Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan * Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel
Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan * Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel
Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it. In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s). Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal. By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought). In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan * Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel 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.
Hi Brian, Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment. Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks. Thanks, Jason From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it. In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s). Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal. By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought). In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan * Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel 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.
Are there any examples of where a composite or figurative mark has been used in either Sunrise or Claims or is it just that Deloitte are accepting them in to the TMCH? Thanks Paul On Wed, Sep 18, 2019 at 3:51 AM Jason Schaeffer <jason@esqwire.com> wrote:
Hi Brian,
Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment.
Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks.
Thanks,
Jason
*From:* GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *BECKHAM, Brian *Sent:* Tuesday, September 17, 2019 9:28 AM *To:* Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it.
In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s).
Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal.
By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought).
In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)?
Brian
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Zak Muscovitch *Sent:* Tuesday, September 17, 2019 5:23 AM *To:* Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear WG members, staff and co-chairs,
Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri... ).
Yours truly,
Zak Muscovitch
ICA General Counsel
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Saturday, September 14, 2019 at 1:04 AM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear RPM WG members,
Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC.
For ease of reference, here are the actions from the meeting on 11 September:
*Actions:* WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri... .
Proposed Agenda:
1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): - *Question 7 – Finalize Discussion on* *Original and **Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan* - *Question 8 –* *Finalize Discussion on* *Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi* 3. AOB
Best Regards,
Mary, Julie, Ariel
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 _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Hi Paul, Speaking personally here, to try to get back into these discussions, a few weeks ago I tried to go through some of the blogs that were mentioned on this WG email list, and the stories I ran across concerning claimed Sunrise abuses generally did not make reference to the type of mark (composite, figurative, stylized, design, word+design, or otherwise). Two quick examples: · https://domainnamewire.com/2014/01/30/the-numbers-are-in-donuts-sunrises-typ... · https://www.thedomains.com/2015/05/28/trademark-game-playing-results-in-grea... Brian From: Paul Tattersfield <gpmgroup@gmail.com> Sent: Wednesday, September 18, 2019 9:54 AM To: Jason Schaeffer <jason@esqwire.com> Cc: BECKHAM, Brian <brian.beckham@wipo.int>; Zak Muscovitch <zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Are there any examples of where a composite or figurative mark has been used in either Sunrise or Claims or is it just that Deloitte are accepting them in to the TMCH? Thanks Paul On Wed, Sep 18, 2019 at 3:51 AM Jason Schaeffer <jason@esqwire.com<mailto:jason@esqwire.com>> wrote: Hi Brian, Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment. Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks. Thanks, Jason From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it. In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s). Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal. By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought). In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan * Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 1. AOB Best Regards, Mary, Julie, Ariel 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://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Thanks Brian for the articles and their examples. It may be all the examples in the article are supported by word marks and it is simply the Sunrise use test is being gamed or insufficient in all those examples? Which would be a separate issue, if so then as one of the articles suggests a pragmatic way to prevent any bulk use test gaming would be restrictions on the transfer of sunrise names, simply because of the cost and complexities associated with genuine multiple site development business models. What I would like to know is if there are any specific examples where a composite or figurative mark had been successfully used in Sunrise or Claims? On Wed, Sep 18, 2019 at 10:53 AM BECKHAM, Brian <brian.beckham@wipo.int> wrote:
Hi Paul,
Speaking personally here, to try to get back into these discussions, a few weeks ago I tried to go through some of the blogs that were mentioned on this WG email list, and the stories I ran across concerning claimed Sunrise abuses generally did not make reference to the type of mark (composite, figurative, stylized, design, word+design, or otherwise).
Two quick examples:
· https://domainnamewire.com/2014/01/30/the-numbers-are-in-donuts-sunrises-typ...
· https://www.thedomains.com/2015/05/28/trademark-game-playing-results-in-grea...
