[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Mon Apr 10 21:56:50 UTC 2017

Hi Michael,

John Berryhill captured it with his comments in the DomainIncite.com blog:

"No, the “proof of use” requirement is understood by any US trademark
practitioner to exclude what is known as “token use” – in other words
a use of the mark which is not representative of actual and
substantial commercial activity, but is a feigned use conducted merely
for the purpose of attempting to satisfy the “use” requirement. e.g.
Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 n. 8 (TTAB
1994), aff’d, 108 F.3d 1392 (Fed. Cir. 1997)."

and later:

"The IPC types, who are given extra credence in the ICANN policy
process on these types of issues due to their presumed “expertise”
know perfectly well the sorts of shenanigans that go on, which is why
they wanted to lock down the TMCH data under a veil of opacity. The
only other alternative is that they are so well-intentioned and naive
that they assume everyone else is – like the TMCH folks saying, “but
they sign a certification when they submit their proof of use”.

It’s pretty easy to expose bullshit like US TM Reg. No. 3778825
because the records are accessible, despite the efforts of the IP
lobby several years ago to fight tooth and nail against the USPTO
putting its data online. While they lost that fight more than a decade
ago (after a philanthropic effort was organized to purchase the USPTO
data products and put them online for free anyway), they’ve been able
to win it in the ICANN arena relative to the TMCH which is a black-box
system run on the proposition that “IP attorneys are all honest”.

and

"Imagine that! Equifax swore, through their attorneys Kilpatrick &
Stockton (now Kilpatrick Townsend) that they were using EFX.COM on the
Internet, some ten years before “.COM” even existed. It must have been
quite lonely for them. Now, they were called out on it when their
representative – also a UDRP panelist – tried to enforce that
transparently fraudulent piece of crap, but the beauty of the TMCH is
that the games being played with it elude the type of scrutiny to
which public records are subject. And that is why the IPC fought tooth
and nail to make sure the TMCH database, and the paper trail for
getting into it, are not accessible. They want to be able to lie
without detection, consequence and recourse, and they will fight to
keep it that way.

Amazing how that was written 3 years ago. It was quite prescient.

Last year, I linked to an article on FR.com:

https://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-used/

which talked about token use, and other "non use".

There was also some controversy about Google/Alphabet registering
Alphabet.xxx in sunrise, before any US TM registration completed.

https://www.thedomains.com/2015/09/05/google-registers-alphabet-sex-in-sunrise-how-did-they-do-that-more-generics-reg-as-tm/

Judging by their US TM application at:

http://tsdr.uspto.gov/#caseNumber=86877241&caseType=SERIAL_NO&searchType=statusSearch

perhaps they used a TM from the Kingdom of Tonga to secure it? (see
"Foreign Information").

By the way, I previously linked to an article by INTA:

http://www.inta.org/INTABulletin/Pages/IncontestabilityDoesAnybodyReallyUnderstandIt.aspx

about incontestability. I note the following text which is quite apt:

"But infringers often are not aware of the infirmities that may attend
even an incontestable registration. As a result, the biggest benefit
from claiming incontestability may be in providing the registrant with
the ability to say so in a cease and desist or other objection letter.
Stating that a registration is active, valid, in full force and effect
and “incontestable” may scare the recipient of the letter into giving
up on the thought of attacking the registration without ever even
exploring any of the many grounds for cancellation that survive
incontestability. "

While it's in the context of inconstability, the logic applies to
other legal topics where some in the IPC wants this working group to
defer to their analysis. Scare tactics, taken advantage of those who
don't know any better, seems to be part of the the standard playbook.
Folks in this PDP should treat those tactics with skepticism, and
counter disinformation using information.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Mon, Apr 10, 2017 at 5:26 PM, Michael Graham (ELCA)
<migraham at expedia.com> wrote:
> George:
>
>
>
> Again, apologies for coming into this conversation late, but could you
> clarify what you meaning by the term “gaming”?
>
>
>
> The only usage I can call to mind in connection with the TMCH would be (1)
> the acquisition of a trademark registration without actual or intended use
> of the trademark in order to register the registration in the TMCH, or (2)
> the fabrication of evidence of Use and its submission to the TMCH in order
> to entitle one to Sunrise registration.
>
>
>
> Michael R. Graham
>
>
>
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org]
> On Behalf Of George Kirikos
> Sent: Monday, April 10, 2017 2:18 PM
> To: gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the Working
> Group call held earlier today
>
>
>
> Some more examples of gaming of the TMCH sunrises, via public blog posts:
>
> 1. via Kevin Murphy of DomainIncite.com:
>
> http://domainincite.com/16492-how-one-guy-games-new-gtld-sunrise-periods
>
> DIRECT, CLOUD, and SOCIAL
>
> Note the comments below that blog post by John Berryhill, who wrote "…and
> the attorney who was unable to use her client’s US registration for
> “PHYSICS” with the inconvenient disclaimer, and who then obtained a late
> change in the TMCH rules allowing figurative registrations, so that her
> client could use a foreign logo registration to obtain the TMCH entry for
> that word… is she an IPC member, Kristina?"
>
> implying that the common term "PHYSICS" might also be gamed, by an IPC
> member. And there are other comments by him and others on that page that are
> worth reading.
>
> 2. via Konstantinos Zournas of OnlineDomain.com:
>
> http://onlinedomain.com/2014/04/15/legal/fake-trademarks-stealing-generic-domains-in-new-gtld-sunrises/
>
> regarding CLOUD, SOCIAL, BUILD, BET, VACATION, DISCOUNT, WEDDING and others
> (...etc.) More than 30 TMs of very common terms are mentioned, and over 300
> domains were found by that one blogger. There are 46 comments to that blog
> post, too.
>
> I renew the call for a public comment period, so that more of these kinds of
> examples of can be submitted to the working group.
>
>
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
>
> http://www.leap.com/
>
>
>
>
>
> On Mon, Apr 10, 2017 at 4:00 PM, Rebecca Tushnet
> <Rebecca.Tushnet at law.georgetown.edu> wrote:
>
> When you refuse to say what you would count as evidence of a problem, that
> leaves us with the evidence I, and George, and Bret, and others have
> offered--if we want to call them "Group 2" TMCH registrants that would make
> sense to me.
>
>
> Rebecca Tushnet
>
> Georgetown Law
>
> 703 593 6759
>
>
>
>