Second table summarizing TMCH Charter questions, relevant input and potential follow up
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@icann.org> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@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%20Respo.... Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org Telephone: +1-603-5744889
Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<http://www.origin-gi.com/> [twitter]<https://twitter.com/oriGInNetwork>[linkedin]<https://www.linkedin.com/company/origin-the-organization-for-an-international-geographical-indications-network>[logos_youtubeBin1]<https://www.youtube.com/user/oriGInNetwork1> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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%20Respo.... Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889
Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE - Muenchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE - Munchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote:
Dear Mary,
I am not sure I understand the answer provided to question 8 on Geographical Indications: /As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements"./
I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8.
Best,
Massimo
**
**
*Mr Massimo Vittori*
Managing Director – oriGIn
1, rue de Varembé 1202, Geneva, Switzerland
Telephone: +41 (0) 22 755 07 32
E-mail: _massimo@origin-gi.com <mailto:massimo@origin-gi.com>_
_www.origin-gi.com <http://www.origin-gi.com/>___
twitter <https://twitter.com/oriGInNetwork>linkedin <https://www.linkedin.com/company/origin-the-organization-for-an-international-geographical-indications-network>logos_youtubeBin1 <https://www.youtube.com/user/oriGInNetwork1>
/CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any./
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Mary Wong *Sent:* 06 February 2017 15:50 *To:* gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up
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@icann.org <mailto:mary.wong@icann.org>> *Date: *Thursday, February 2, 2017 at 18:18 *To: *"gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@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%20Respo....
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong@icann.org <mailto:mary.wong@icann.org>
Telephone: +1-603-5744889
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Kathy, I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services: Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging] As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture. Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] [renamed] Geographic indications Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Muenchen --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Munchen --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...> [twitter]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=>[linkedin]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=>[logos_youtubeBin1]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_oriGInNetwork1&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=NGqdcpAnNcPLAmJ2jzcykDF8cOZd9c0ETfwE-sSSqPg&e=> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-...>. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
Thank you Kathy and Marc. I agree with Marc, the 3 marks listed by Kathy are not being used as geographical indications. The interest of question 8 for me is to enquire on those marks filed under paragraph 2.4.1 of the TMCH guidelines (marks protected by Statute or Treaty) : “For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin”. Best, Massimo From: trachtenbergm@gtlaw.com [mailto:trachtenbergm@gtlaw.com] Sent: 08 February 2017 17:58 To: kathy@kathykleiman.com; Massimo <Massimo@origin-gi.com>; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications Kathy, I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services: Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging] As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture. Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626206_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=-ilAU1MAaJUL-TG2B6iSrSFzOpqlkYqIZcsrnt6BMl0&e=> - Muenchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626192_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=omKayKP9cG7bgeZpFzA8o97o8p-KfL_RWdA4jDtVNyM&e=> - Munchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626214_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=TN4bwErzPTxS3VKDpoKH_LZx1RHp2FDylEzyY2dqYrI&e=> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...> [twitter]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=>[linkedin]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=>[logos_youtubeBin1]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_oriGInNetwork1&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=NGqdcpAnNcPLAmJ2jzcykDF8cOZd9c0ETfwE-sSSqPg&e=> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FpHRAw&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=j1dzQaxlhM5xBUhXEYRGC0lh_4M1Z-WKmCcEoU5x7NY&e=>. 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%20Response_05JUL16.pdf?version=1&modificationDate=1468352438000&api=v2<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_59643854_RySG-2520RPM-2520Response-5F05JUL16.pdf-3Fversion-3D1-26modificationDate-3D1468352438000-26api-3Dv2&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=pYnmfdJT0T2YnwjwuF10ZkyTBa3KLsqX9ZFv-2wmcQo&e=>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 _______________________________________________ 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=BOn0COktXnlY7S5mRoz47wuShpcxYo0_aaOCLZXdlg4&e=> ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information.
Yes. Let me chime in here. This is where words are important: “Geographic Indicators” are a specific subset of intellectual property that are similar to trademarks in their protection, but there is a very specific criterion that these indicators must meet to be receive the protection. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.com From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <massimo@origin-gi.com<mailto:massimo@origin-gi.com>> Date: Wednesday, February 8, 2017 at 9:16 AM To: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>, "kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>" <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Thank you Kathy and Marc. I agree with Marc, the 3 marks listed by Kathy are not being used as geographical indications. The interest of question 8 for me is to enquire on those marks filed under paragraph 2.4.1 of the TMCH guidelines (marks protected by Statute or Treaty) : “For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin”. Best, Massimo From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> [mailto:trachtenbergm@gtlaw.com] Sent: 08 February 2017 17:58 To: kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications Kathy, I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services: Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging] As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture. Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626206_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=-ilAU1MAaJUL-TG2B6iSrSFzOpqlkYqIZcsrnt6BMl0&e=> - Muenchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626192_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=omKayKP9cG7bgeZpFzA8o97o8p-KfL_RWdA4jDtVNyM&e=> - Munchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626214_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=TN4bwErzPTxS3VKDpoKH_LZx1RHp2FDylEzyY2dqYrI&e=> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...> [twitter]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=>[linkedin]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=>[logos_youtubeBin1]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_oriGInNetwork1&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=NGqdcpAnNcPLAmJ2jzcykDF8cOZd9c0ETfwE-sSSqPg&e=> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FpHRAw&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=j1dzQaxlhM5xBUhXEYRGC0lh_4M1Z-WKmCcEoU5x7NY&e=>. 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%20Response_05JUL16.pdf?version=1&modificationDate=1468352438000&api=v2<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_59643854_RySG-2520RPM-2520Response-5F05JUL16.pdf-3Fversion-3D1-26modificationDate-3D1468352438000-26api-3Dv2&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=pYnmfdJT0T2YnwjwuF10ZkyTBa3KLsqX9ZFv-2wmcQo&e=>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 _______________________________________________ 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=BOn0COktXnlY7S5mRoz47wuShpcxYo0_aaOCLZXdlg4&e=> ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information.
