February 2017 - GNSO-RPM-WG

Action Items from 21 February call (Re: Agenda and materials for Working Group call at 0400 UTC)
by Mary Wong Feb. 22, 2017

Feb. 22, 2017

Dear all, Please find attached an updated table for Categories 3-6, where staff has tried to reflect what was agreed on the call. As with the earlier version of this document and the updated one for Categories 1-2, please send additional suggestions for Deloitte follow up to the mailing list as soon as possible. We hope to be able to compile and send off the list of follow up questions to Deloitte by early next week. In the meantime, staff will work with the co-chairs to ensure that Deloitte is formally invited to the Working Group face-to-face meeting on Saturday 11 March, and will take the suggestions that were made on the call yesterday on what to cover at that meeting back to the co-chairs as well. As usual, we will also post the attached updated table to the Working Group wiki page for the last call, under Follow Up Notes. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Tuesday, February 21, 2017 at 15:10 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Agenda and materials for Working Group call at 0400 UTC Dear all, The proposed agenda for our Working Group call on 22 February at 0400 UTC is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Finalize any remaining open questions and requests for additional input from both tables (Categories 1-2, and Categories 3-6), agree on final list of follow up questions for Deloitte 3. Discuss whether TMCH as it operates today fulfills the requirements of the Applicant Guidebook for the 2012 New gTLD Program round 4. Next steps/next meeting (including discussion of possible change of day for the rotating 0400 UTC call) For Agenda Item #2, please refer to the Working Group wiki space for the updated tables, which can be found under the heading Follow Up Notes for the last two meetings: https://community.icann.org/x/Q53DAw (for Categories 1-2) and https://community.icann.org/x/TZ3DAw (for Categories 3-6). For Agenda Item #3, the TMCH is described in Module 5 of the Final Applicant Guidebook (AGB) from June 2012: https://newgtlds.icann.org/en/applicants/agb/trademark-clearinghouse-04jun1…. Staff will also be preparing a list of all the source materials for the TMCH, including relevant Board requests and GNSO Council actions. Finally, the Working Group co-chairs would like to request that if you have examples of where the TMCH implementation may have deviated from or exceeded the scope as contemplated by the AGB, please compile these and send them to this mailing list so that they can be discussed by the full Working Group at the appropriate time. Thanks and cheers Mary

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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Feb. 22, 2017

