Hi, I agree with George on this one. I, too, believe that we are talking about figures that have words that would not otherwise register. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Wednesday, February 22, 2017 3:00 PM To: Paul Keating <paul@law.es> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) Hi folks, On Wed, Feb 22, 2017 at 3:10 AM, Paul Keating <paul@law.es><mailto:paul@law.es%3e> wrote:
The issue I feel is not the figurative containing textual elements otherwise registrable. Rather we are really after a figurative mark used to protect a textual element not otherwise protectable as a trademark. E.g. "Fast Cars" with a green squiggly mark to claim rights in fast cars to sell automobiles.
It should be easy to come up with additional examples of those, to supplement the 2 examples already listed (I came up with the CARS one in 2 minutes). Here's a live one for "MUSIC" in the USA: http://tsdr.uspto.gov/#caseNumber=86892054&caseType=SERIAL_NO&searchType=sta... although, it has 2 parallel lines, instead of a "green squiggly mark". :-) The mark in this case expressly disclaims "MUSIC" apart from the figurative mark. Its goods and services include: "Arranging, organizing, conducting, and hosting social entertainment events; Film and video production; Music production services; Providing a website featuring information in the field of music and entertainment." It might be nice to find some quality examples that don't expressly disclaim the term (to see if that makes a difference to the TMCH).....I'm sure they're out there --- anyone have a quick example of that? Perhaps the following one is the kind Paul Keating is looking for: DEALHUNTER: https://euipo.europa.eu/eSearch/#details/trademarks/011340593 That figurative mark was used in a UDRP case, see: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-0766 and in that case, the complainant *was* able to satisfy the 1st prong of the UDRP test, but lost in a reverse domain name hijacking ruling. As an aside, there's another group of examples that might be of interest, namely stylized marks for individual letters of the alphabet (or other short terms). Here's an example of a registered TM for a stylized version of the letter "A": http://tsdr.uspto.gov/#caseNumber=87084153&caseType=SERIAL_NO&searchType=sta... (there are many examples of these worldwide, which could correspond to short and very valuable domain names in a sunrise) Would these kinds of registered TMs be sufficient to get first dibs on every single-letter domain name, through a recordal in the TMCH? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________
