Hi,

Please find below the Action Items and Notes from yesterday’s Review of all RPMs for all gTLDs PDP WG call. Also, another quick reminder that there will be no full Working Group call next week, although Sub Teams are expected to continue their own calls. The next full Working Group call is scheduled to take place on Thursday, 27 April at UTC 03:00.

Thanks and cheers.

Mary and Amr

Action Items:

1. Working Group members should send specific proposals for recommendations for Charter questions 7, 8 and 10 to working group mailing list by COB Wednesday, 19 April, including a description of the benefits/costs and advantages/disadvantages

2. Staff to seek response from Deloitte on outstanding questions from the Working Group in relation to question 7

Notes:

1. Comments from co-chair regarding on-list discussions:

· Good to see active participation by WG members

· Several WG members have dropped off due to large volume of repetitive emails, tone of emails, general tone of conversations taking place also causes reluctance to provide input by some members

· Overview of the GNSO's policy development process, from working group --> ICANN Board adoption

o Emphasis on the need to reach consensus on charter questions to develop recommendations, pass them on to the GNSO Council and ICANN Board

o Important for Working Group members to treat each other with respect, and observe the ICANN Expected Standards of Behavior (https://www.icann.org/resources/pages/expected-standards-2016-06-28-en)

2. Discuss remaining open TMCH Charter questions (Q7, 8, 10):

· Question 15 should not be on the call agenda - previous agreement to table this question for future discussion

· Working Group needs to make progress on proposals/recommendations

· Send proposals to working group mailing list by COB Wednesday, 19 April -- all proposals will be tabulated for review by the full Working Group (ACTION ITEM)

· Multiple proposals may be submitted, discussed, refined/amended

· Proponents of different proposals should have equal opportunity to present and discuss their proposals

· Proposed recommendations can be amended and/or improved in the course of discussing them

· Development of recommendations is an iterative process - as work is completed on different RPMs in phase 1 of the PDP, might be necessary to review previously developed recommendations for refinement - currently, no formal or final consensus calls are being called for

· Question 7 (How are design marks currently handled by the TMCH provider?):

o ACTION ITEM: Staff to communicate with Deloitte to seek the requested information in relation to this question

o Should the treatment of design marks be changed? Are they collectively being handled properly? --> These questions are a good basis for discussion on this charter question

o Suggestion to discuss underlying concepts and nomenclature (including terms such as transformative, figurative marks) in preparation for the more substantive discussion on particular proposals for recommendations

o Straw poll to either review current proposal vs deferment until all proposals are submitted (after 19 April deadline) --> Equally split -- decision to proceed with suggestion to discuss underlying concepts, and deferral of currently submitted proposal

o In answering this charter question, distinction should be made between text marks alone, stylized text marks, design/device/image marks that contain a mix of a logo/graphic/visual and text – what may be considered a Design Mark in the US may be called something different elsewhere (e.g.: Figurative Mark in EU) or not recognized as such at all – distinction should not be limited to text only marks versus all other types of marks

o Small businesses that cannot afford to register more than one trademark may be counselled to register a stylized form of their trademark, with the understanding that both the design and text components are protected

o Need to develop recommendations that can provide protection to trademarks across different jurisdictions that may vary in how they classify trademarks and their nomenclature

o In certain jurisdictions text marks need to be associated with design for protection - does not mean that text portion is not indistinctive

o From AC room chat: The TMCH Guidelines specifically address the topic of a mark that is not entirely text. Deloitte's rule is that it is considered identical to the TM record if the words/numerals/letters/signs are predominant in the mark AND are clearly separable and distinguishable from the design element.

o Working Group members should review Deloitte's test on how text marks are determined (refer to Deloitte's guidelines on TMCH: http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.0%20_1.pdf

o Design marks are sometimes used due to inability to register text marks alone --> Deloitte was not intended to have the discretion to extract text from Design Marks to include in the TMCH

o Should stylized Marks be distinguishable from standard Text Marks and Design Marks, do they grant the trademark holder different rights?

o Text + design protects the text + design trademark – does not provide the same protection afforded to text alone and design alone – standard for entry into the TMCH is a court judgment or registration that protects the mark – Working Group should be limited to the specifics of the protected mark, and not extrapolate on what else might be protected

o If textual elements of Design Marks are making it in to the TMCH despite disclaimers on the text clarifying that the text is not protected, then perhaps a recommendation to prevent Deloitte from accepting these trademarks is necessary

o From AC room chat: What if the registered trademark is "logo plus word" and the word is not disclaimed, i.e. it is protected as part of the whole mark? Should that be accepted or rejected by the TMCH? So it seems that 2 basic questions for the Working Group are: (1) is a mark comprised entirely of stylized text considered a word mark? (2) does the concept of "word mark only" exclude all marks that are device/logo plus text (even where the text part is disclaimed)?

3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT):

· Purpose of presenting these questions:

o Inform the Working Group that preliminary recommendations of the CCT-RT have been published, and that some are directed towards the RPMs Review PDP WG

o Initiate discussion between the leadership teams of the RPMs Review PDP Working Group and the new gTLDs Subsequent Procedures PDP Working Group

o CCT-RT initial report is published and open for public comments - working group members should consider submitting comments

4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call:

· No full working group call next week - use standard working group call time for one of the two currently formed Sub Teams

5. Next steps/next meeting:

· Full working group call will take place in two weeks - will discuss proposals for recommendations at that time