Feb. 22, 2017

Dear All, Please find the attendance of the call attached to this email. The MP3, Adobe Connect recording and Adobe Connect chat below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 15 February 2017 at 17:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/TZ3DAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-15feb17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p7u5pinf5ur/?OWASP_CSRFTOKEN=35164ca55b0b4325 1de3126b2595278b4418e8a455ee85906e150b73fd5ffb72> https://participate.icann.org/p7u5pinf5ur/ The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: <http://mm.icann.org/pipermail/gnso-rpm-wg/> http://mm.icann.org/pipermail/gnso-rpm-wg/ Wiki page: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 15 February 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 15 February 2017 at 17:00 UTC for 60 minutes. Terri Agnew:wiki agenda page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_T Z3DAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ TZ3DAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HN Q&s=vqTRgN6S2C3TSZu5Wna2VK3sbsQ9p6WCaj4Exef7mGM&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=vq TRgN6S2C3TSZu5Wna2VK3sbsQ9p6WCaj4Exef7mGM&e= George Kirikos:Hi folks. Mary Wong:Hello George George Kirikos:Hi Mary and Terry, the rhyming duo. :-) George Kirikos:Hi Gerald. Mary Wong:@George, if Berry (Cobb) comes on, you'd have a staff trio :) George Kirikos:lol jscottevans:Hello all. I am now on the line Mary Wong:Hi J. Scott! Mary Wong:J. "Harry Potter Bad Boy" Scott Evans Mary Wong:NCPH Intersessional Mary Wong:Apparently RPMs was on the agenda today Maxim Alzoba (FAITID):Hello All Steve Levy:Hi folks Theo Geurts:'lo Terri Agnew:everyone can scroll themselves Maxim Alzoba (FAITID):Do I get it right that having "T[banana icon][onion icon]H[bike icon]E" sign might have THE protected by TMCH, in case the same person orders 3 small toys 3d printed with the same graphical sequence and shipped to someone who paid (neighbour) via postal delivery? (so the proof of use in in place) Griffin Barnett:Agree Mary -- there appears to be coinfusiion here regarding terminology. The TMCH guidelines uses teh term "device/image" marks as opposed to "design" marks I believe Griffin Barnett:Agree we should revert to them regarding their processes/rules and use of this aspect of the TMCH Vinzenz Heussler:This is what they say on the website: https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghous e.com_content_what-2Dabout-2Ddeviceimage-2Dmarks <https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghou se.com_content_what-2Dabout-2Ddeviceimage-2Dmarks&d=DwIFaQ&c=FmY1u3PJp6wrcrw ll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m =hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=OOxSGLIsQzCTd88PRAwrOn3qYkYpg mhnhZhSzJeTaIs&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=OO xSGLIsQzCTd88PRAwrOn3qYkYpgmhnhZhSzJeTaIs&e= Maxim Alzoba (FAITID):could we request examples of accepted/rejected imaginary marks with description of what was wrong/right? George Kirikos:So Disney would be able to register "CARS", for their design mark (associated with the film)? https://urldefense.proofpoint.com/v2/url?u=http-3A__tsdr.uspto.gov_-23caseNu mber-3D78538954-26caseType-3DSERIAL-5FNO-26searchType-3DstatusSearch <https://urldefense.proofpoint.com/v2/url?u=http-3A__tsdr.uspto.gov_-23caseN umber-3D78538954-26caseType-3DSERIAL-5FNO-26searchType-3DstatusSearch&d=DwIF aQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9 Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=2AqdcITjd Li0h5qyh7GKDFllZ1S0JXkRW9m8ZeH-tBQ&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=2A qdcITjdLi0h5qyh7GKDFllZ1S0JXkRW9m8ZeH-tBQ&e= Martin Silva:The GNSO already discussed this, and the board approved that design marks were not to be take as text. Martin Silva:https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en _issues_sti_sti-2Dwt-2Drecommendations-2D11dec09-2Den.pdf&d=DwIFaQ&c=FmY1u3P Jp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4 xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=GxndmliaSo7rx9WDzj7mx pSuTYrosTmowjyJwzFXCYE&e= Martin Silva:4.1 Maxim Alzoba (FAITID):I hope nobody registers NIC in TMCH :) Mary Wong:Staff will follow up with Rebecca as well Martin Silva:Are we addressing direclty that? becaus it is part of the hard letter that is already there, is not a new debate. Maxim Alzoba (FAITID):so all nic.TLD to be protected from registries :) George Kirikos:CARS is an easy one. George Kirikos:(see link above) Martin Silva:Delloitte is not following this 4.1 https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_issue s_sti_sti-2Dwt-2Drecommendations-2D11dec09-2Den.pdf <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_issu es_sti_sti-2Dwt-2Drecommendations-2D11dec09-2Den.pdf&d=DwIFaQ&c=FmY1u3PJp6wr crwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EB k&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=GxndmliaSo7rx9WDzj7mxpSuTY rosTmowjyJwzFXCYE&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=Gx ndmliaSo7rx9WDzj7mxpSuTYrosTmowjyJwzFXCYE&e= George Kirikos:Sure. Mary Wong:@Martin, it's not necessarily as a design mark per se, it's about how the TMCH accepts marks that have design elements Martin Silva:exaclty, and doesn't 4.1 resolves that doubt? Kristine Dorrain - Amazon Registry Services:Agree with Susan. Kristine Dorrain - Amazon Registry Services:The question is about marks received by the TMCH, not allowed by a RO Maxim Alzoba (FAITID):a Registry had a right to start from the very begining to limit registrations to a region, for example .. not may so brave Vinzenz Heussler:agree with Susan too Martin Silva:But why have a diferent criteria? Maxim Alzoba (FAITID):*not many registreis were so brave to limit registrations to a particular region Kristine Dorrain - Amazon Registry Services:I think we probably should have asked the question that resulted in this answer, but the answer here doesn't answer the question asked. Martin Silva:there is no relevant differnece in thos cases Mathieu Weill:Yes, Mary, Massimo made that suggestion and I support that Martin Silva:The GNSO Recommendations are absolutly valid for the TMCH discussion Mary Wong:@Mathieu, thank you Mathieu Weill:There is a Comité Champagne Jon Nevett:they do Mathieu Weill:I think Massimo could provide that information Mathieu Weill:There are bodies in some, not all cases Kristine Dorrain - Amazon Registry Services:The only way you have the right to submit champagne is if you can attest that you have a TM, right? Kristine Dorrain - Amazon Registry Services:What is the list of people that can make that attestation? Maxim Alzoba (FAITID):a company selling napkins of a colour of the Champagne wine? Marie Pattullo:There certainly are for Cognac, Champagne & some others - not sure if all have one. Mathieu Weill:@Kristine : it will depend on the jurisdiction... Georges Nahitchevansky:Yes there are certifying bodies for various designations and they would be the ones that would be able to pursue Kristine Dorrain - Amazon Registry Services:the TMCH doesn't care about jurisdiction really. For their purposes, they need a mark in some jurisdiction. George Kirikos:https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.or g_wiki_Geographical-5Findications-5Fand-5Ftraditional-5Fspecialities-5Fin-5F the-5FEuropean-5FUnion&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5c M&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8J ufxxgSrgqQmEC-HNQ&s=tApxDCQOtSpPL4mEHdDd6DC_wdgtlWo4TGtr5WvyVdg&e= Mathieu Weill:Yes, that's why the question is really interesting Maxim Alzoba (FAITID):I thought TMCH mostly care about the payment for the services :) Mary Wong:The question Deloitte was asked: "How many TMCH records include a TM+50 list; and how many are on this list on average? How many registrations were made for entries on the TM+50 list?" George Kirikos:So, is that roughly 1% of the TMCH recordals? (375 out of 30,000 ??) Paul Tattersfield:Are there any issues if two different companies submit the same wordmark - Say Apple for Apple Inc. & Apple Music Kristine Dorrain - Amazon Registry Services:for the record, I think the information would be great if we can figure out how to get it. Kristine Dorrain - Amazon Registry Services:Paul, what do you mean by issues? the TMCH doesn't apply substantive criteria. both would be allowed. Maxim Alzoba (FAITID):what happens when two companies registered same THEMARK in TMCH and one of them registers it? Paul Tattersfield:Can they both ocexist in the database without causing issues? Kristine Dorrain - Amazon Registry Services:Yes Kristine Dorrain - Amazon Registry Services:The registry can apply additional criteria that may give one mark preference, but the TMCH is agnostic Paul Tattersfield:thanks Kristine Kristine Dorrain - Amazon Registry Services:It's simply a db Maxim Alzoba (FAITID):so the first company recieves Claim notice, when both actually have the same rights? Kristine Dorrain - Amazon Registry Services:yep Kristine Dorrain - Amazon Registry Services:They can disregard it. Kristine Dorrain - Amazon Registry Services:Funny story, if you register your mark in the TMCH and then you wait till GA to register your name, the brand owner gets their OWN claims notice. :) Maxim Alzoba (FAITID):TMCH got some glitches, no excuses, horrible service from IBM Kristine Dorrain - Amazon Registry Services:agree J Scott George Kirikos:#13 is not for Deloitte to say either. Kristine Dorrain - Amazon Registry Services:Q 13, also not for TMCH Griffin Barnett:Agree susan payne:yes, agree Paul Keating:Please read teh question #. I have a terrible connecdtion sorry George Kirikos:#14 now, Paul Keating. Paul Keating:thank you J. Scott Vaibhav Aggarwal, NCSG:Language Vaibhav Aggarwal, NCSG:Developing countries have a lot to do localisation of conetent - Especially in Language Mary Wong:@Kristine, I will look Maxim Alzoba (FAITID):actually if you try to read Russian text of TMCH ... your eyes will bleed George Kirikos:+1 Kristine. Is this a question about statistics by country of recordal? susan payne:yes we did. i think it';s captured in the education section to the extent they answered George Kirikos:i.e. # of recordals for USA, Canada, vs. developing countries....? Kristine Dorrain - Amazon Registry Services:George, we were trying to determine access Vaibhav Aggarwal, NCSG:+1 Kristine Maxim Alzoba (FAITID):I mean https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing house.com_ru <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin ghouse.com_ru&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2d XAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgq QmEC-HNQ&s=gzm5LoBc4_Yg90HrKgGQIWf01EuZ-QAq036VFDfUXAc&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=gz m5LoBc4_Yg90HrKgGQIWf01EuZ-QAq036VFDfUXAc&e= George Kirikos:Right, Kristine....by knowing the stats, one can perhaps infer the level of access? (i.e. if only 1% are from Africa, etc.) Kristine Dorrain - Amazon Registry Services:recordals might tell part of the story, but we want to know from which countries brand owners and their counsel were participating. Kristine Dorrain - Amazon Registry Services:Yes, George. Maxim Alzoba (FAITID):so they failed the simple task to just properly translate a page George Kirikos:They do translate their website into multiple languages, which is a good first step for accessibility. George Kirikos:There is a list of agents at: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing house.com_agents <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearin ghouse.com_agents&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=D Ra2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8Jufxxg SrgqQmEC-HNQ&s=7MbDVji8QCfgMrv4x4TZNPncyAZBgSyIbrlXWs7q60A&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=hF0Ri8hBVUSZQtgnSbypFboC8JufxxgSrgqQmEC-HNQ&s=7M bDVji8QCfgMrv4x4TZNPncyAZBgSyIbrlXWs7q60A&e= so one could figure it out. Kristine Dorrain - Amazon Registry Services:fortunately, we can probably check that ourselves.....sounds like the Ru page is poorly translated. Doesn't bode well for developing countries. Maxim Alzoba (FAITID):anyway, prices for TMCH might be quite high for developing countries (different price of business e.t.c) Kristine Dorrain - Amazon Registry Services:Good job with the self-help, George. I, for one, need to spend some time on the site. We want to ask questions having done some research. Paul Keating:J. Scott, Given your comment regarding the purpose, I found that Deloitte's responses were not very helpful in that the responses were general in nature whcih by their nature seem to preclude making any specific suggestions. Perhaps I am mistaken but that is my view. Paul Keating:Sorry but I have horrible connections (Ive tried all methods) Paul Keating:so I may have missed something Mary Wong:Deloitte also noted that outreach and education are not part of the TMCH scope either. Maxim Alzoba (FAITID):do they care who pays ... I am not so sure Terri Agnew:@Paul, if a dial out on the telephone is needed, please let me know Kristine Dorrain - Amazon Registry Services:Vaibhav, that may also tell part of the story. If people in developing countries used a TM agent, we'd still be missing part of it. susan payne:Vaibhav, the person who submits the mark into the TMCH is not the mark owner, generally susan payne:yes exactly J Scott Mary Wong:@J Scott, exactly Kristine Dorrain - Amazon Registry Services:I think there are pieces that we can use to get what we need, but there won't be one definitive source. Vinzenz Heussler:#15 Griffin Barnett:I think we skipped Q15? George Kirikos:We're on #15. George Kirikos:Although, it's not really for Deloitte. Kristine Dorrain - Amazon Registry Services:Right, no Q for Deloitte on #15 or 16 Maxim Alzoba (FAITID):if TMCH database is not private - then there is a risk of another clearinghouse with lower prices:) Terri Agnew:The call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 22 February 2017 at 04:00 UTC for 60 minutes. George Kirikos:Tuesday night in North America. Vaibhav Aggarwal, NCSG::-) Maxim Alzoba (FAITID):bye all Vaibhav Aggarwal, NCSG:Thanks JScott & Everyone. Allways a Pleasure Griffin Barnett:Thanks all Steve Levy:Thanks aall Paul Tattersfield:thanks all bye Vinzenz Heussler:bye to everyone Kristine Dorrain - Amazon Registry Services:Or late for some. See you next week. Vaibhav Aggarwal, NCSG::-) Marie Pattullo:Thanks! George Kirikos:Bye folks. susan payne:thanks David McAuley (RySG):Thanks, bye all

