Accidentally failed to copy the list.

I consider it to be a rather unfortunate truth that an application for a famous brand which is also a “generic” word is going to lose out in this new gTLD environment anyway. For example, “Coach” lost in the 2012 round.  I don’t know if they ended up paying big money for the “generic” or not.  There is nothing that gives a famous brand priority over generic terms.  Based on 2012, it’s the opposite.

An improvement in this round would be to apply priority for registered marks that are well-known.  Well-known marks get protection in almost all countries around the world even if not registered.  Though I am doubtful we could develop sufficient consensus to change what happened in 2012 on that one.  (RPMs were a “suite” of protective mechanisms involving various compromises.)

I currently tell all my clients: Don’t adopt any marks with geo connotations and don’t adopt any marks with any  possible “generic” interpretation. This is unfortunate since the geo names in particular actually give more attention to the regions and rivers that are named and that is good for tourism!.    Maybe Work Track 5 is coming up with some standard Public Interest terms that could be adopted to accommodate governmental interests when regions and rivers are involved.,  (I don’t know cause I am not involved in Work Track 5 work.)

Anne

From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of Marc Trachtenberg via Gnso-newgtld-wg
Sent: Wednesday, August 14, 2019 11:16 AM
To: alexander@schubert.berlin; gnso-newgtld-wg@icann.org
Subject: Re: [Gnso-newgtld-wg] - Specification 13

Alex,

These applications are for trademarks, not generic terms, and at least VISA and DISCOVER are famous and well-known brand across the globe.  You might even have one in your wallet.

Best regards,

Dear Marc,

I might misinterpret your suggestion – but you are saying there are no generic term based applications such as “smart”, “visa” or “discovery” have a Spec 13 in their contract? (I checked these three – and they seem to have a Spec 13 in their contracts – I assume when checking all the other generic keyword based applications the same will occur).

And well: You need to register with the TM Clearinghouse: easy thing to do; the hurdles for that are very low (I have done TMCH applications for trademarks). Plus I am taking about a “real brand” – albeit a small one. So a small shoe brand “SHANGHAI” will easily meet all requirements for a spec 13. In my mind – please correct me if I am wrong.

Thanks,

Alexander

Alexander,

Please also note that Spec 13 does not require just “some trademark registration” and specifically excludes generic string TLDs.  Christopher conveniently “forgot” to point out that Section 9.3 of Spec 13 requires:

(i) the TLD string is identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, which registered trademark:

a. is recorded with, and issued a signed data mark file by, the Trademark Clearinghouse or any successor or alternative trademark validation authority appointed by ICANN, if such trademark meets the eligibility requirements of such validation authority (provided that Registry Operator is not required to maintain such recordation for more than one year);

b. is owned and used by the Registry Operator or its Affiliate in the ordinary course of Registry Operator’s or its Affiliates’ business in connection with the offering of any of the goods and/or services claimed in the trademark registration;

c. was issued to Registry Operator or its Affiliate prior to the filing of its TLD registry application with ICANN;

d. is used throughout the Term continuously in the ordinary course of business of Registry Operator or its Affiliate in connection with the offering of any of the goods and/or services identified in the trademark registration;

e. does not begin with a period or a dot; and

f. is used by Registry Operator or its Affiliate in the conduct of one or more of its businesses that are unrelated to the provision of TLD Registry Services; and

(ii) only Registry Operator, its Affiliates or Trademark Licensees are registrants of domain names in the TLD and control the DNS records associated with domain names at any level in the TLD;