Hi all, I agree with the points raised by Marc and J. Scott. It is very important to keep these distinctions in mind while discussing TMCH rules. This is another example of why educational services are so important. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial On Feb 8, 2017, at 12:30 PM, J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> wrote: Yes. Let me chime in here. This is where words are important: “Geographic Indicators” are a specific subset of intellectual property that are similar to trademarks in their protection, but there is a very specific criterion that these indicators must meet to be receive the protection. J. Scott J. Scott Evans | Associate General Counsel - Trademarks, Copyright, Domains & Marketing | Adobe 345 Park Avenue San Jose, CA 95110 408.536.5336 (tel), 408.709.6162 (cell) jsevans@adobe.com<mailto:jsevans@adobe.com> www.adobe.c<http://www.adobe.c>om From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Massimo <massimo@origin-gi.com<mailto:massimo@origin-gi.com>> Date: Wednesday, February 8, 2017 at 9:16 AM To: "trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>" <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>, "kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>" <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>>, "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Thank you Kathy and Marc. I agree with Marc, the 3 marks listed by Kathy are not being used as geographical indications. The interest of question 8 for me is to enquire on those marks filed under paragraph 2.4.1 of the TMCH guidelines (marks protected by Statute or Treaty) : “For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin”. Best, Massimo From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> [mailto:trachtenbergm@gtlaw.com] Sent: 08 February 2017 17:58 To: kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>; Massimo <Massimo@origin-gi.com<mailto:Massimo@origin-gi.com>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications Kathy, I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services: Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging] As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture. Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.gtlaw.co...> [Greenberg Traurig] From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__register.dpma.de_DPMAregister_marke_register_3020130626206_DE%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3D-ilAU1MAaJUL-TG2B6iSrSFzOpqlkYqIZcsrnt6BMl0%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=D2zzeE8LLM708SdOrggdcqpG%2BeroxAtsYPZcFGE63Gc%3D&reserved=0> - Muenchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__register.dpma.de_DPMAregister_marke_register_3020130626192_DE%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3DomKayKP9cG7bgeZpFzA8o97o8p-KfL_RWdA4jDtVNyM%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=jj92vdMeUnCD%2BUK8z2SOrsGSXbQio%2F0vw7qgEGkoxDw%3D&reserved=0> - Munchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__register.dpma.de_DPMAregister_marke_register_3020130626214_DE%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3DTN4bwErzPTxS3VKDpoKH_LZx1RHp2FDylEzyY2dqYrI%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=3k3kf%2FF0%2BN%2BPSYmZkJZuBtcRL9S7ylpivODMwcNzs9E%3D&reserved=0> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....> <image002.gif><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__twitter.com_oriGInNetwork%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3DD7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=vJFx83y2LnJ93avCXsXZdMYrn124N3ZjsMDRRLscNKo%3D&reserved=0><image003.gif><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3DwE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=q5KXOcV3QwEzP%2FjpMwiUTHRXIIT9qAbJHLnfeaN6SVc%3D&reserved=0><image004.jpg><https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__www.youtube.com_user_oriGInNetwork1%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3DNGqdcpAnNcPLAmJ2jzcykDF8cOZd9c0ETfwE-sSSqPg%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=hT00LNlJZfEpJ%2BLSbtKjhv57CoDEM6z6OUdfgZJFoeE%3D&reserved=0> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__community.icann.org_x_-5FpHRAw%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3Dj1dzQaxlhM5xBUhXEYRGC0lh_4M1Z-WKmCcEoU5x7NY%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=0J9RjvIamXdamucUbQtNy%2BWJnyS8CEHt7%2FJ0M9vmO%2BI%3D&reserved=0>. 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%20Response_05JUL16.pdf?version=1&modificationDate=1468352438000&api=v2<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__community.icann.org_download_attachments_59643854_RySG-2520RPM-2520Response-5F05JUL16.pdf-3Fversion-3D1-26modificationDate-3D1468352438000-26api-3Dv2%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3DpYnmfdJT0T2YnwjwuF10ZkyTBa3KLsqX9ZFv-2wmcQo%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=9pm3gbdnfYhhvJ%2F7x0r7eP1I96T%2FQfW0E29UVfZjQRU%3D&reserved=0>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 _______________________________________________ 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense.proofpoint.com%2Fv2%2Furl%3Fu%3Dhttps-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg%26d%3DDwMDaQ%26c%3D2s2mvbfY0UoSKkl6_Ol9wg%26r%3DL7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c%26m%3DmOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0%26s%3DBOn0COktXnlY7S5mRoz47wuShpcxYo0_aaOCLZXdlg4%26e%3D&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7Cdae834e329314f53003708d4504827d4%7C09131022b7854e6d8d42916975e51262%7C0&sdata=ufvQ6Xgu%2BCor6dwLkZ2w28Z391yi4A2sbM%2BgQAmfDto%3D&reserved=0> ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information. <image001.jpg> <image002.gif> <image003.gif> <image004.jpg> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.or... __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. 