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Action items and updated documents from Working Group call of 15 February
by Mary Wong Feb. 22, 2017

Feb. 22, 2017

Dear all, Please find attached the updated Tabular Summary for Categories 3-6 for your review (also posted to the Working Group wiki page with notes and recordings for this call, at https://community.icann.org/x/TZ3DAw) Please also note the following action items, which are also reflected in the updated table. Action Items: · On Q7 (design marks) – Rebecca Tushnet to take the lead in developing a few examples of hypothetical design marks for sending to Deloitte for their views · On Q8 (Geographical Indicators) – Staff to confirm with OriGIn who may be able to submit G.I.s. · On Q9 (TM+50) – Working Group to review questions submitted by the Registries Stakeholder Group with a view toward agreement on whether to send them on to Deloitte · On Q14 (Accessibility) – Working Group to consider if there are additional/alternative sources that can provide us with more information. · [From last week] – please review the updated Tabular Summary for Categories 1 & 2 from last week and submit any follow up questions or suggestions for Deloitte to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw. · [From last week] – please review the TMCH Dispute Resolution Procedures and suggest areas for discussion or follow up to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw. Next Steps: · Staff will compile additional suggestions received from Working Group members on possible questions and requests for follow up with Deloitte, from both Tabular Summaries for Categories 1 & 2 (from last week) and for Categories 3-6. Please try to submit your feedback by close of business in your time zone on Tuesday 21 February at the latest so that we can have a full list ready as soon as possible. Thank you. Cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Proposed agenda and documents for RPM Working Group call on 15 February Dear all, The proposed agenda for the next Working Group call, scheduled for 15 February 2017 at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Review table for Categories 3-6, with view to developing additional questions for Deloitte or that require further information 3. Next steps/next meeting Please note that the table for Agenda Item #2 had been circulated previously, on 6 February, and is also available on our Working Group wiki space here: https://community.icann.org/x/_pHRAw. Please note also the Action Items from the meeting last week, which were as follows: · Over the next week, WG members to review the table for Categories 1 & 2 and the discussions to date, in order for staff to compile and send all follow up questions to Deloitte before ICANN58 so as to have an informed discussion with them at ICANN58 (updated table was circulated on 10 February and is also available here: https://community.icann.org/x/_pHRAw) · WG members to also review the TMCH Dispute Resolution Procedures and agree on any follow up questions for Deloitte (the Procedures were circulated on 10 February and are also available here: http://trademark-clearinghouse.com/dispute) Thanks and cheers Mary

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Agenda and materials for Working Group call at 0400 UTC
by Mary Wong Feb. 21, 2017