Brian
*From:* Paul Tattersfield <gpmgroup@gmail.com> *Sent:* Wednesday, September 18, 2019 9:54 AM *To:* Jason Schaeffer <jason@esqwire.com> *Cc:* BECKHAM, Brian <brian.beckham@wipo.int>; Zak Muscovitch < zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Are there any examples of where a composite or figurative mark has been used in either Sunrise or Claims or is it just that Deloitte are accepting them in to the TMCH? Thanks Paul
On Wed, Sep 18, 2019 at 3:51 AM Jason Schaeffer <jason@esqwire.com> wrote:
Hi Brian,
Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment.
Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks.
Thanks,
Jason
*From:* GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *BECKHAM, Brian *Sent:* Tuesday, September 17, 2019 9:28 AM *To:* Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it.
In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s).
Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal.
By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought).
In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)?
Brian
*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Zak Muscovitch *Sent:* Tuesday, September 17, 2019 5:23 AM *To:* Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear WG members, staff and co-chairs,
Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri... ).
Yours truly,
Zak Muscovitch
ICA General Counsel
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> *Date: *Saturday, September 14, 2019 at 1:04 AM *To: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> *Subject: *[GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear RPM WG members,
Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC.
For ease of reference, here are the actions from the meeting on 11 September:
*Actions:* WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri... .
Proposed Agenda:
1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references):
- *Question 7 – Finalize Discussion on* *Original and **Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan* - *Question 8 –* *Finalize Discussion on* *Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi*
1. AOB
Best Regards,
Mary, Julie, Ariel
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 _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Hi, I think this line of inquiry is wrongheaded. We cannot approach this as specifically aiming to correct the problematic uses of the TMCH that have taken place for the simple reason that we have no idea what's in the TMCH or how it's been used. This, as I and others have repeatedly noted, is hugely problematic to an honest inquiry about how the system is working. Other folks disagree. But regardless, your inquiry, as it's framed, is set up to fail because the data has been kept secret. It's a fool's errand to try and limit solutions to the problems as they've manifested without knowing how they've actually manifested. In the absence of accurate information as to how the database is actually being abused, we have to target the potential for abuse, and cases where a trademark's inclusion and/or application in a text only medium (the domain name space) would be inappropriate or inconsistent with the spirit of trademark law. Best, Michael On Wed, Sep 18, 2019 at 3:54 AM Paul Tattersfield <gpmgroup@gmail.com> wrote:
Are there any examples of where a composite or figurative mark has been used in either Sunrise or Claims or is it just that Deloitte are accepting them in to the TMCH? Thanks Paul
On Wed, Sep 18, 2019 at 3:51 AM Jason Schaeffer <jason@esqwire.com> wrote:
Hi Brian,
Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment.
Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks.
Thanks,
Jason
From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it.
In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s).
Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal.
By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought).
In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)?
Brian
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear WG members, staff and co-chairs,
Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...).
Yours truly,
Zak Muscovitch
ICA General Counsel
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear RPM WG members,
Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC.
For ease of reference, here are the actions from the meeting on 11 September:
Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri....
Proposed Agenda:
Review Agenda and Updates to Statements of Interest Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references):
Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi
AOB
Best Regards,
Mary, Julie, Ariel
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 _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
_______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
It is my understanding that Deloitte has been accepting them and the rules dealing with the TMCH say they should be excluded. Correct me if my understanding is not correct. Sent from my iPhone
On 18 Sep 2019, at 09:55, Paul Tattersfield <gpmgroup@gmail.com> wrote:
Are there any examples of where a composite or figurative mark has been used in either Sunrise or Claims or is it just that Deloitte are accepting them in to the TMCH? Thanks Paul
On Wed, Sep 18, 2019 at 3:51 AM Jason Schaeffer <jason@esqwire.com> wrote: Hi Brian,
Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment.
Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks.
Thanks,
Jason
From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it.
In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s).
Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal.
By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought).
In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)?
Brian
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear WG members, staff and co-chairs,
Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...).
Yours truly,
Zak Muscovitch
ICA General Counsel
From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear RPM WG members,
Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC.
For ease of reference, here are the actions from the meeting on 11 September:
Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri....