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I think the larger point is that people are putting *trademarks* in the TMCH Database, which is exactly what was intended. Some trademarks have other meanings, some of them as geographical terms, and some don't. But nobody is putting a "geographic term" as such into the TMCH Database. By contrast, some people are putting "geographical indications" (GIs) as such into the TMCH Database. Here's WIPO's definition of a *Geographical Indication*: *A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.* I don't think it's useful to treat "Geographic indications, geographic indicators and geographic names" both as "ordinary definitions and terms of art" like one big ball of wax. The distinctions are important, and their meaning (or lack of meaning) in trademark law is important to distinguish and understand in our discussions. Nor is it helpful to mash the discussion of these together without realizing the distinctions. Rather, I think we should try to use the proper vocabulary (while being corrective (without being critical) of attempts that go astray). "*Geographical Indications*" is the proper term of art for what's described above in italics. In casual usage, people (including trademark experts)s may use "geographic indications" or "geographic indicators" when they mean Geographical Indications (GIs). We may want to avoid using all of these terms interchangeably, and instead use only "Geographical Indications" or "GIs" when that's what we mean. In part, that is because the other terms may have other,potentially conflicting meanings. I've seen "geographic indicators" used as if it's synonymous with "geographic terms"; and I've seen "geographic indicators" used (in social sciences and similar data) to mean variables created to describe the area of residence of the subject of a study or a respondent to a survey. On the other hand "geographic names" and "geographic terms" generally refers to the use of terms in their geographic meaning (i.e., as a place name). We should use one or the other (or maybe both, I don't want to be too much of a stickler) when we mean place names functioning as such. Personally, I think "geographic terms" is a bit more precise. Geographic terms can also function as trademarks, but there is a higher bar to get certain geographic names registered as trademarks (i.e., those that are "primarily geographically descriptive"). Where a registered trademark is also a geographic term, it generally needed to have cleared that higher bar. At the risk of simplifying too much, the mark needs to acquire secondary meaning (also called "acquired distinctiveness in this context), which means that (in the eye of a consumer) the "string" is functioning as a trademark and not as a geographic term. There are also times when geographic names function neither as trademarks nor as geographic terms, e.g., "dotted swiss," "Boston baked beans," "Swiss cheese," "Early American design," and "Italian spaghetti" (examples given in the USPTO's Trademark Manual of Examining Procedure). There are also geographic names that are obscure and thus won't be considered "primarily geographically descriptive"). The details of this area are way, way beyond the scope of this email, and this is both a bit simplified and also US-centric. If you want to see how the USPTO instructs its trademark examiners to analyze trademark applications containing geographic terms, see https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e8253.html But my main point is that "Geographical Indications" are a specific type of source-identifying use of geographic terms and that trademarks that are also geographic terms are a different type of source-identifying use, and that neither should be confused with "geographic terms" or "geographic names" functioning as such. My subsidiary point is that these need to be distinguished when we're analyzing this area, and not mushed together. Greg *Greg Shatan* C: 917-816-6428 S: gsshatan gregshatanipc@gmail.com On Wed, Feb 8, 2017 at 12:47 PM, Winterfeldt, Brian J. < BWinterfeldt@mayerbrown.com> wrote:
Hi all,
I agree with the points raised by Marc and J. Scott. It is very important to keep these distinctions in mind while discussing TMCH rules. This is another example of why educational services are so important.
Best regards,
Brian
*Brian J. Winterfeldt*
Co-Head of Global Brand Management and Internet Practice
Mayer Brown LLP
bwinterfeldt@mayerbrown.com
1999 K Street, NW
Washington, DC 20006-1101
202.263.3284 direct dial
202.830.0330 fax
1221 Avenue of the Americas
New York, New York 10020-1001
212.506.2345 direct dial
On Feb 8, 2017, at 12:30 PM, J. Scott Evans via gnso-rpm-wg < gnso-rpm-wg@icann.org> wrote:
Yes. Let me chime in here. This is where words are important: “Geographic Indicators” are a specific subset of intellectual property that are similar to trademarks in their protection, but there is a very specific criterion that these indicators must meet to be receive the protection.
J. Scott
*J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, Domains & Marketing |*
*Adobe *
345 Park Avenue
San Jose, CA 95110 408.536.5336 <(408)%20536-5336> (tel), 408.709.6162 <(408)%20709-6162> (cell) jsevans@adobe.com
www.adobe.com
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Massimo < massimo@origin-gi.com> Date: Wednesday, February 8, 2017 at 9:16 AM To: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com>, " kathy@kathykleiman.com" <kathy@kathykleiman.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications
Thank you Kathy and Marc.
I agree with Marc, the 3 marks listed by Kathy are not being used as geographical indications. The interest of question 8 for me is to enquire on those marks filed under paragraph 2.4.1 of the TMCH guidelines (marks protected by Statute or Treaty) : “For marks protected by statute or treaty, the relevant statute or treaty must be in effect at the time the mark is submitted to the Clearinghouse for inclusion. These marks may include but are not limited to: geographical indications and designations of origin”.