Feb. 21, 2017

Dear all, The proposed agenda for our Working Group call on 22 February at 0400 UTC is as follows: 1. Roll call (via Adobe Connect and phone bridge only) and updates to Statements of Interest 2. Finalize any remaining open questions and requests for additional input from both tables (Categories 1-2, and Categories 3-6), agree on final list of follow up questions for Deloitte 3. Discuss whether TMCH as it operates today fulfills the requirements of the Applicant Guidebook for the 2012 New gTLD Program round 4. Next steps/next meeting (including discussion of possible change of day for the rotating 0400 UTC call) For Agenda Item #2, please refer to the Working Group wiki space for the updated tables, which can be found under the heading Follow Up Notes for the last two meetings: https://community.icann.org/x/Q53DAw (for Categories 1-2) and https://community.icann.org/x/TZ3DAw (for Categories 3-6). For Agenda Item #3, the TMCH is described in Module 5 of the Final Applicant Guidebook (AGB) from June 2012: https://newgtlds.icann.org/en/applicants/agb/trademark-clearinghouse-04jun1…. Staff will also be preparing a list of all the source materials for the TMCH, including relevant Board requests and GNSO Council actions. Finally, the Working Group co-chairs would like to request that if you have examples of where the TMCH implementation may have deviated from or exceeded the scope as contemplated by the AGB, please compile these and send them to this mailing list so that they can be discussed by the full Working Group at the appropriate time. Thanks and cheers Mary

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Proposed agenda and documents for RPM Working Group call on 15 February
by Mary Wong Feb. 14, 2017

Feb. 14, 2017

Dear all, The proposed agenda for the next Working Group call, scheduled for 15 February 2017 at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Review table for Categories 3-6, with view to developing additional questions for Deloitte or that require further information 3. Next steps/next meeting Please note that the table for Agenda Item #2 had been circulated previously, on 6 February, and is also available on our Working Group wiki space here: https://community.icann.org/x/_pHRAw. Please note also the Action Items from the meeting last week, which were as follows: · Over the next week, WG members to review the table for Categories 1 & 2 and the discussions to date, in order for staff to compile and send all follow up questions to Deloitte before ICANN58 so as to have an informed discussion with them at ICANN58 (updated table was circulated on 10 February and is also available here: https://community.icann.org/x/_pHRAw) · WG members to also review the TMCH Dispute Resolution Procedures and agree on any follow up questions for Deloitte (the Procedures were circulated on 10 February and are also available here: http://trademark-clearinghouse.com/dispute) Thanks and cheers Mary

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Re: [gnso-rpm-wg] TMCH education tool
by Paul Keating Feb. 14, 2017

Feb. 14, 2017

+1 From: <gnso-rpm-wg-bounces(a)icann.org> on behalf of "McAuley, David" <dmcauley(a)verisign.com> Date: Tuesday, February 14, 2017 at 2:45 PM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [gnso-rpm-wg] TMCH education tool > I was on the call last week but admit to being distracted by an interruption > part way through possibly misheard the discussion on education but thought I > should weigh in on the matter of educational efforts respecting the TMCH. > > In my personal opinion it is important that all parties who can be touched by > TMCH (including registrants) should easily be able to find a high level > briefing/tutorial that educates them as to what TMCH is and how it affects > them including what obligations they may have and what rights they may enjoy > in the process. Where that education tool appears - TMCH, ICANN seems less > important than the fact that it appears in a place where it will easily be > seen. > > Best regards, > David > > David McAuley > International Policy Manager > Verisign Inc. > 703-948-4154 > > _______________________________________________ gnso-rpm-wg mailing list > gnso-rpm-wg(a)icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

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TMCH education tool
by McAuley, David Feb. 14, 2017

Feb. 14, 2017

I was on the call last week but admit to being distracted by an interruption part way through - possibly misheard the discussion on education but thought I should weigh in on the matter of educational efforts respecting the TMCH. In my personal opinion it is important that all parties who can be touched by TMCH (including registrants) should easily be able to find a high level briefing/tutorial that educates them as to what TMCH is and how it affects them - including what obligations they may have and what rights they may enjoy in the process. Where that education tool appears - TMCH, ICANN - seems less important than the fact that it appears in a place where it will easily be seen. Best regards, David David McAuley International Policy Manager Verisign Inc. 703-948-4154

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Updated table and Action Items from Working Group call of 8 February 2017
by Mary Wong Feb. 10, 2017

Feb. 10, 2017

Dear all, Please find attached an updated table of the questions, discussions and input relating to TMCH Charter Questions Categories 1 (Education) and 2 (Verification and Updating of TMCH Data). Staff has attempted to capture the suggestions that were made on the call in the form of suggested follow up or additional discussion questions, mostly in the last column. Please let us know if you think there are any inaccuracies or errors. I am attaching a second document to this email, following up on co-chair Phil Corwin’s request during the call that staff put together the text of the TMCH’s Dispute Resolution Processes in an easily usable form. You may wish to note that reviewing these processes was one of the Action Items from the call, and that the processes clearly contemplate that disputes may be filed by third parties as well as trademark holders or their agents, and can relate to both accepted and rejected trademark records. If you prefer the online version, you can find the text of the processes here from the TMCH website: http://trademark-clearinghouse.com/dispute. WORKING GROUP ACTION ITEMS (as agreed on the Wednesday call): · Over the next week, WG members to review the table and discussions to date (attached), in order for staff to compile and send all follow up questions to Deloitte before ICANN58 so as to have an informed discussion with them at ICANN58 · WG to review the TMCH Dispute Resolution Procedures (attached) and agree on any follow up questions for Deloitte. Please send your suggested questions and follow up to this mailing list and staff will compile them for everyone to review. Thanks and cheers Mary

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Second table summarizing TMCH Charter questions, relevant input and potential follow up
by Mary Wong Feb. 9, 2017

