Re: [Ianaplan] [CWG-Stewardship] ICG request concerning IANA trademark and iana.org domain name

[John Curran <[e-mail]>]

On Jun 21, 2015, at 11:38 AM, John Levine <[e-mail]> wrote:
> 
>>> There is one peculiar aspect of this, which is that currently the IETF has
>> no license to use the IANA trademark, yet it does appear to use it with
>> regularity.
> 
> Once again, just mentioning a name is not a trademark use.  A use
> identifies goods or services that someone provides.
> 
> We do not use the IANA trademark in the legal sense, because the IETF
> does not provide IANA services.  Unless I'm missing something, the
> RIRs don't use it either, for the same reason.

John -

There are registries of values.   There are “IANA" registries of values.

The IANA registries are registries that are specified as a result of standards 
activities of the IETF.  [RFC 5226]

The use of the mark “IANA” appears to distinguish the specific set of registries
that are defined by the IETF from those registries of values that others may 
decide to offer in the marketplace. 

The fact that the IANA registries happen to be administered by ICANN today 
is a contracting matter – it would appear at all times that the IETF, not ICANN, 
has maintained the decision over what constitutes an “IANA” registry, and that 
the IETF has exercised very clear quality control over what constitutes the list
of “IANA” registries, directing ICANN accordingly when one is to be added, etc.

> This whole argument appears to be based on misunderstandings of the way
> that trademarks work.  Perhaps we could get some advice from trademark
> experts who understand them better.

It’s unclear if the IETF receiving advice from trademark experts is quite as
important as the trademark lawyers gaining a meaningful understanding of 
the registry services that the IETF has been curating for decades under the 
name “IANA”…   As it is, they would appear to be extrapolating from their 
knowledge of only one registry (the DNS root zone) out of the thousands 
of IANA registries being maintained.

/John

Disclaimer: my views alone.