Proposed Agenda:
Review Agenda and Updates to Statements of Interest Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi AOB
Best Regards,
Mary, Julie, Ariel
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 _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Thanks Jason, In advance of today’s call, an observation: on the one hand it seems we are at a bit of a crossroads (both the “original Kleiman/Muscovitch” proposal, and the “Muscovitch revised-compromise proposal” were rejected by a substantial number of WG members), and on the other hand, I wonder if there may be yet some room for agreement. In that respect, I would note the following as possible areas of convergence: 1) the “core” of the (revised) Kleiman/Muscovitch and Shatan proposals From the (revised) Kleiman/Muscovitch proposal<https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...>: “If the applicant has a trademark registration in a national system that does not differentiate between word marks and other marks (e.g., stylized, design plus, and figurative marks), they could submit evidence, such as information from a national registry about its classifications, to show that the trademark registration confers rights over the words claimed as such, not limited to words + other elements” From the Shatan proposal<https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...>: “The Trademark Clearinghouse should not accept for inclusion marks where all textual elements are disclaimed and as such are only protectable as part of the entire composite mark including its non-textual elements” Especially for purposes of today’s call, I wonder if you and WG members might give some consideration to whether the Shatan proposal shares the same foundational principle as the (revised) Kleiman/Muscovitch proposal. If so, perhaps so as to have an agreed principle for purposes of our Initial Report, proponents of the (revised) Kleiman/Muscovitch proposal could agree to the Shatan proposal (even if they feel it should go further in certain respects)? 2) clarity on text/non-standard character marks Separately, it seems clear that some degree of definition on text/non-standard character marks (we have also seen the terms: composite, figurative, stylized, design, word+design, etc., used) would be useful – at least I do not recall anyone objecting to this suggestion. I look forward to your presentation today, and wonder if we might still find some agreement! Brian From: Jason Schaeffer <jason@esqwire.com> Sent: Wednesday, September 18, 2019 4:39 AM To: BECKHAM, Brian <brian.beckham@wipo.int>; Zak Muscovitch <zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment. Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks. Thanks, Jason From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it. In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s). Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal. By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought). In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan * Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel 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.
Hi Brian, Respectfully, when Phil surveyed our community for support, both proposals - the Shatan *and *the Muskovitch/Kleiman Proposal -- had considerable support. One had deeper support (within one SG). One had broader support, across a range of SGs and members, including commercial, noncommercial, registries and academics. Both certainly met the standard of support that we have used in other settings -- and we have moved proposals with far less support out for public comment. That said, if there is an interim way that we can navigate on this call, great! If there is a way to stop the Deloitte from extracting ordinary words and letters from composite marks and entering them into the TMCH, that seems to a joint and shared goal. Quick recollection: we know from questionnaires of the WG that TMCH/Deloitte's policy is to pull ordinary words from composite marks (figurative, stylized, design, word+design marks -- various terms used by our various members). We also know from the Analysis Group that the TMCH database includes some of the most common dictionary terms and generic terms such as love, hotel and one. However, I hear what you are saying -- and wonder with you how can we protect current brand owners and future brand owners (noting that future brand owners are likely to use many ordinary and dictionary words in their names)? Resolution of this design mark issue -- and its questions -- is key. Best, Kathy On 9/18/2019 9:44 AM, BECKHAM, Brian wrote:
Thanks Jason,
In advance of today’s call, an observation: on the one hand it seems we are at a bit of a crossroads (both the “original Kleiman/Muscovitch” proposal, and the “Muscovitch revised-compromise proposal” were rejected by a substantial number of WG members), and on the other hand, I wonder if there may be yet some room for agreement. In that respect, I would note the following as possible areas of convergence:
1) the “core” of the (revised) Kleiman/Muscovitch and Shatan proposals
*_From the (revised) Kleiman/Muscovitch proposal <https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG?preview=/117604906/117605391/Kleiman%20Muscovitch%20Proposal%20Compare%20Doc.pdf>_**:* “If the applicant has a trademark registration in a national system that does not differentiate between word marks and other marks (e.g., stylized, design plus, and figurative marks), they could submit evidence, such as information from a national registry about its classifications, to show that the trademark registration confers rights over the words claimed as such, not limited to words + other elements”
*_From the Shatan proposal <https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG?preview=/117604906/117605390/Open%20TMCH%20Charter%20Questions%20-%2027%20Aug%202019.pdf>_**: *“The Trademark Clearinghouse should not accept for inclusion marks where all textual elements are disclaimed and as such are only protectable as part of the entire composite mark including its non-textual elements”
Especially for purposes of today’s call, I wonder if you and WG members might give some consideration to whether the Shatan proposal shares the same foundational principle as the (revised) Kleiman/Muscovitch proposal.