Feb. 9, 2017

Dear all, Following on the circulation of the previous summary table of the questions, input and discussions so far on TMCH Charter Questions categories 1 and 2 (below), please find attached a similar summary table for the remaining categories (3 – 6). As the Working Group has yet to begin discussing these, staff has taken the liberty of adding what we believe to be relevant background information from the community comments to the TMCH that were provided for the 2015 RPM Paper. We will post both tables to the Working Group wiki for your easy reference as well. Thanks and cheers Mary From: Mary Wong <mary.wong(a)icann.org> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: Table summarizing TMCH Charter questions, WG follow up questions, and input from Deloitte and Registry Operators Dear all, As discussed at the end of the Working Group call yesterday, staff has begun to compile a table that combines the agreed TMCH Charter questions with the relevant Working Group follow up questions, Deloitte response (if any), and (where applicable) input that was received from various registry operators and the Registries Stakeholder Group (note that the Registries SG is the only community group so far that has provided us with a response to our initial solicitation for input from all the various Supporting Organizations, Advisory Committees and GNSO Stakeholder Groups and Constituencies). Attached is the compilation we have done for TMCH Categories 1 (Education) and 2 (Verification and Updating of TMCH Data). As Kathy and others noted on the call, not all questions have direct responses, and in some cases we have inserted what we thought might be relevant information even if it is not an actual reply. Do let us know if you spot any inaccuracies or omissions. We hope you find the document useful. If we may, we suggest that you review it with a view toward identifying the following: · What additional data or follow up input is needed, and from whom, to complete our review of these aspects of the TMCH? · What additional data or follow up input should we request from Deloitte, including for our expected discussion with them at ICANN58? Please note that we have not yet included any information from the Analysis Group’s review of the TMCH, as we understand that a Final Report will be forthcoming from them shortly, and possibly before ICANN58. We will incorporate any relevant data once the Final Report is out, and will in the meantime continue working on a table for the remaining TMCH Charter categories and questions. The full Deloitte response to the TMCH Data Gathering questions and the three responses we received to the set of Registry-directed questions can be found here: https://community.icann.org/x/_pHRAw. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://community.icann.org/download/attachments/59643854/RySG%20RPM%20Resp…. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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Mp3, Attendance, AC recording & AC Chat Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group
by Terri Agnew Feb. 8, 2017

