Dear all, In response to Phil’s request, staff has updated the previously-circulated table of suggested TMCH Charter Questions with additional suggestions and comments received from Working Group members up to 1800 UTC today (6 December), which is 24 hours before the Working Group call. The updated document is attached, and we will plan on using it as the basis for discussion on the Working Group call tomorrow. Please feel free to send any additional thoughts and comments you may have to the Working Group mailing list – while they may not all be captured in the document, staff will do our best to ensure they are covered during the Working Group’s discussion. As we move into discussion and finalization of the proposed TMCH Charter Questions, Working Group members may wish to note that the TMCH Data Gathering Sub Team had agreed on a list of questions that were sent to the TMCH Providers as well as others that were sent to the Registries and Registrars Stakeholder Groups. In line with their mandate, the Sub Team’s questions are all directed toward obtaining relevant data on the workings of the TMCH – for purposes of the current discussion, the questions that were directed to the TMCH Providers include questions on design marks and their verification, the handling of cancelled or expired trademarks by the TMCH, and the various outreach efforts that were undertaken (among others). If you are interested, the final sets of questions that were sent by the TMCH Data Gathering Sub Team to Registries, Registrars and the TMCH Providers can be viewed here: https://community.icann.org/x/VAmsAw. Thanks and cheers Mary From: <gnso-rpm-wg-bounces@icann.org> on behalf of Phil Corwin <psc@vlaw-dc.com> Date: Tuesday, December 6, 2016 at 23:49 To: John McElwaine <john.mcelwaine@nelsonmullins.com>, David Tait <david.tait@icann.org>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Thanks for the feedback, John. Perhaps it would be best if at this point in the discussion staff would post the current language of the question, so that we can review any specific suggestions for alteration of its wording. Best to all. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of John McElwaine Sent: Tuesday, December 06, 2016 9:49 AM To: David Tait; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 The point that Kiran is making is that words such as “generic” mean something. While it is possible to have a dictionary term as a domain name or mark, it is not possible to have a domain name or mark that is generic, solely because it can be found in the dictionary. An extra step of analysis and investigation is required, which is likely outside the scope of this Working Group’s remit and capabilities and outside the remit and capabilities of the TMCH. Legally speaking, generic terms are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Applying United States trademark law, determining whether a mark is generic requires the finder of fact to examine (1) the genus of the goods or services at issue; and (2) whether the relevant public understands the applicant's mark/designation primarily to refer to that genus of services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). So to determine whether a mark is considered "generic" there must be an initial analysis of whether the mark is a word that is a genus of a quality, feature, function, or characteristic, but of what? In order to answer the rest of the question, we would be forced to look at the goods or services claimed in the registration or the content and/or stated mission and purpose of the domain name, to make a determination of genericness. Complicating things, this analysis is not a bright line analysis and there are several nuances to the relatively straight-forward test set forth above. For instance, a word that has been used on a wide range of different types of products or services that are not within the same species may be less likely to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2009). Moreover, a proper analysis requires an in-depth factual investigation of the relevant public's understanding of the alleged generic term. As we have discussed on our calls, it is important to be precise in our terminology and for the reasons set forth above, I think we should remove the term “generic” from our discussions relating to the TMCH and dictionary terms. It would be a large (that may be an understatement) undertaking for this Working Group or the TMCH to make an accurate determination of whether a mark in the TMCH is generic or whether a domain name registrant (with a mark in the TMCH) intends to use it in a manner that would be considered generic. Thanks, John From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of David Tait Sent: Tuesday, December 06, 2016 5:54 AM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 Dear All At Kathy Kleiman’s request, and to facilitate discussion of this, issue staff is