Best,
Massimo
*From:* trachtenbergm@gtlaw.com [mailto:trachtenbergm@gtlaw.com <trachtenbergm@gtlaw.com>] *Sent:* 08 February 2017 17:58 *To:* kathy@kathykleiman.com; Massimo <Massimo@origin-gi.com>; gnso-rpm-wg@icann.org *Subject:* RE: [gnso-rpm-wg] [renamed] Geographic indications
Kathy,
I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services:
Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer
class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles
Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging]
As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture.
Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.
Best regards,
*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 <(312)%20456-1020>
Mobile 773.677.3305 <(773)%20677-3305>
trachtenbergm@gtlaw.com | www.gtlaw.com <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.gtlaw.co...>
[image: Greenberg Traurig]
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, February 08, 2017 10:24 AM *To:* massimo@origin-gi.com; gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] [renamed] Geographic indications
Massimo,
Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8).
Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for:
- Munich --- https://register.dpma.de/DPMAregister/marke/register/ 3020130626206/DE <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....>
- Muenchen --- https://register.dpma.de/DPMAregister/marke/register/ 3020130626192/DE <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....>
- Munchen --- https://register.dpma.de/DPMAregister/marke/register/ 3020130626214/DE <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....>
- Tahiti - French trademark
- Ireland -- UK trademark
He notes that the registrants were using the domain names in geographically descriptive ways.
Best, Kathy
On 2/7/2017 11:04 AM, Massimo wrote:
Dear Mary,
I am not sure I understand the answer provided to question 8 on Geographical Indications: *As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements".*
I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8.
Best,
Massimo
*Mr Massimo Vittori*
Managing Director – oriGIn
1, rue de Varembé 1202, Geneva, Switzerland
Telephone: +41 (0) 22 755 07 32 <+41%2022%20755%2007%2032>
E-mail: *massimo@origin-gi.com <massimo@origin-gi.com>*
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*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Mary Wong *Sent:* 06 February 2017 15:50 *To:* gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up
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@icann.org> *Date: *Thursday, February 2, 2017 at 18:18 *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@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 <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....>.
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%20Response_05JUL16.pdf?version=1& modificationDate=1468352438000&api=v2 <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Furldefense....>.
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong@icann.org
Telephone: +1-603-5744889 <(603)%20574-4889>
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Tx you for all the responses. Geographic indications, geographic indicators and geographic names all seem to be subject to range of uses - both ordinary definitions and terms of art. I think the larger point is that people are putting into the TMCH Database geographic terms that may have wide-ranging ramifications - including becoming part of block lists. We now have some evidence of actual cases and uses. I look forward to exploring the ramifications, impacts, and perhaps unintended consequences, with the Working Group. Best, Kathy On 2/8/2017 11:58 AM, trachtenbergm@gtlaw.com wrote:
Kathy,
I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services:
Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer
class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles
Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging]
As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture.
Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.
Best regards,
**
*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020
Mobile 773.677.3305
trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/>
Greenberg Traurig
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Kathy Kleiman *Sent:* Wednesday, February 08, 2017 10:24 AM *To:* massimo@origin-gi.com; gnso-rpm-wg@icann.org *Subject:* [gnso-rpm-wg] [renamed] Geographic indications
Massimo,
Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8).
Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for:
- Munich --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...>
- Muenchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...>
- Munchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...>
- Tahiti - French trademark
- Ireland -- UK trademark
He notes that the registrants were using the domain names in geographically descriptive ways.
Best, Kathy
On 2/7/2017 11:04 AM, Massimo wrote:
Dear Mary,
I am not sure I understand the answer provided to question 8 on Geographical Indications: /As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements"./
I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8.
Best,
Massimo
**
**
*Mr Massimo Vittori*
Managing Director – oriGIn
1, rue de Varembé 1202, Geneva, Switzerland
Telephone: +41 (0) 22 755 07 32
E-mail: _massimo@origin-gi.com <mailto:massimo@origin-gi.com>_
twitter <https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=>linkedin <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=>logos_youtubeBin1 <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_or...>
/CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any./
*From:*gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *Mary Wong *Sent:* 06 February 2017 15:50 *To:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up
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@icann.org <mailto:mary.wong@icann.org>> *Date: *Thursday, February 2, 2017 at 18:18 *To: *"gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@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 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-...>.
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%20Respo... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>.
Thanks and cheers
Mary
Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong@icann.org <mailto:mary.wong@icann.org>
Telephone: +1-603-5744889
_______________________________________________
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https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...>
------------------------------------------------------------------------ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
Kathy and Massimo, Just to clarify my email below, since it’s rather the crucial point: Since the example below says “registrants”, presumably the clams notice did NOT deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. The claims notice appears to have done its job, i.e., flagging that a mark existed in the TMCH, causing the registrant to assess whether their use appeared to run a risk of infringement and, since John refers to them as registrants, then concluded “no” and proceeded. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Kathy Kleiman [mailto:kathy@kathykleiman.com] Sent: Wednesday, February 08, 2017 11:36 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Tx you for all the responses. Geographic indications, geographic indicators and geographic names all seem to be subject to range of uses - both ordinary definitions and terms of art. I think the larger point is that people are putting into the TMCH Database geographic terms that may have wide-ranging ramifications - including becoming part of block lists. We now have some evidence of actual cases and uses. I look forward to exploring the ramifications, impacts, and perhaps unintended consequences, with the Working Group. Best, Kathy On 2/8/2017 11:58 AM, trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> wrote: Kathy, I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services: Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging] As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture. Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Muenchen --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Munchen --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...> [twitter]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=>[linkedin]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=>[logos_youtubeBin1]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_oriGInNetwork1&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=NGqdcpAnNcPLAmJ2jzcykDF8cOZd9c0ETfwE-sSSqPg&e=> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-...>. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information.
