[gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016

Tue Dec 13 12:18:58 UTC 2016

Please circulate it prior to the call.

On 12/13/16, 1:10 PM, "J. Scott Evans" <jsevans at adobe.com> wrote:

>The Co-Chairs have a proposed compromise revision drafted by Phil that we
>will propose to the group.
>
>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 12/13/16, 4:06 AM, "Paul Keating" <Paul at law.es> wrote:
>
>>Good suggestion J. Scott.
>>
>>Can we live with the question as follows?
>>
>>Should the scope of the TMCH be limited in its application to trademarks
>>containing dictionary terms which are generic or descriptive?  If so how?
>>
>>
>>
>>Paul
>>
>>
>>On 12/13/16, 12:51 PM, "J. Scott Evans" <jsevans at adobe.com> wrote:
>>
>>>Again, and at the risk of repeating myself. And, as Brian Beckham
>>>pointed
>>>out this morning, there are quite a few of us in the ICANN community and
>>>on the list that understand the nuances of generic, descriptive,
>>>arbitrary
>>>and fanciful marks as land out in Abercrombie by Learned Hand oh so long
>>>ago. However, in the bigger picture policy debate most stakeholders do
>>>not
>>>understand. They believe that a term is “generic” if it is a WORD with a
>>>meaning and are quite frustrated when they find that they cannot own
>>>ACETOOLS.COM for their site that is for really cool tools. This
>>>misunderstanding is then conflated in the policy debate and causes all
>>>kinds of confusion and misunderstanding. Hence, I believe the better
>>>term
>>>is “dictionary term” which under the Abercrombie factors can be either
>>>generic, descriptive or arbitrary depending on the circumstances.
>>>
>>>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 12/13/16, 3:44 AM, "Paul Keating" <Paul at law.es> wrote:
>>>
>>>>Jonathan,
>>>>
>>>>Not to be nit-picky but your definition is incorrect.
>>>>
>>>>Generic:  Relating to or characteristic of a whole group or class;
>>>>general, as opposed to specific or special.  (Black’s Law Dictionary)
>>>>
>>>>A ‘generic term” is one which is commonly used as the name or
>>>>description
>>>>of a kind of goods and it is generally accepted that a generic term is
>>>>incapable of achieving trade name protection.  For example, any single
>>>>seller can not have trademark rights in “television” or “oven.” When a
>>>>seller is given exclusive rights to call something by its recognized
>>>>name,
>>>>it would amount to a practical monopoly on selling that type of
>>>>product.
>>>>Even established trademarks can lose their protection if they are used
>>>>generically. For example (in U.S.), thermos and aspirin.
>>>>
>>>>A descriptive term (which many people refer to as a “dictionary term”)
>>>>is
>>>>merely that - a term used in its descriptive sense (e.g. “Redbarn” is
>>>>descriptive for selling red barns but not for hotels).
>>>>
>>>>Treatment in differing jurisdictions complicates matters.  For example,
>>>>the term “donut” is a trademark in Spain for donuts.  It was obtained
>>>>way
>>>>back when when the registrant saw donuts during a visit to the US,
>>>>returned to Spain and began producing them and registered the
>>>>trademark.
>>>>
>>>>Thus, the term has nothing to do with consumer perception of source.
>>>>
>>>>Moreover, most generic terms are by definition “in the dictionary”.
>>>>
>>>>The problem I encounter most with generic/descriptive terms are in the
>>>>context of figurative marks.  Although the USPTO is getting better at
>>>>requiring disclaimers, they were not so diligent in the future.  In my
>>>>experience, most other jurisdictions do not rigorously impose
>>>>disclaimer
>>>>obligations.
>>>>
>>>>Another source of constant frustration is with Section 2(f).  Again,
>>>>while
>>>>the USPTO appears to becoming more diligent they were simply horrible
>>>>in
>>>>the past.  Other jurisdictions do not have a similar provision and, for
>>>>example, France, has a terrible reputation for registering even the
>>>>most
>>>>descriptive (and even generic) terms.
>>>>
>>>>
>>>>I think the question regarding generic marks in the TMCH has merit and
>>>>should be discussed and this thread is but one example of why.  Again,
>>>>whether we reach conclusions as to the question is a different issue
>>>>for
>>>>a
>>>>different day.