Feb. 8, 2017

Dear All, Please find the attendance of the call attached to this email and the MP3, Adobe Connect recording and Adobe Connect chat below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group call held on Wednesday, 08 February 2017 at 18:00 UTC. Attendance of the call is posted on agenda wiki page: https://community.icann.org/x/Q53DAw MP3: https://audio.icann.org/gnso/gnso-rpm-review-08feb17-en.mp3 Adobe Connect recording: <https://participate.icann.org/p8bvr705fpg/?OWASP_CSRFTOKEN=3301ff0f1fff3dfc 78bdba634380b2dc21423ab6ed922f1b623118fc8ae11f01> https://participate.icann.org/p8bvr705fpg/ The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar ** Please let me know if your name has been left off the list ** Mailing list archives: <http://mm.icann.org/pipermail/gnso-rpm-wg/> http://mm.icann.org/pipermail/gnso-rpm-wg/ Wiki page: https://community.icann.org/x/wCWAAw Thank you. Kind regards, Terri Agnew Adobe Connect chat transcript for 08 February 2017: Terri Agnew:Welcome to the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group on Wednesday, 08 February 2017 at 18:00 UTC for 60 minutes Terri Agnew:agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Q 53DAw <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_ Q53DAw&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpC IgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p 4&s=SHIx7tui6WpaWADTn2cmYHV8hhlNFKfjgpZu6M2CoKw&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=SH Ix7tui6WpaWADTn2cmYHV8hhlNFKfjgpZu6M2CoKw&e= Petter Rindforth:Hi, just a note that I have to be on another call at the same time, so I will only follow you/participate (mutely) online this time. Terri Agnew:thank you for this information Petter George Kirikos:Hi folks. Maxim Alzoba (FAITID):Hello All Philip Corwin:hello/dialing in now Ivett Paulovics:Hi everyone! Paul Tattersfield:Hi Everyone GraceM:hey Salvador Camacho:Hello everybody Ankur Raheja:Hello Martin Silva:Hi all Steve Levy:Hello all! George Kirikos:Perhaps Rebecca can email her statement to the mailing list. Rebecca Tushnet:My comment--my apologies for having to leave so soon: Rebecca Tushnet:the text symbols accepted into the TMCH and used to send notifications in case of matches, or used for Sunrise registration, should themselves be valid marks; if the symbols alone do not fully comprise a registered mark, the registration should not be accepted into the TMCH.]Special Trademark Issues Review TeamRecommendations, Rough consensus: The TC Database should be required to include nationally or multinationally registered "text mark" trademarks, fromall jurisdictions, . (Thetrademarks to be included in the TC are text marks because "design marks" provideprotection for letters and words only within the context of their design or logo and theSTI was under a mandate not to expand existing trademark rights.) Minority opinion of BC: did not like this overall provision because they wanted broader matching, but did not argue that text + design marks should be accepted as text entries in TMCH Mary Wong:Thanks, Rebecca - staff will note your comment. George Kirikos:Very fast typing! (or copy/paste) :-) Rebecca Tushnet:That last bit was a quote from the recommendations; it is my belief that the current rules implemented by the TMCH are not consistent with this direction Rebecca Tushnet:Sorry for going out of order! Paul keating:hi sorry for being late. Mary Wong:@George, if you think Rebecca types quickly (she DOES!) you should see her live-blogging. It's awesome :) George Kirikos::-) George Kirikos:The middle column is new, I think. J. Scott Evans:Yes, I had seen this last week. Paul Tattersfield:It was in two? parts Paul Tattersfield:it was available in parts earlier this week Susan Payne:it does pulltogether information we have seen already, ie responses from Deloitte and responses from the Registries which we have discussed George Kirikos:Right, first time consolidated like this before the "live" working group calls. Maxim Alzoba (FAITID):I wonder, is the situation when TMDB does not allow Registries to connect due to technical issues is a part of RPMs (do mind mediocre responce time of IBM service, few days without a meaningful responce is expected) J. Scott Evans:I still remain unconvinced that there needs to be any education on the Clearinghouse. J. Scott Evans:In contrast, I think registrars should be educating their customers about Sunrise and Trademark Claims. Mary Wong:Maybe one basic question is whether the TMCH should be educating other parties besides rights holders. Kristine Dorrain - Amazon Registry Services:@Mary, for instance, what would they educate on? Kristine Dorrain - Amazon Registry Services:They do educate THEIR users. Mary Wong:@Kristine, right - it may make a difference whether we are talking about the existence and scope of the TMCH vs how Claims and Sunrise work. Kristine Dorrain - Amazon Registry Services:and claims and sunrise are ICANN policies. George Kirikos:If challenges to TMCH recordals are allowed, then it's prospective domain name registrants who would want to be educated (to be able to deny someone else a sunrise registration). Susan Payne:I don't need to speak - completely agree with everything J.Scott has just said, which is what I was going to say Paul keating:I think what is included and how the inclusion decision is made IS an important aspect to openly disclose. Kristine Dorrain - Amazon Registry Services:Paul, that information is readily available. Is it necessary to make that information super easily digestable for the average internet user? If you care enough about the detailed workings of the TMCH, you can find that. J. Scott Evans:Are we sure they don't alreay? One of the big issues in educating users is to make sure there is not a glut of information. J. Scott Evans:Too much information is just as confusing as no information. Mary Wong:Note that what the TMCH is, what it does, and the Guidelines it uses for verification, are all available on the TMCH website and to some extent on the ICANN New gTLDs microsite. Paul keating:j. Scott, education does it only imply formal education. education occurs when information is disclosed, e.g. transparency. Ivett Paulovics:I agree with Philip Corwin J. Scott Evans:@Paul. What transparency are you wanting? J. Scott Evans:If you get a Claims Notice for adobe.software, the claims notice tells you that Adobe is claiming trademark rights in Adobe. J. Scott Evans:If I get adobe.software in a Sunrise Period, it is clear and transparent that I have registered my Adobe trademark registration in the Clearinghouse and that has been verified. George Kirikos:Volume is a bit low for Kristine. Kurt Pritz:One question on education: Should there be affirmative outreach to Trademark holders to make them aware of the TMCH, Sunrise and Claims? I.e., it is one matter for a trademark holder to decide to not participate in the TMCH;it is another matter that a trademark holder not participate because they are unaware of the TMCH one-stop shop. Kristine Dorrain - Amazon Registry Services:Sorry George, will speak up next time. Paul keating:e.g list of registered marks having rights in sunrise. just the list would show the number of potentially expansive registrations such as "the" as noted earlier this week. J. Scott Evans:Again, the free market allows for different versions of these things. Hence, it is up to registries and registrars to educate their consumers. Paul McGrady:@Kristine - agree. There are lots of things people need to know to participate in commerce. I'm not sure how this is in ICANN's remit (or the remit of its contracted parties or vendors for that matter). Marc Trachtenberg:+1 to J. Scott J. Scott Evans:Paul. The Trademark Community will not agree to disclose that information. It is a trade secret. Paul keating:@j Scott. neither of those have sufficient gross revenues to embark on education. Paul keating:how is a list of sunrise qualified registered trademarks a trade secret? George Kirikos:+1 Pauk Keating Kurt Pritz:I think it is ICANN's remit to ensure Trademark holders are aware of the TMCH protections J. Scott Evans:@Paul. How do you know what a registry or registrars revenues are? It seems to me that a service provider (who is smart) will want to ensure that their customers understand the system. Kristine Dorrain - Amazon Registry Services:@ PaulK, gross revenues? Again, it's