Also bear in mind these Claims Notices only operate once in the early life of each TLD, and for a very short time frame at that. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of trachtenbergm@gtlaw.com Sent: Wednesday, February 08, 2017 7:17 PM To: kathy@kathykleiman.com; massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Kathy and Massimo, Just to clarify my email below, since it’s rather the crucial point: Since the example below says “registrants”, presumably the clams notice did NOT deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. The claims notice appears to have done its job, i.e., flagging that a mark existed in the TMCH, causing the registrant to assess whether their use appeared to run a risk of infringement and, since John refers to them as registrants, then concluded “no” and proceeded. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Kathy Kleiman [mailto:kathy@kathykleiman.com] Sent: Wednesday, February 08, 2017 11:36 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Tx you for all the responses. Geographic indications, geographic indicators and geographic names all seem to be subject to range of uses - both ordinary definitions and terms of art. I think the larger point is that people are putting into the TMCH Database geographic terms that may have wide-ranging ramifications - including becoming part of block lists. We now have some evidence of actual cases and uses. I look forward to exploring the ramifications, impacts, and perhaps unintended consequences, with the Working Group. Best, Kathy On 2/8/2017 11:58 AM, trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> wrote: Kathy, I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services: Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging] As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture. Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626206_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=-ilAU1MAaJUL-TG2B6iSrSFzOpqlkYqIZcsrnt6BMl0&e=> - Muenchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626192_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=omKayKP9cG7bgeZpFzA8o97o8p-KfL_RWdA4jDtVNyM&e=> - Munchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE<https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAregister_marke_register_3020130626214_DE&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=TN4bwErzPTxS3VKDpoKH_LZx1RHp2FDylEzyY2dqYrI&e=> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...> [twitter]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=>[linkedin]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=>[logos_youtubeBin1]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_oriGInNetwork1&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=NGqdcpAnNcPLAmJ2jzcykDF8cOZd9c0ETfwE-sSSqPg&e=> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FpHRAw&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=j1dzQaxlhM5xBUhXEYRGC0lh_4M1Z-WKmCcEoU5x7NY&e=>. 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%20Response_05JUL16.pdf?version=1&modificationDate=1468352438000&api=v2<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_download_attachments_59643854_RySG-2520RPM-2520Response-5F05JUL16.pdf-3Fversion-3D1-26modificationDate-3D1468352438000-26api-3Dv2&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=pYnmfdJT0T2YnwjwuF10ZkyTBa3KLsqX9ZFv-2wmcQo&e=>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 _______________________________________________ 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=BOn0COktXnlY7S5mRoz47wuShpcxYo0_aaOCLZXdlg4&e=> ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information. World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Happy to participate. I think we need to find out the types of names in the database Find out more about the process of confirming "use" Confirm process of determination that the use is within a permitted class, not descriptive, etc. Sent from my iPad
On 9 Feb 2017, at 09:23, Beckham, Brian <brian.beckham@wipo.int> wrote:
Also bear in mind these Claims Notices only operate once in the early life of each TLD, and for a very short time frame at that.
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of trachtenbergm@gtlaw.com Sent: Wednesday, February 08, 2017 7:17 PM To: kathy@kathykleiman.com; massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications
Kathy and Massimo,
Just to clarify my email below, since it’s rather the crucial point: Since the example below says “registrants”, presumably the clams notice did NOT deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.
The claims notice appears to have done its job, i.e., flagging that a mark existed in the TMCH, causing the registrant to assess whether their use appeared to run a risk of infringement and, since John refers to them as registrants, then concluded “no” and proceeded.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com | www.gtlaw.com
<image001.jpg>
From: Kathy Kleiman [mailto:kathy@kathykleiman.com] Sent: Wednesday, February 08, 2017 11:36 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications
Tx you for all the responses. Geographic indications, geographic indicators and geographic names all seem to be subject to range of uses - both ordinary definitions and terms of art. I think the larger point is that people are putting into the TMCH Database geographic terms that may have wide-ranging ramifications - including becoming part of block lists.
We now have some evidence of actual cases and uses. I look forward to exploring the ramifications, impacts, and perhaps unintended consequences, with the Working Group.
Best, Kathy
On 2/8/2017 11:58 AM, trachtenbergm@gtlaw.com wrote: Kathy,
I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services:
Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer
class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles
Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging]
As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture.
Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com | www.gtlaw.com
<image001.jpg>
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] [renamed] Geographic indications
Massimo,
Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8).
Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for:
- Munich --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE
- Muenchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE
- Munchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE
- Tahiti - French trademark
- Ireland -- UK trademark
He notes that the registrants were using the domain names in geographically descriptive ways.
Best, Kathy
On 2/7/2017 11:04 AM, Massimo wrote:
Dear Mary,
I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements".
I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8.
