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Claire Wortsman is an IPilogue Senior Editor and a 2L JD Candidate at Osgoode Hall Law School.

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Which trademark battle? THE trademark battle—the one over who owns trademark rights in the word “THE”. In May 2019, Marc Jacobs Trademarks L.L.C. (MJT) to the United States Patent and Trademark Office (USPTO) seeking registration for use of the word “THE” on clothing, handbags, and related goods. Three months later, The Ohio State University (OSU) their own application for use of the word “THE” on clothing and related goods.

Although OSU claims to have used the mark in commerce since August 2005, MJT’s application was filed earlier. As a result, OSU was informed in September 2019 that MJT’s application may bar theirs from registration. In April 2021, OSU a Notice of Opposition claiming damages if the USPTO registered the mark “THE” to MJT. THE dispute between the two parties continued from there.

In August 2021, OSU withdrew their opposition proceeding. A university spokesperson that it was “pleased to have reached an agreement with Marc Jacobs,” noting that, “Marc Jacobs’ THE branded products are associated with high-end/contemporary fashion,” and would therefore be sold through different channels than OSU’s THE branded athletic and collegiate products. Likely connected to the agreement reached with OSU, MJT their trademark application in April 2021. They added the qualifier that their list of goods be, “promoted, distributed, and sold through channels customary of the field of contemporary fashion.” On the other hand, OSU’s application qualifies that their list of goods will be, “promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”��

OSU’s withdrawal of their opposition proceeding does not, however, guarantee the success of MJT’s application. OSU is not the only party to object against MJT. The USPTO previously problems with MJT’s application, particularly that the mark fails to function as a trademark, “indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” For example, in MJT’s most recently submitted trademark ‘’, the word “THE” appears ornamental.

The specimen, a red sweater, features “THE” in black lettering, “directly on the upper-center area of the front of a sweater where ornamental elements often appear,” rather than “on the pocket or breast area of a shirt,” where, “consumers may recognize small designs or discrete wording as trademarks.” OSU’s submitted , a red T-shirt, features “THE” in white lettering, also on the upper-center area. OSU’s T-shirt also features the Nike logo on the pocket or breast area as well as the Ohio State logo directly underneath the “THE” lettering. While a mark may be simultaneously ornamental and source-identifying, something merely ornamental may not be registerable as a trademark and will likely be refused for failure to function.

In my experience, both Marc Jacobs and OSU have several clear, source-identifying marks and “THE” is not one of them. While I might be able to tell that a high-quality sweater with “THE” lettering is a Marc Jacobs product, that does not mean that “THE” is source-identifying. Those interested in fashion could also likely identify a as an Alberta Ferretti product. Yet Alberta Ferretti likely would not successfully trademark “MONDAY,” “TUESDAY,” and so on.�� ��

The USPTO that OSU submitted many blog posts, articles, and comments as evidence which refer to “THE OHIO STATE UNIVERSITY” as a whole, not “THE” on its own. This is similar to the way in which “THE” sits on top of the “OHIO STATE” logo on OSU’s submitted specimen. In my view, “THE” alone would not be enough to indicate what the apparel represents, or even which university (The University of Oklahoma? The University of British Columbia?).

As a consumer, I find both THE applications puzzling as I fail to see how “THE” is source-identifying. That being said, the USPTO will have the final word—or already has in OSU’s case, if OSU fails to respond to their most recent Office Action by February 2022, in which case their application will be deemed abandoned. In the meantime, I will keep an eye out for more updates on THE matter.

The post Agreement Reached in THE Trademark Battle appeared first on IPOsgoode.

(To those unfamiliar with the Internet Corporation for Assigned Names and Numbers (ICANN), their meeting structure, and the goals of the organization, a fellow IPilogue writer has written a covering this.)

This article takes an inquisitive approach to the content of three important sessions that were held during the Toronto ICANN meeting. Below you will find a summary of the important points that were laid down during each of the presentations, the questions that were asked by members of the IP and tech community, and a discussion of the challenges that ICANN will have to resolve before the new gTLD (generic Top Level Domain) program is fully rolled out.

The Trade-mark Clearinghouse (TMCH) has been developed by ICANN as a that will be used for gLTD registrations. It has been envisioned as a “one-stop-shop” for trade-mark data and as such will have several important functions, specifically: to perform verification of trade-marks, to maintain a database of this information, and to support rights protection mechanisms of new gTLDs. On June 1^st, 2012, ICANN that they would be working with Deloitte and IBM (which in turn subcontracted IPClearingHouse) to provide the TMCH services in support of the new gTLDs.

A representative from Deloitte made a presentation concerning the implementation of the TMCH. The following is a quick break-down of the main topics discussed within the presentation:

• To be eligible for registration with the TMCH, one has to be an agent of a mark holder or be the mark holder themselves. However, only the holders of certain marks can register (for example, marks containing a “.” are ineligible to register). Submissions would have to include appropriate proof of use of the mark in order to be eligible.
• The domain name applied for must be identical to the textual elements of the trade-mark. With the exception of “@” and “&” that have been permitted to be spelled out in text, other special characters need to be omitted or replaced with a hyphen.
• In aiding the dispute resolution process, the TMCH will provide notices to registrants and mark holders when discrepancies in applications arise. There are 3 ways in which disputes can arise: 1. The applicant does not agree with the verification; 2. A 3^rd party does not agree with the verification; or 3. A 3^rd party has become aware of new info that will impact a valid trade-mark record.
• Lastly covered in the presentation was a demonstration of the working .