not global education. It's a registry/registrar providing customer service. George Kirikos:Not a trade secret, when anyone can run a dictionary search to reverse engineer the entire list. Paul keating:I work for them J. Scott Evans:Agree with Kristine Dorrain. Marc Trachtenberg:@ George - how could you run a dictionary search that would show what registrations are entered into the TMCH or registered in various jurisdictions? Paul keating:@kristine. question is who is better positioned to educate. I say all should. you want only the entity with t)3 least interest and least amount of revenue per domain. J. Scott Evans:@George. Yes it is. You do not know which of my 3,000 marks I have deemed important enough to put in the TMCH. THAT tidbit is simply a road map for abuse. We will not agree to that and we were VERY clear during the STI and IRT that this information should not be publicly available. George Kirikos:@Marc: attempt to register tens of thousands of domain names (i.e. working through a "dictionary" -- e.g. a list of all USPTO marks, or some other list(s)), and see which generate notices. Kristine Dorrain - Amazon Registry Services:@PaulK, as others have pointed out, the people with the direct relationship to their own customer should be educating their customer. Paul McGrady:+1 Kristine. Kristine Dorrain - Amazon Registry Services:TMCH=brand owners, RgY/Rgr=RgT George Kirikos:@J.Scott: If I tried to register each of those 3,000 marks, and saw which ones generated TM claims notices, it would be easy to to know which were "deemed important enough to put in the TMCH" Kurt Pritz:Why are we leaving education behind - it seems like we are right in the middle of discussion and at what point to we attempt to answer these questions and get them behind us? Terri Agnew:as a reminder, to active your AC mic, top tool bar, select the telephone icon and follow the prompts Paul keating:j. Scott, I still fail to see how the list is a trade secret. if you have sunrise rights how can that be abused? I want to know the nature of words that have been reserved exclusively for sunrise. J. Scott Evans:@George. There is a difference btwn. handing someone a trade secret and a third party doing a work around or reverse engineering. George Kirikos:"I tried to register each of these 3,000 marks" == "I tried to register them as domain names in new gTLDs". Marie Pattullo:But that's not education about how the TMCH works George, that's education about Adobe's commercial choices. Not the same thing. George Kirikos:@J.Scott: not a big one, when it can be automated at low cost (for someone who cared; I personally don't care to do it, but it wouldn't be hard). Paul keating:the issue is finding abuse. J. Scott Evans:@Paul. The mere listing of a registration in the TMCH does not mean it will be used for a Sunrise. It might be if the TM owner wants a sunrise registration, but they don't need to nor is it automatic. George Kirikos:@Marie: see what Paul Keating said. Paul keating:j. Scott, for me it is seeing if there is abuse. Terri Agnew:Ivett is now connected via telephone with audio George Kirikos:Just like TM owners get a list of matching domain names, to "see if there is abuse". J. Scott Evans:You could put together a list of perceived "abuseive behaviors" and ask Deloitte if there are any TMCH rregistrations that fall within the parameters. If so, how many? That would let us have the information. You don't need to know specific marks to get this analysis. Kristine Dorrain - Amazon Registry Services:Thanks Phil! Paul Tattersfield:@ George - what's the current percentage of abusive registrations in new gTLDs v. more traditional gTLDs? Marc Trachtenberg:@ George - so you are saying if you could game the system and reverse engineer what marks are in the TMCH, that they wouldn't be trade secrets? George Kirikos:@PaulT: depends on the definition of 'abusive'?? George Kirikos:@Marc: I wouldn't call them trade secrets in the first place, given they're disclosed to any potential registrant. Paul keating:@mary we do need further responses from them, particularly in areas where they didn't understand - a good example of which is the 'figurative' mark that was described as design... exec. George Kirikos:Here's a US definition of "trade secret" https://urldefense.proofpoint.com/v2/url?u=https-3A__www.law.cornell.edu_usc ode_text_18_1839 <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.law.cornell.edu_us code_text_18_1839&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=D Ra2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXB Jrv1SeGIj7p4&s=P15ykteyxgJgvN4V9WsAxbit6HzeMHN6ccZq8V2WiRQ&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=P1 5ykteyxgJgvN4V9WsAxbit6HzeMHN6ccZq8V2WiRQ&e= Mary Wong:@Paul, yes - staff will compile a list based on what Deloitte said they didn't understand, plus WG members' suggestions George Kirikos:Seems it fails under (A), given any prospective registrant can determine the information. Paul keating:j. Scott and Paul, I still fail to see a trade secret here. why do I need to rely upon Deloitte? J. Scott Evans:The trade secret isn't the individual registration listed in the TMCH, but rather, the report showing which marks a trademark owner with multiple marks has chosen to put into the Clearinghouse. Marc Trachtenberg:@ George - the entire list of all trademarks registered by a particular company is not disclosed to a potential registrant in the claims notice Kathy Kleiman:To the discussion above, one of the questions above is Category 1, Question, 1, Section iii: Is the TMCH clearly communicating... options for third parties who may have challenges to or questions about recordals in the TMCH? There should be a way to address this question... George Kirikos:@Marc: It's disclosed via a public US database, and can be easily compared. George Kirikos:(some foreign jurisdictions don't disclose, I know...) Elizabeth Featherman:Sorry, I have to run to a meeting. Marc Trachtenberg:@ George - the worldwide list of all TM registrations is not disclosed in a public US database Mary Wong:@Kathy, we have a note on that which says that as the TMCH Database is not publicly searchable, it may be impossible for third parties to even know what to challenge. Maxim Alzoba (FAITID):@George, some of those wants money :) Susan Payne:@George the whole point is that the confidential part is the tM owner's strategy - which of their marks they decide to pt int he TMCH and which they don't. The marks themselves are all on public TM office databases around the world. the strategy of which they put in the TMCH should not be George Kirikos:Adobe doesn't seem to keep its TMs much of a secret, given they post the list on their website: https://urldefense.proofpoint.com/v2/url?u=http-3A__wwwimages.adobe.com_cont ent_dam_acom_en_legal_licenses-2Dterms_pdf_adobe-5Ftrademark-5Fdatabase-5Fex ternal.pdf <https://urldefense.proofpoint.com/v2/url?u=http-3A__wwwimages.adobe.com_con tent_dam_acom_en_legal_licenses-2Dterms_pdf_adobe-5Ftrademark-5Fdatabase-5Fe xternal.pdf&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXA vSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1Se GIj7p4&s=vjZsIR76XOM58Wc4-4jAKOhcutq3E7FJ2rhEK5plcLg&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=vj ZsIR76XOM58Wc4-4jAKOhcutq3E7FJ2rhEK5plcLg&e= George Kirikos:(although, that list isn't complete) Paul McGrady:RE: "1 year from now", we are just applying ICANN calendar calculation rules, e.g. This is the first round of what is to be an ongoing process forthe introduction of new TLDs = at least an 6 year gap. :) Marie Pattullo:Agree with Susan. Kristine Dorrain - Amazon Registry Services:I'm having a hard time connecting the chat discussion about making the list of marks in the TMCH available to anyone (apparently for the purpose of policing the entries for abuse (as subjectively determined by a 3P?)) with the discussion about education. J. Scott Evans:Oh George. You are just missing my point. None of our trademarks are secret, by virture of the fact they are trademarks. However, which of those marks publicly listed that are in the TMCH, is not a public record. Marie Pattullo:And agree with Kristine too! George Kirikos:@Susan: it's easy to infer their strategy, though. Not being in the TMCH doesn't act as some waiver of the TM owner's rights. Paul keating:@ Mary Phil, per j Scott suggestion pls ask Deloitte for list of all