Best,
Massimo
Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com www.origin-gi.com
<image002.gif><image003.gif><image004.jpg>
CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any.
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up
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@icann.org> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@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%20Respo....
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org Telephone: +1-603-5744889
_______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such information.
World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Great point. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Beckham, Brian [mailto:brian.beckham@wipo.int] Sent: Thursday, February 09, 2017 2:23 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); kathy@kathykleiman.com; massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications Also bear in mind these Claims Notices only operate once in the early life of each TLD, and for a very short time frame at that. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> Sent: Wednesday, February 08, 2017 7:17 PM To: kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>; massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Kathy and Massimo, Just to clarify my email below, since it’s rather the crucial point: Since the example below says “registrants”, presumably the clams notice did NOT deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. The claims notice appears to have done its job, i.e., flagging that a mark existed in the TMCH, causing the registrant to assess whether their use appeared to run a risk of infringement and, since John refers to them as registrants, then concluded “no” and proceeded. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Kathy Kleiman [mailto:kathy@kathykleiman.com] Sent: Wednesday, February 08, 2017 11:36 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Tx you for all the responses. Geographic indications, geographic indicators and geographic names all seem to be subject to range of uses - both ordinary definitions and terms of art. I think the larger point is that people are putting into the TMCH Database geographic terms that may have wide-ranging ramifications - including becoming part of block lists. We now have some evidence of actual cases and uses. I look forward to exploring the ramifications, impacts, and perhaps unintended consequences, with the Working Group. Best, Kathy On 2/8/2017 11:58 AM, trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> wrote: Kathy, I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services: Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging] As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture. Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Muenchen --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Munchen --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...> [twitter]<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=>[linkedin]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=>[logos_youtubeBin1]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_oriGInNetwork1&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=NGqdcpAnNcPLAmJ2jzcykDF8cOZd9c0ETfwE-sSSqPg&e=> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-...>. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information. World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
My understanding was that, for the first 90 days, registries are required to send a claims notice but, thereafter, the TMCH itself does so as a “value-add” for as long as the mark is in the TMCH. Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2 Current UTC offset: -8
On 9 Feb 2017, at 06:43, trachtenbergm@gtlaw.com wrote:
Great point.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/>
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From: Beckham, Brian [mailto:brian.beckham@wipo.int] Sent: Thursday, February 09, 2017 2:23 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); kathy@kathykleiman.com; massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications
Also bear in mind these Claims Notices only operate once in the early life of each TLD, and for a very short time frame at that.
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> Sent: Wednesday, February 08, 2017 7:17 PM To: kathy@kathykleiman.com <mailto:kathy@kathykleiman.com>; massimo@origin-gi.com <mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications
Kathy and Massimo,
Just to clarify my email below, since it’s rather the crucial point: Since the example below says “registrants”, presumably the clams notice did NOT deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.
The claims notice appears to have done its job, i.e., flagging that a mark existed in the TMCH, causing the registrant to assess whether their use appeared to run a risk of infringement and, since John refers to them as registrants, then concluded “no” and proceeded.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/>
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From: Kathy Kleiman [mailto:kathy@kathykleiman.com <mailto:kathy@kathykleiman.com>] Sent: Wednesday, February 08, 2017 11:36 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); massimo@origin-gi.com <mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications
Tx you for all the responses. Geographic indications, geographic indicators and geographic names all seem to be subject to range of uses - both ordinary definitions and terms of art. I think the larger point is that people are putting into the TMCH Database geographic terms that may have wide-ranging ramifications - including becoming part of block lists.
We now have some evidence of actual cases and uses. I look forward to exploring the ramifications, impacts, and perhaps unintended consequences, with the Working Group.
Best, Kathy
On 2/8/2017 11:58 AM, trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> wrote: Kathy,
I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services:
Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer
class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles
Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging]
As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture.
Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/>
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From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com <mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications
Massimo,
Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8).
Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for:
- Munich --- https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Muenchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Munchen --- https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Tahiti - French trademark
- Ireland -- UK trademark
He notes that the registrants were using the domain names in geographically descriptive ways.
Best, Kathy
On 2/7/2017 11:04 AM, Massimo wrote:
Dear Mary,
I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements".
I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8.
Best,
Massimo
Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com <mailto:massimo@origin-gi.com> www.origin-gi.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...>
<image002.gif> <https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=><image003.gif> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=><image004.jpg> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_or...>
CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any.
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up
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@icann.org <mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@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 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-...>.
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%20Respo... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>.
