlton as the initiator or anyone who commented in between. They are intended for all of us as a team.

Have a good weekend.

Chuck

From: gnso-rds-pdp-wg-bounces at icann.org [mailto:gnso-rds-pdp-wg-bounces at icann.org] On Behalf Of Sam Lanfranco
Sent: Saturday, June 11, 2016 9:37 AM
To: Greg Shatan; Stephanie Perrin
Cc: gnso-rds-pdp-wg at icann.org
Subject: Re: [gnso-rds-pdp-wg] "Thanks" is Trademarked!

I am with Greg on this one. There are dark corners in the world of trademarks and trademark litigation, but this is not one of them.

On both a lighter and more substantial side one can check out the Electric Frontier Foundation (EFF) "Stupid Patent AND Trademark of the Month" offerings,

and their latest offering around "My Health" at https://www.eff.org/deeplinks/2016/05/stupid-patent-and-trademark-month-my-healthr
Sam L.

On 6/11/2016 2:24 AM, Greg Shatan wrote:
Nothing in the reported case prevents anyone from saying Thank You or Thanks.  Implying otherwise is unhelpful.

On Saturday, June 11, 2016, Stephanie Perrin <stephanie.perrin at mail.utoronto.ca<mailto:stephanie.perrin at mail.utoronto.ca>> wrote:

I am with Carleton on this one.  Everybody should be allowed to say thanks.  not enough of it around....

Stephanie Perrin

On 2016-06-10 21:13, Carlton Samuels wrote:
Greg:
I hold no brief for Reuters. I looked at the PTO database and saw all you said. And quite frankly if I were an IP lawyer in the trenches and on the clock,  I probably would be encouraging these fellas to fight.

All that aside, howsoever you slice or dice it, granting exclusive commercial rights to [qualified] "thanks" or "thankyou" seems over the top.

Carlton

On Fri, Jun 10, 2016, 5:13 PM Greg Shatan <gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>> wrote:
Not sure anyone needs to be tarred and feathered here.  But let's get the facts straight. (Perhaps those who don't get the facts straight are the ones who should be tarred & feathered, etc., but that seems rather harsh.  I prefer to educate rather than vilify.)

Citi did not sue AT&T for "using the word in a commercial." Citi sued AT&T for apparently seeking to brand its new customer loyalty program as AT&T THANKS when Citibank already has a longstanding (since 2004) customer loyalty program branded as CITI THANK YOU, with about 15 million members in the US, and a trademark registered since 2011 for "Promoting the goods and services of others through administration of incentive reward and redemption programs by distributing rewards for credit and debit card use, and for banking and wealth management customer loyalty".  And AT&T didn't merely use the THANKS brand, they applied for a trademark registration for AT&T THANKS for "Providing incentive award programs for customers for the purpose of promoting and rewarding loyalty."

It seems like an entirely reasonable claim that consumers could be confused between a THANK YOU brand loyalty program and a THANKS brand loyalty program.  Without opining on the likelihood of success, it's an entirely reasonable claim of infringement.  Indeed the subject matter of this email demonstrates such confusion -- THANKS is not "trademarked" by anyone, in spite of the attention-getting headline.  CITI THANK YOU is a registered trademark of Citigroup.  AT&T THANKS is the subject of a pending application by AT&T.

If AT&T had merely "used the word in a commercial" and not as a trademark, there would be nothing to object to, and no claim, and this email wouldn't exist.  The actual facts are significantly different.

That's the problem with suggesting tarring and feathering, and other such actions of a mob mentality.  They are based on incorrect facts and a desire to inflame people, rather than to inform them.  Unfortunately, information can come too late to save the victims of such an attack (hot tar causes serious and often fatal burns).  Thankfully, all that was suggested was a rhetorical tarring and feathering, so no one actually suffered at the hands of an ill-informed, intemperate mob.

Hope that is informative.

Greg

[Caveats: (1) I am a CITI THANK YOU cardholder and use my THANK YOU points regularly on Amazon where they are available as dollars. (2) From around 1999 to 2004, the firm I was with represented Citigroup in trademark matters, though I personally didn't do very much of that work.  I have not had any professional relationship with Citigroup since 2004 (3) This should not be construed as legal advice.]

On Fri, Jun 10, 2016 at 3:15 PM, Carlton Samuels <carlton.samuels at gmail.com<javascript:_e(%7B%7D,'cvml','carlton.samuels at gmail.com');>> wrote:
..and Citi sues AT&T for using  the word in a commercial!  It also owns thankyou.com<http://thankyou.com> as well!

I checked the USPTO database and it was a revelation; lots of "thankyou" there, dead and alive. See:  http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4803:ku1j42.1.1

So I ask you, who're the halfwits that need to be tarred, feathered and put in stock in the village square for a quick kick in the butt from every passerby?

http://www.reuters.com/article/us-at-t-citigroup-lawsuit-idUSKCN0YW1K3

-Carlton

[Disclosure: I'm partial to AT&T on account they paid for graduate school.]

==============================
Carlton A Samuels
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Strategy, Planning, Governance, Assessment & Turnaround
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