*AGB TMCH (4 June 2012)* 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings My understanding is those drafting the AGB TMCH policies wished to have a catch all for marks excluded from 3.2.1, 3.2.2 & 3.2.3 which could be tailored to individual registry operators requirements. The original wording has not been changed in any way. I agree with you it is very wide open it could include unregistered marks for example, but I believe this is as was intended by those drafting the original clauses to afford registry operators as much local flexibility as possible. On Thu, Jul 30, 2020 at 12:55 PM Paul Keating <paul@law.es> wrote:

Paul,

I am still confused about the application of 3.2.4 and my confusion continues with the addition of 3.2.9.

Can someone please explain the following:

1. Reason for having 3.2.4 at all? 2. Reason for the “ancillary database”

Many thanks,

Paul Keating

*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Tattersfield <gpmgroup@gmail.com> *Date: *Thursday, July 30, 2020 at 1:24 PM *To: *gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject: *Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals

Hi All, Please see below improved wording for 3.2.7 bringing together GAC advice and Mary’s / Staff observations and new clauses 3.2.8 & 3.2.9 clarifying working group member’s policy intentions. Best regards, Paul

3.2.7 Word marks here include service marks, collective marks, certification marks and word marks protected by statute or treaty.

3.2.8 Sunrise and Claims services available through the TMCH are limited only to word marks under sections 3.2.1, 3.2.2 and 3.2.3 (as further limited by sections 3.2.5 and 3.2.6).

3.2.9 Nothing in section 3.2 shall exclude the TMCH provider and registry operators from offering additional voluntary services to mark holders (e.g. via ancillary databases). Marks under section 3.2.4 must be held in an ancillary database.

*Implementation of Consensus Policy for the Protection of Red Cross & Red Crescent Identifiers* https://www.icann.org/news/announcement-2020-02-18-en

Thanks Paul Getting back to 3.2.4, I have not seen any examples where a mark would be appropriately included (outside of an “ancillary database”) under 3.2.4 but having not qualified under 3.2.1, 3.2.2 or 3.2.3. My suggestion is to therefore limit 3.2.4 so it only applies as to possible inclusion in the ancillary database. Sent from my iPhone On 30 Jul 2020, at 14:31, Paul Tattersfield <gpmgroup@gmail.com> wrote:  AGB TMCH (4 June 2012) 1.4 Trademark Clearinghouse Service Provider may provide ancillary services, as long as those services and any data used for those services are kept separate from the Clearinghouse database. 4.1 All mark holders seeking to have their marks included in the Clearinghouse will have to consent to the use of their information by the Clearinghouse. However, such consent would extend only to use in connection with the stated purpose of the Trademark Clearinghouse Database for Sunrise or Trademark Claims services. The reason for such a provision would be to presently prevent the Clearinghouse from using the data in other ways without permission. There shall be no bar on the Trademark Clearinghouse Service Provider or other third party service providers providing ancillary services on a non-exclusive basis. On Thu, Jul 30, 2020 at 1:17 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: AGB TMCH (4 June 2012) 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings My understanding is those drafting the AGB TMCH policies wished to have a catch all for marks excluded from 3.2.1, 3.2.2 & 3.2.3 which could be tailored to individual registry operators requirements. The original wording has not been changed in any way. I agree with you it is very wide open it could include unregistered marks for example, but I believe this is as was intended by those drafting the original clauses to afford registry operators as much local flexibility as possible. On Thu, Jul 30, 2020 at 12:55 PM Paul Keating <paul@law.es<mailto:paul@law.es>> wrote: Paul, I am still confused about the application of 3.2.4 and my confusion continues with the addition of 3.2.9. Can someone please explain the following: 1. Reason for having 3.2.4 at all? 2. Reason for the “ancillary database” Many thanks, Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Date: Thursday, July 30, 2020 at 1:24 PM To: gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals Hi All, Please see below improved wording for 3.2.7 bringing together GAC advice and Mary’s / Staff observations and new clauses 3.2.8 & 3.2.9 clarifying working group member’s policy intentions. Best regards, Paul 3.2.7 Word marks here include service marks, collective marks, certification marks and word marks protected by statute or treaty. 3.2.8 Sunrise and Claims services available through the TMCH are limited only to word marks under sections 3.2.1, 3.2.2 and 3.2.3 (as further limited by sections 3.2.5 and 3.2.6). 3.2.9 Nothing in section 3.2 shall exclude the TMCH provider and registry operators from offering additional voluntary services to mark holders (e.g. via ancillary databases). Marks under section 3.2.4 must be held in an ancillary database. Implementation of Consensus Policy for the Protection of Red Cross & Red Crescent Identifiers https://www.icann.org/news/announcement-2020-02-18-en

Hi Phil, Please see below the proposed wording to bring Rebecca's and Claudio's proposals #4 & #5 together to reach consensus. We may also need some policy principles on who has ultimate authority in the extremely unlikely event the TMCH refuses to accept a mark that is within policy. But overarching questions on ultimate authority are likely best served elsewhere. Best regards, Paul 3.2 The standards for inclusion in the Clearinghouse are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks and indications that constitute intellectual property. 3.2.5 Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings. 3.2.6 Protections afforded to word marks protected by statute or treaty do not extend to geographical indications and other quality schemes unless they also satisfy 3.2.1 or 3.2.2 3.2.7 Word marks here include service marks, collective marks, certification marks and word marks protected by statute or treaty. 3.2.8 Sunrise and Claims services available through the TMCH are limited only to word marks under sections 3.2.1, 3.2.2 and 3.2.3 (as further limited by sections 3.2.5 and 3.2.6). 3.2.9 Nothing in section 3.2 shall exclude the TMCH provider and registry operators from offering additional voluntary services to mark holders (e.g. via ancillary databases). Any marks admitted pursuant to section 3.2.4 which do not also qualify for submission under sections 3.2.1, 3.2.2 or 3.2.3 shall be held only in an ancillary database. On Thu, Jul 30, 2020 at 4:16 PM Corwin, Philip <pcorwin@verisign.com> wrote:

Can you please share the full text of the proposal from you, Rebecca and Claudio that we will be discussing today?

Thanks

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

*"Luck is the residue of design" -- Branch Rickey*

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> * On Behalf Of *Paul Tattersfield *Sent:* Thursday, July 30, 2020 7:22 AM *To:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Simplified language to bring together individual TMCH #4 & #5 proposals

Hi All, Please see below improved wording for 3.2.7 bringing together GAC advice and Mary’s / Staff observations and new clauses 3.2.8 & 3.2.9 clarifying working group member’s policy intentions. Best regards, Paul

3.2.7 Word marks here include service marks, collective marks, certification marks and word marks protected by statute or treaty.

3.2.8 Sunrise and Claims services available through the TMCH are limited only to word marks under sections 3.2.1, 3.2.2 and 3.2.3 (as further limited by sections 3.2.5 and 3.2.6).

3.2.9 Nothing in section 3.2 shall exclude the TMCH provider and registry operators from offering additional voluntary services to mark holders (e.g. via ancillary databases). Marks under section 3.2.4 must be held in an ancillary database.

*Implementation of Consensus Policy for the Protection of Red Cross & Red Crescent Identifiers* https://www.icann.org/news/announcement-2020-02-18-en <https://secure-web.cisco.com/1ndqdFZScX6xY3wAJjo75d47lU0adf8bKhc04Yg5ShCoAe5...>