However, an important objective of ICANN is to generate community discussion and incorporate suggestions from the different groups involved in the process. The most important issues that came up during this period were: 1) What stops a fraudulent registration from occurring? 2) How can a trade-mark agent register on behalf of their clients and provide the mark holders access to while keeping information of other clients secret? and 3)��How would 3^rd parties even know about registration of certain marks in order to file a dispute?

With respect to the first��issue, the panelists stated that the process would not be completely automated and therefore some human element would be involved in fact-checking registrations. However, I would expect the potential number of trade-marks being registered would create a large quantity of work for TMCH verifiers should every case require this human element. The second��issue had been previously discussed and ICANN has been trying to implement a technical work-around to this problem. However, the panelists did not, in my opinion, have a good answer to the third��issue raised. In summary, they stated that individuals might stumble onto information which they know is incorrect and then file a dispute as a result. Given the number of trade-marks that will be involved in the system and the international nature of the TMCH, I don't think that this sequence of events would occur very often in practice.

In this session, much of the discussion centered on the ways in which the TMCH would be interacting with other groups during the sunrise and trade-mark claims processes.

In order to register during the sunrise period, ICANN has developed a model where public and private encryption keys are used to verify mark details. The TMCH (the asserter) will provide mark holders with a Signed Mark Data (SMD) file which has been digitally signed with a private key. The SMD is then forwarded to the applicable registry (the verifier) which has a public key. This public key will determine the validity of the digital signature but does not contain any important information (hence, being the “public” key). If the SMD is altered, modified, or signed by the incorrect private key, the public key will show that the info is unverified and action can be taken as necessary. One of the main benefits to this system is that verification of the initial trade-mark data need only be done by the TMCH once. As a result, the process is “decoupled” (there would be little to no reliance on the TMCH by the registries) which is one of the main goals for the process.

One of the attendees described the idea as “lightning in a bottle” and few clear issues with the process were brought up. However, it was suggested that if mark holders wanted to only use one SMD for all registries, those registries would have to determine the standard information needed to be included in the SMD file.

Concerning the trade-mark claims period, the spotlight was on the differences between a centralized and a decentralized model of the TMCH. The current ICANN model is a decentralized approach which has registries being provided with encrypted info, allowing greater decoupling of the entities but potentially putting the information at greater risk. The centralized model has the TMCH retaining all relevant info, making it slightly easier for them to control the flow of this information but increasing reliance of the registries on the TMCH as a result. While there is really no right or wrong answer to this question, different players in the process have different beliefs on how this should be approached. As an example, one panelist mentioned that as a representative of a registry, he would rather have a centralized model where less responsibility is placed on his shoulders. It is important to keep in mind that while mark data is public information as a part of its nature, the aggregate mark information could be viewed as very valuable, putting it at risk of potential data mining.

While it places a greater burden on the TMCH, I think the centralized model seems to be the direction ICANN needs to head towards. This model allows for greater flexibility in the future, providing better opportunities to expand and to alter their approach to registration and mark protection. As noted by one of the panelists at the conclusion of the session, it will be up to each business to decide whether or not to put their marks in the TMCH. By doing so, they will have to understand the risks involved as well as the benefits and evaluate if submitting to the TMCH is the correct decision for the business.

The last session that I will comment on concerned the URS process that ICANN has adopted to cheaply and efficiently resolve clear cut cases of registration abuse (such as cybersquatting). The National Arbitration FORUM, WIPO, and Brad Bertoglio (a legal process outsourcing expert) made presentations with respect to the URS process that was proposed to ICANN in the . While there was some disagreement between the presenters as to whether the pricing goals for this process could be met, all of them commented that there was still work needed to be done to flesh out the policy documents. It was also noted by WIPO and Mr. Bertoglio that we would have to automate the process as much as possible to arrive close to the suggested price point. WIPO presented a model () that would require supplemental fees in the case of contested disputes. This model could serve as an option to efficient and cheap resolution while still allowing for more complex matters to be determined appropriately.

Conclusion

ICANN has opened the floor to community discussion on many of these topics on their . It will be necessary for them to receive this feedback in order to consider all facets of implementation and the implications their actions will have on the players of the industry. Even though there has been a lot of progress with respect to the development of the Trade-mark Clearinghouse and the new gTLD system, ICANN and its partners still have a lot of work ahead of them if they want the launch of these initiatives to be as smooth as possible.

Adam Del Gobbo is a JD Candidate at Osgoode Hall Law School.

The post The Sun Sets on ICANN 45 - Reviewing the gTLD Implementation Plan appeared first on IPOsgoode.