registrations in tmch with sunrise preference and which are dictionary terms. Kurt Pritz:Is question #4 where we would discuss "proof of use" - its efficacy, importance, cost, benefits, etc? J. Scott Evans:@Paul. Yes, but enforcing trademark rights is an expensive endeavor. Susan Payne:@George of course not I did not suggest anything of the sort George Kirikos:@PaulK: @ Mary: plus all acronyms less than 5 characters. Paul keating:Deloitte should of course NOT identify the trademark owner. but should list if there are multiple entries for any given term. Paul McGrady:@Paul K - none of the numbers in our social security numbers are secret, but I suspect we would all resist not only posting the individual numbers in order in the chat, but posting the individual numbers at all. Paul keating:@jscott, enforcing any right is expensive. missing a valuable generic/descriptive domain registration is also expensive. Kathy Kleiman:.. and on the last call too, Phil. Vinzenz Heussler:the link leading to the TMCH guidelines doesn't work Kathy Kleiman:People seemed pretty satisfied. Mary Wong:@Vincenz, we will check and fix the link, thank you for spotting it. J. Scott Evans:@Paul. What makes you thing you or anyone deserves to use a word it believes is generic and I have trademarked? George Kirikos:https://urldefense.proofpoint.com/v2/url?u=http-3A__thettablog.blogs pot.ca_2017_02_new-2Dpost-2Dregistration-2Dproof-2Dof-2Duse-2Drule.html&d=Dw IFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7a r9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=iW6-xeC m8MPJa22a0NSZ9VXXl0Y6VOrFa--SRZrkqYQ&e= "A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public." Paul keating:@paul G, agreed but let's drop the trade secret label and agree that we can protect against inappropriate disclosure. the underlying issue is important. George Kirikos:@JScott: That's like suggesting a TM provides a monopoly. No one needs to "deserve" it; they have a right to use terms in a non-infringing manner. Marie Pattullo:And what happens if a string of letters is fanciful in language A, a trade mark in language B, and against public policy rules in language 3? George Kirikos:+1 Kathy. J. Scott Evans:George. A trademark is a monopoly. See McCarthy on Trademarks and Unfair Competition. George Kirikos:lol I just said the word "Adobe", J. Scott. Are you saying I can't use that word now? :-) Paul keating:@phil, there should be a mechanism set out, even if it is nothing but an agreement as to jurisdiction. George Kirikos:I can say "Adobe products are great." Did you stop me from saying that? :-) J. Scott Evans:@Kathy. Shouldn't we look at the TMCH website and see if this informaiton is availabe and, if not, then asked the question. George Kirikos:Or, I designed my house in the adobe style of Mexico..... Kristine Dorrain - Amazon Registry Services:Here you go, Kathy... https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghous e.com_dispute <https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghou se.com_dispute&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2 dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv 1SeGIj7p4&s=VZaLNs7LQSC8oDXx6eMvp3d3FtEUv_XIzJ8Qos2NpgY&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=VZ aLNs7LQSC8oDXx6eMvp3d3FtEUv_XIzJ8Qos2NpgY&e= J. Scott Evans:George. You clearly do not understand trademark law. Marie Pattullo:+ 1 to J.Scott... George Kirikos:@JScott: I do, and also its limitations. Kristine Dorrain - Amazon Registry Services:+1 J. Scott Griffin Barnett:+1 Griffin Barnett:(to J. Scott) Susan Payne:+1 J Scott Kathy Kleiman:Tx Kristine; and fair enough J. Scott! George Kirikos:Trademarks are not monopolies: https://urldefense.proofpoint.com/v2/url?u=https-3A__www.lexisnexis.com_lega lnewsroom_intellectual-2Dproperty_b_copyright-2Dtrademark-2Dlaw-2Dblog_archi ve_2013_06_28_trademarks-2Dare-2Dnot-2Dmonopolies.aspx <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.lexisnexis.com_leg alnewsroom_intellectual-2Dproperty_b_copyright-2Dtrademark-2Dlaw-2Dblog_arch ive_2013_06_28_trademarks-2Dare-2Dnot-2Dmonopolies.aspx&d=DwIFaQ&c=FmY1u3PJp 6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXhFzL7ar9Qfqa0AIgn-H4xR 2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=8YD5t1HIfTVQId3aH5ze8n3 jYttaCHIhjxk5z999bXs&e> &d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DRa2dXAvSFpCIgmkXh FzL7ar9Qfqa0AIgn-H4xR2EBk&m=Wl6HIlDRgUTbbS1FAgk-6K7JyNiSrXBJrv1SeGIj7p4&s=8Y D5t1HIfTVQId3aH5ze8n3jYttaCHIhjxk5z999bXs&e= J. Scott Evans:George. A trademark is by its very essence a monopoly for the goods and services for which is registered. Kathy Kleiman:@Mary: proposal again to clarify our question: relocate Category 1, Question, 1, Section iii to Category 2, Question 2. These are similar questions - challenges by TM owners and third parties. George Kirikos:J. Scott: you're adding a limitation there, "for the goods and services for which it is registered". Paul McGrady:@George K - I'm unawaree of any house built out of domain names, so your example seems unrelated to the conversation. Mary Wong:@George, I thought Kathy had wanted it moved to Cat 2 Q4 or 5, not Q2 George Kirikos:That's all I'm saying, that that limitation exists. One doesn't have a limitation over the use of the word itself. Scroll up. George Kirikos:@Paul: I wan't talking about domain names, I was talking about the use of the word "adobe", which Adobe Corporation doesn't exclusively control in the English language. Paul McGrady:@George K - oh, OK, but the rest of us are talking about domain names, not home construction. George Kirikos:(i.e. they might have exclusive use of it in the realm of software, but not in the English language for non-infringing uses) Paul keating:@phil, Deloitte should poll the various public registries to find if cancellation occurred. Paul keating:@phil, API access is available. George Kirikos:@Paul: I can certainly find a non-infringing use for Adobe.houses, etc., if you want to talk about domains. Why should Adobe Corp get first dibs on that? Greg Shatan:Good point, Susan. George Kirikos:+1 Kathy J. Scott Evans:Correction: Cancelled registration. REDSKINS remains a valid common law mark. Paul keating:@ Phil, cancellation includes failure to file section 8 with USPTO. they have a limited number of entries and know the jurisdiction of registration. they can easily verify. Marc Trachtenberg:@Paul - you are kidding, right? First, there is not API access to every Trademark Office registry. Regardless, this is a gigantic burden on the TMCH and not possible from a practical perspective. It would also require the cooperation of the trademark offices George Kirikos:REDSKINS is probably still a registered mark, outside the USA. Paul McGrady:@George K - I am unaware of a <.houses> top level domain name Paul keating:jscott, perhaps but no longer able to benefit from the TMCH process. George Kirikos:Yep, Washington Redskins in Canada, TMA251755 Paul Tattersfield:.eco would be a better example that could coexist George Kirikos:@PaulM: nitpicking typos. I meant ".house" Paul keating:@mark, I'm not kidding. do you know the source registrations? confirmation is a simple process as it is an exact match and has reg number. Kristine Dorrain - Amazon Registry Services:with a valid CA mark, then the redskins could keep their mark in the TMCH...not sure what the problem is. US TM DB is not conclusive. Paul keating:certainly not more silly than domain registrants should conduct a trademark search before registration of a domain. George Kirikos:"REDSKINS" in the Benelux and other countries, see TMView. Terri Agnew:next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Wednesday, 15 February 2017 at 17:00 UTC for 60 minutes Kathy Kleiman:I'll be in Iceland too Terri Agnew:@Phil and Kathy apology is noted Kathy Kleiman:The Slants George Kirikos:An interesting case, for sure. Paul keating:@phil, yes but raises the issue of a Tm being cancelled in one j but not others. J. Scott Evans:adious J. Scott Evans:cia J. Scott Evans:ciao Maxim Alzoba (FAITID):bye all Vaibhav Aggarwal, NCSG:Thanks Phil & kathy for leading this WG. It is wonderful to work with gr8 leadership Paul keating:thank you all for the discussions. Kathy Kleiman:Tx Phil! Vaibhav Aggarwal, NCSG:BY Bye Steve Levy:Ciao Salvador Camacho:Bye! Martin Silva:By all! Paul Tattersfield:thanks bye all

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