>>>>
>>>>
>>>>Paul Keating
>>>>
>>>>
>>>>On 12/13/16, 12:12 PM, "Jonathan Agmon" <jonathan.agmon at ip-law.legal>
>>>>wrote:
>>>>
>>>>>All,
>>>>>
>>>>>Just to contribute another angle and perhaps a helpful example.
>>>>>
>>>>>I think that dictionary words and generic terms are two different
>>>>>species. A dictionary word is a word that is defined in the
>>>>>dictionary.
>>>>>For example the word "apple" is defined as "a fruit (as a star apple)
>>>>>or
>>>>>other vegetative growth". A generic term is a legal standard in
>>>>>trademark
>>>>>law denoting a mark whose source cannot be identified by consumers.
>>>>>And
>>>>>if consumers think that a single source exists for that term then by
>>>>>law
>>>>>the term is not generic. Therefore, in this example, APPLE, a
>>>>>dictionary
>>>>>word by all accounts, may be a dictionary word for fruit, is not a
>>>>>generic term and will in all likelihood be considered a strong
>>>>>trademark
>>>>>for computers.
>>>>>
>>>>>This is just one example and you should consider that the term
>>>>>"generic"
>>>>>as a term of art in trademark law. It has nothing to do with
>>>>>dictionary
>>>>>words. Moreover, some dictionary words can be weak trademarks at one
>>>>>time
>>>>>and strong trademarks at another time.
>>>>>
>>>>>You can consider for example the marks NYLON or XEROX. You can find
>>>>>both
>>>>>of them in the dictionary. The term NYLON was an invented mark,
>>>>>invented
>>>>>in 1935 by DuPont. It arguably became generic (from a trademark
>>>>>perspective) when consumers all started referring to synthetic
>>>>>polymers
>>>>>from every manufacture (not just DuPont) as Nylon.  XEROX invented a
>>>>>photocopying machine. The term came close to turning generic when in
>>>>>the
>>>>>eighties consumers used the verb "Xeroxing" instead of "photocopying".
>>>>>Xeorx, the company changed that and today by all accounts the mark
>>>>>XEROX
>>>>>is not generic but rather a trademark for photocopying machines.
>>>>>
>>>>>Taking the above into account ,the policies below state "generic or
>>>>>descriptive" not generic or dictionary words. The term descriptive is
>>>>>another term of art in trademark law, which refers to a trademark that
>>>>>describes the goods it is applied to. The examples of "toy, shop,
>>>>>cleaner, lawyer..." are only descriptive for the relevant goods or
>>>>>services they are attached to. Non-lawyers would immediately associate
>>>>>these terms with their respective meaning.  But, these terms can serve
>>>>>as
>>>>>trademarks too. It all depends on the circumstances and consumer
>>>>>perception. One last example would be the use of TOY on a yogurt
>>>>>product.
>>>>>Check out the attachment - the term JOY is applied to a yogurt
>>>>>product.
>>>>>While the term JOY can be descriptive of a feeling, it is not
>>>>>descriptive
>>>>>for yogurt products. So long as consumers don’t call any yogurt
>>>>>product
>>>>>JOY, then it is also not generic.
>>>>>
>>>>>I hope this helps.
>>>>>
>>>>>
>>>>>
>>>>>   
>>>>>
>>>>>
>>>>>
>>>>> 
>>>>>Jonathan Agmon(???)
>>>>>Advocate, PARTNER
>>>>>jonathan.agmon at ip-law.legal
>>>>>www.ip-law.legal
>>>>>Soroker Agmon Nordman Pte Ltd.