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org <mailto:mary.wong@icann.org> Telephone: +1-603-5744889
_______________________________________________ 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 <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...>
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World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Only notice to the Trademark owner continues after the 90 day period, which they call the ‘Ongoing notice Service”. Potential registrants no longer receive the claims notice. See https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing... . Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Reg Levy [mailto:reg@mmx.co] Sent: Thursday, February 09, 2017 12:58 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) Cc: James Brian Beckham; kathy@kathykleiman.com; massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications My understanding was that, for the first 90 days, registries are required to send a claims notice but, thereafter, the TMCH itself does so as a “value-add” for as long as the mark is in the TMCH. Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2 Current UTC offset: -8 On 9 Feb 2017, at 06:43, trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> wrote: Great point. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> <image001.jpg> From: Beckham, Brian [mailto:brian.beckham@wipo.int] Sent: Thursday, February 09, 2017 2:23 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>; massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications Also bear in mind these Claims Notices only operate once in the early life of each TLD, and for a very short time frame at that. From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> Sent: Wednesday, February 08, 2017 7:17 PM To: kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>; massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Kathy and Massimo, Just to clarify my email below, since it’s rather the crucial point: Since the example below says “registrants”, presumably the clams notice did NOT deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. The claims notice appears to have done its job, i.e., flagging that a mark existed in the TMCH, causing the registrant to assess whether their use appeared to run a risk of infringement and, since John refers to them as registrants, then concluded “no” and proceeded. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> <image001.jpg> From: Kathy Kleiman [mailto:kathy@kathykleiman.com] Sent: Wednesday, February 08, 2017 11:36 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications Tx you for all the responses. Geographic indications, geographic indicators and geographic names all seem to be subject to range of uses - both ordinary definitions and terms of art. I think the larger point is that people are putting into the TMCH Database geographic terms that may have wide-ranging ramifications - including becoming part of block lists. We now have some evidence of actual cases and uses. I look forward to exploring the ramifications, impacts, and perhaps unintended consequences, with the Working Group. Best, Kathy On 2/8/2017 11:58 AM, trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> wrote: Kathy, I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services: Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging] As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture. Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> <image001.jpg> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com<mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Muenchen --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Munchen --- https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre... <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary, I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements". I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8. Best, Massimo Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com<mailto:massimo@origin-gi.com> www.origin-gi.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...> <image002.gif><https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=><image003.gif><https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=><image004.jpg><https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_oriGInNetwork1&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=NGqdcpAnNcPLAmJ2jzcykDF8cOZd9c0ETfwE-sSSqPg&e=> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. 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From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up 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@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@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://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-...>. The full Registries Stakeholder Group response to our early solicitation for overall input can be found here: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org<mailto:mary.wong@icann.org> Telephone: +1-603-5744889 _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li... <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> ________________________________ If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com<mailto:postmaster@gtlaw.com>, and do not use or disseminate such information. World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using. _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...
Ah, yes. Trademark owners get a notice but potential registrants do not. Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2 Current UTC offset: -8
On 9 Feb 2017, at 11:16, trachtenbergm@gtlaw.com wrote:
Only notice to the Trademark owner continues after the 90 day period, which they call the ‘Ongoing notice Service”. Potential registrants no longer receive the claims notice. See http://www.trademark-clearinghouse.com/content/ongoing-notifications <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.trademark-2Dclearing...>.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/>
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From: Reg Levy [mailto:reg@mmx.co] Sent: Thursday, February 09, 2017 12:58 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) Cc: James Brian Beckham; kathy@kathykleiman.com; massimo@origin-gi.com; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications
My understanding was that, for the first 90 days, registries are required to send a claims notice but, thereafter, the TMCH itself does so as a “value-add” for as long as the mark is in the TMCH.
Reg Levy VP Compliance + Policy | Minds + Machines Group Limited C: +1-310-963-7135 S: RegLevy2
Current UTC offset: -8
On 9 Feb 2017, at 06:43, trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> wrote:
Great point.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/>
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From: Beckham, Brian [mailto:brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>] Sent: Thursday, February 09, 2017 2:23 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); kathy@kathykleiman.com <mailto:kathy@kathykleiman.com>; massimo@origin-gi.com <mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: RE: [gnso-rpm-wg] [renamed] Geographic indications
Also bear in mind these Claims Notices only operate once in the early life of each TLD, and for a very short time frame at that.
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> Sent: Wednesday, February 08, 2017 7:17 PM To: kathy@kathykleiman.com <mailto:kathy@kathykleiman.com>; massimo@origin-gi.com <mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications
Kathy and Massimo,
Just to clarify my email below, since it’s rather the crucial point: Since the example below says “registrants”, presumably the clams notice did NOT deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.
The claims notice appears to have done its job, i.e., flagging that a mark existed in the TMCH, causing the registrant to assess whether their use appeared to run a risk of infringement and, since John refers to them as registrants, then concluded “no” and proceeded.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/>
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From: Kathy Kleiman [mailto:kathy@kathykleiman.com <mailto:kathy@kathykleiman.com>] Sent: Wednesday, February 08, 2017 11:36 AM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech); massimo@origin-gi.com <mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] [renamed] Geographic indications
Tx you for all the responses. Geographic indications, geographic indicators and geographic names all seem to be subject to range of uses - both ordinary definitions and terms of art. I think the larger point is that people are putting into the TMCH Database geographic terms that may have wide-ranging ramifications - including becoming part of block lists. We now have some evidence of actual cases and uses. I look forward to exploring the ramifications, impacts, and perhaps unintended consequences, with the Working Group. Best, Kathy
On 2/8/2017 11:58 AM, trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> wrote: Kathy,
I would note that at least for the first 3 marks listed below, they are not being used as geographic indicators. Rather, they are registered in connection with the following goods/services:
Class 09: Apparatus for recording, transmission or reproduction of sound, images or data; Data carriers of all types with and without data; Software; Electronic publications [downloadable]; Data processing equipment; Computer
class 35: Advertising; Online advertising in a computer network; Publication of printed products [also in electronic form] for advertising purposes; Presentation of companies on the Internet and other media; Mediation of trade and economic contacts, also via the Internet; Public relations [public relations]; Managing directors; Business administration; Office work; Compilation, updating and maintenance of data in computer databases; Systematization of data in computer databases; Collecting and arranging of topic-referred press articles
Class 38: Providing access to computer programs on data networks; Providing access to information on the Internet, in particular via smartphones; Providing access to server services on the Internet; Providing Internet chatrooms; Providing online conversation folders and electronic mailboxes for transferring messages between users to software applications; Providing portals on the Internet; Computer support, namely providing access to software program versions via websites, by e-mail, telephone and other terminals suitable for telecommunications as support services for troubleshooting; Wireless electronic transmission of data, documents, information, messages and software applications; Electronic transmission and streaming of digital content to third parties via worldwide and local computer networks; E-mail services; Message and image transmission by computer; Telecommunications, in particular telecommunications via platforms and portals on the Internet; Providing access to databases; Forwarding all kinds of Internet addresses [Web messaging]
As discussed any times before, a dictionary word or name of a place can have a different meaning depending on the context. In some contexts the word can have source indicative (i.e., trademark) meaning when used in connection with goods or services unrelated to the word. In other contexts, the word can have generic or descriptive meaning. For example, APPLE has source indicating/trademark meaning when used in connection with computers and devices, but generic or descriptive meaning when used in connection with apples. Similarly, “Rome” could be used as a geographic indicator to refer to the city in Italy in one context or have source indicating/trademark meaning in another, such as ROME Furntiture.