circulating the email below to the full Working Group. Kind regards, David From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Sunday, 4 December 2016 at 19:40 To: Kiran Malancharuvil <Kiran.Malancharuvil@markmonitor.com<mailto:Kiran.Malancharuvil@markmonitor.com>>, David Tait <david.tait@icann.org<mailto:david.tait@icann.org>> Cc: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, Susan Payne <susan.payne@valideus.com<mailto:susan.payne@valideus.com>>, Edward Morris <edward.morris@alumni.usc.edu<mailto:edward.morris@alumni.usc.edu>>, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>>, "Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>" <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, "kurt@kjpritz.com<mailto:kurt@kjpritz.com>" <kurt@kjpritz.com<mailto:kurt@kjpritz.com>>, "gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>" <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>, "Vaibhav Aggarwal, Group CEO & Founder" <va@bladebrains.com<mailto:va@bladebrains.com>>, Sarah Clayton <Sarahliannec@gmail.com<mailto:Sarahliannec@gmail.com>> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2 December 2016 I don't think anyone understood why it was legally inappropriate, Kiran. You referenced a discussion that took place a long time ago, and after which there was considerable discussion and disagreement online. One major reference for the definition of "generic words" used in this question is the International Trademark Association. It's Fact Sheet on Trademark Strength references generic words and instructs: => "Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify." http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx[inta.org]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.inta.org_TrademarkBasics_FactSheets_Pages_TrademarkStrengthFactSheet.aspx&d=DgMD-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=KScfcqapcv0bzf6fXXUcv9ZJuEfDd3nQD1q6n87CfSA&m=zOLVsOmd1IUv-5M_9bsSfzw8tV61pLQgKc9fMl-Vz2c&s=KwlcAsU7w69ItoPjM20ttgmU4Grr51Qb3RqKsrNZTpY&e=> So the question of whether, through the TMCH Database or its associated Rights Protection Mechanisms, is granting protection to a trademark, which also happens to be a generic word (see INTA above), beyond its categories of goods and services is a fair one. Besides, there were numerous charter questions on this issue. We can't simply delete it. But if you would like to offer a clearer way to phrase the question, please do. Best, Kathy On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote: Hi David, I wasn't able to attend the call on Friday. Can you please explain why Question 10 was marked green for accepted with legally inappropriate terminology? Thanks, Kiran Kiran Malancharuvil Policy Counselor MarkMonitor 415-419-9138 (m) Sent from my mobile, please excuse any typos. On Dec 4, 2016, at 9:26 AM, David Tait <david.tait@icann.org<mailto:david.tait@icann.org><mailto:david.tait@icann.org><mailto:david.tait@icann.org>> wrote: Dear All Following our call on Friday I am pleased to enclose the notes and outcomes from the meeting. Alongside these notes I attach an appropriately updated version of the TMCH Charter Questions document. The notes and outcomes are as follows: * Q10 - Should be marked green for accepted. * Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH database and RPM Rights Protection Actions and Defenses to individuals, orgs, trademark owners and trademark agents in developing countries?" Proposal to keep question in but report findings to SubPro WG. * Q15- (now question 14 in latest draft) Revision agreed to "What concerns are being raised about the TMCH being closed, what are the reasons for having/keeping the TMCH Database private, and should the TMCH Database remain closed or become open?" * Q16- (now question 15 in latest draft) Proposal 1 "Does the present structuring of the TMCH optimize such operational considerations as cost, reliability, global reach, and service diversity and consistency, or should significant changes be considered?" Proposal 2 "What are the concerns with the TMCH Database being provided by a single Provider - and how might those concerns be addressed?" Both proposals to go to the Working Group. Should there be regional service desks if not regional providers? * Q17- (now question 16 in latest draft) Agreed revision: "Are the costs and benefits of the TMCH, for rights holders, for ICANN, for the community, proportionate?" I would also note that further to Mary Wong's email of 1 December 2016 we will now proceed to circulate this updated document to the full Working Group in advance of the next Working Group call on Wednesday. Additionally, we will note that the Sub-Team is expressly seeking the input of the full Working Group on the alternative formulations of Question 16 (this being the only outstanding question not agreed by the Sub-Team). Kind regards, David David A. 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