>>>>>133 New Bridge Road, #13-02, 059413 SINGAPORE
>>>>>8 Hahoshlim Street, 4672408 Herzliya, ISRAEL
>>>>>T SG +65 6532 2577
>>>>>T US +1 212 999 6180
>>>>>T IL +972 9 950 7000
>>>>>F IL +972 9 950 5500
>>>>>
>>>>>This message is confidential. It may also be privileged or otherwise
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>>>>>to anyone. Please send us by fax any message containing deadlines as
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>>>>>and security of this message cannot be guaranteed on the
>>>>>Internet.-----Original Message-----
>>>>>From: gnso-rpm-wg-bounces at icann.org
>>>>>[mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Beckham, Brian
>>>>>Sent: Tuesday, December 13, 2016 5:42 PM
>>>>>To: Paul Keating <Paul at law.es>; J. Scott Evans <jsevans at adobe.com>;
>>>>>George Kirikos <icann at leap.com>; gnso-rpm-wg at icann.org
>>>>>Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions
>>>>>tabulated
>>>>>categories document - 2 December 2016
>>>>>
>>>>>Paul, all,
>>>>>
>>>>>A timely post on CircleID speaks to (intentional) confusion on the
>>>>>"generic"/dictionary dichotomy:
>>>>>http://www.circleid.com/posts/20161212_appearing_respondents_called_ou
>>>>>t
>>>>>_
>>>>>a
>>>>>s
>>>>>_cybersquatters/
>>>>>
>>>>>In that post, Mr. Levine notes:
>>>>>
>>>>>"There's continuing confusion among domain buyers (not likely to be
>>>>>professional investors) that dictionary words are 'generic' therefore
>>>>>available to the first to register them. That's not the case at all.
>>>>>There are numerous trademarks composed of common words; weak perhaps,
>>>>>and
>>>>>vulnerable when combined with other common words but nevertheless
>>>>>protectable with sufficient proof of bad faith."
>>>>>
>>>>>Brian
>>>>>
>>>>>-----Original Message-----
>>>>>From: gnso-rpm-wg-bounces at icann.org
>>>>>[mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Keating
>>>>>Sent: Monday, December 12, 2016 10:24 PM
>>>>>To: J. Scott Evans; George Kirikos; gnso-rpm-wg at icann.org
>>>>>Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions
>>>>>tabulated
>>>>>categories document - 2 December 2016
>>>>>
>>>>>But it does show that it is not so much rocket science.
>>>>>
>>>>>On 12/12/16, 10:11 PM, "J. Scott Evans" <gnso-rpm-wg-bounces at icann.org
>>>>>on
>>>>>behalf of jsevans at adobe.com> wrote:
>>>>>
>>>>>>That don¹t make it right.
>>>>>>
>>>>>>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 12/12/16, 10:04 AM, "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:
>>>>>>
>>>>>>>FYI, re: "generic", both the .uk and the .nz dispute policies
>>>>>>>reference "generic" domain names, see:
>>>>>>>
>>>>>>>.uk:
>>>>>>>http://nominet-prod.s3.amazonaws.com/wp-content/uploads/2016/08/Fina
>>>>>>>l
>>>>>>>-
>>>>>>>pro
>>>>>>>p
>>>>>>>osed-DRS-Policy.pdf
>>>>>>>
>>>>>>>"8.1.2 The Domain Name is generic or descriptive and the Respondent
>>>>>>>is
>>>>>>>making fair use of it;"
>>>>>>>
>>>>>>>.nz: https://www.dnc.org.nz/resource-library/policies/65
>>>>>>>
>>>>>>>"Generic Term means a word or phrase that is a common name in
>>>>>>>general
>>>>>>>public use for a product, service, profession, place or thing. For
>>>>>>>example: toy; shop; cleaner; lawyers; Wellington; sparkling-wine"
>>>>>>>
>>>>>>>"6.1.2. The Domain Name is generic or descriptive and the Respondent
>>>>>>>is making fair use of it in a way which is consistent with its
>>>>>>>generic
>>>>>>>or descriptive character;"
>>>>>>>
>>>>>>>Sincerely,
>>>>>>>
>>>>>>>George Kirikos
>>>>>>>416-588-0269
>>>>>>>http://www.leap.com/
>>>>>>>_______________________________________________
>>>>>>>gnso-rpm-wg mailing list
>>>>>>>gnso-rpm-wg at icann.org
>>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>>
>>>>>>
>>>>>>________________________________
>>>>>>
>>>>>><ACL>
>>>>>>_______________________________________________
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>>>>>>gnso-rpm-wg at icann.org
>>>>>>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>
>>>>>
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>>
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