Furthermore, since the example below says “registrants”, presumably the clams notice did deter them from registering the names, which it should not have if they are making a fair or descriptive use of the names.
Best regards,
Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com <http://www.gtlaw.com/>
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From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Kathy Kleiman Sent: Wednesday, February 08, 2017 10:24 AM To: massimo@origin-gi.com <mailto:massimo@origin-gi.com>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] [renamed] Geographic indications
Massimo, Tx you for posting information about Geographic Indications. Others responded privately to share that they see geographic terms and indicators in the TMCH Database - some of which are coming from design/style/figurative marks (linking TMCH charter questions 7 and 8). Specifically, John Berryhill shares that registrants he works with have received TM Claims Notices for: - Munich ---https://register.dpma.de/DPMAregister/marke/register/3020130626206/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Muenchen ---https://register.dpma.de/DPMAregister/marke/register/3020130626192/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Munchen ---https://register.dpma.de/DPMAregister/marke/register/3020130626214/DE <https://urldefense.proofpoint.com/v2/url?u=https-3A__register.dpma.de_DPMAre...> - Tahiti - French trademark - Ireland -- UK trademark He notes that the registrants were using the domain names in geographically descriptive ways. Best, Kathy
On 2/7/2017 11:04 AM, Massimo wrote: Dear Mary,
I am not sure I understand the answer provided to question 8 on Geographical Indications: As of January 2017, no registry operator has pursued the option of including marks within the category of “"Other marks that constitute intellectual property and meet a registry's individual requirements".
I am aware of at least one case where a Geographical Indication has been submitted under TMCH guidelines 2.4.1 and accepted as Geographical Indication. It might well be the only case. But, again, I am not sure I understand the answer provided to question 8.
Best,
Massimo
Mr Massimo Vittori Managing Director – oriGIn 1, rue de Varembé 1202, Geneva, Switzerland Telephone: +41 (0) 22 755 07 32 E-mail: massimo@origin-gi.com <mailto:massimo@origin-gi.com> www.origin-gi.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.origin-2Dgi.com_&d=D...>
<image002.gif> <https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_oriGInNetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=D7JUzwo16Grttso_xdatdcOlMw-RVi1llNSBNBgCU7s&e=><image003.gif> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.linkedin.com_company_origin-2Dthe-2Dorganization-2Dfor-2Dan-2Dinternational-2Dgeographical-2Dindications-2Dnetwork&d=DwMDaQ&c=2s2mvbfY0UoSKkl6_Ol9wg&r=L7MB7eHT-UoCXD4iA3c7Sm3JrKXt7T1dG3NjBzCxm1c&m=mOjUqh2jGqkyLM0GsTBemiVvTUIIrhE1cnR-JgjohS0&s=wE-oecDH9ftFNyabffW1Hbo_3tFQl4kbMuDhIRvF-s4&e=><image004.jpg> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.youtube.com_user_or...>
CONFIDENTIALITY NOTICE: The contents of this e-mail message and any attachments are confidential and are intended solely for addressee. The information may also be legally privileged. This transmission is sent in trust, for the sole purpose of delivery to the intended recipient. If you have received this transmission in error, any use, reproduction or dissemination of this transmission is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply e-mail or phone and delete this message and its attachments, if any.
From: gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of Mary Wong Sent: 06 February 2017 15:50 To: gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Second table summarizing TMCH Charter questions, relevant input and potential follow up
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@icann.org <mailto:mary.wong@icann.org>> Date: Thursday, February 2, 2017 at 18:18 To: "gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@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 <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-...>.
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%20Respo... <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_dow...>.
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong@icann.org <mailto:mary.wong@icann.org> Telephone: +1-603-5744889
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participants (10)
-
Beckham, Brian -
Greg Shatan -
J. Scott Evans -
Kathy Kleiman -
Mary Wong -
Massimo -
Paul Keating -
Reg Levy -
trachtenbergm＠gtlaw.com -
Winterfeldt, Brian J.