If so, perhaps so as to have an agreed principle for purposes of our Initial Report, proponents of the (revised) Kleiman/Muscovitch proposal could agree to the Shatan proposal (even if they feel it should go further in certain respects)?
2) clarity on text/non-standard character marks
Separately, it seems clear that some degree of definition on text/non-standard character marks (we have also seen the terms: composite, figurative, stylized, design, word+design, etc., used) would be useful – at least I do not recall anyone objecting to this suggestion.
I look forward to your presentation today, and wonder if we might still find some agreement!
Brian
*From:*Jason Schaeffer <jason@esqwire.com> *Sent:* Wednesday, September 18, 2019 4:39 AM *To:* BECKHAM, Brian <brian.beckham@wipo.int>; Zak Muscovitch <zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org *Subject:* RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Hi Brian,
Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment.
Kindly refer to the “original” September 4^th proposal (attached) to address the topic of the TMCH and word marks v. design marks.
Thanks,
Jason
*From:*GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *BECKHAM, Brian *Sent:* Tuesday, September 17, 2019 9:28 AM *To:* Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it.
In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s).
Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal.
By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought).
In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)?
Brian
*From:*GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> *On Behalf Of *Zak Muscovitch *Sent:* Tuesday, September 17, 2019 5:23 AM *To:* Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear WG members, staff and co-chairs,
Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...).
Yours truly,
Zak Muscovitch
ICA General Counsel
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>> *Date: *Saturday, September 14, 2019 at 1:04 AM *To: *"gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject: *[GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear RPM WG members,
Please find the proposed agenda and materials for the WG meeting on Wednesday, 18September at 17:00-18:30 UTC.
For ease of reference, here are the actions from the meeting on 11September:
**
*Actions:* WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri....
Proposed Agenda:
1. Review Agenda and Updates to Statements of Interest 2. Determine Support forand finalize discussion onproposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): * *Question 7 – Finalize Discussion on**Original and **Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan* * *Question 8 –**Finalize Discussion on* *Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi* 3. AOB
Best Regards,
Mary, Julie, Ariel
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.
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Brian, I second the point of submitting both for public comment and for the reasons noted by Kathy below. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Kathy Kleiman <kathy@kathykleiman.com> Date: Wednesday, September 18, 2019 at 4:19 PM To: <gnso-rpm-wg@icann.org>, "BECKHAM, Brian" <brian.beckham@wipo.int> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Respectfully, when Phil surveyed our community for support, both proposals - the Shatan and the Muskovitch/Kleiman Proposal -- had considerable support. One had deeper support (within one SG). One had broader support, across a range of SGs and members, including commercial, noncommercial, registries and academics. Both certainly met the standard of support that we have used in other settings -- and we have moved proposals with far less support out for public comment. That said, if there is an interim way that we can navigate on this call, great! If there is a way to stop the Deloitte from extracting ordinary words and letters from composite marks and entering them into the TMCH, that seems to a joint and shared goal. Quick recollection: we know from questionnaires of the WG that TMCH/Deloitte's policy is to pull ordinary words from composite marks (figurative, stylized, design, word+design marks -- various terms used by our various members). We also know from the Analysis Group that the TMCH database includes some of the most common dictionary terms and generic terms such as love, hotel and one. However, I hear what you are saying -- and wonder with you how can we protect current brand owners and future brand owners (noting that future brand owners are likely to use many ordinary and dictionary words in their names)? Resolution of this design mark issue -- and its questions -- is key. Best, Kathy On 9/18/2019 9:44 AM, BECKHAM, Brian wrote: Thanks Jason, In advance of today’s call, an observation: on the one hand it seems we are at a bit of a crossroads (both the “original Kleiman/Muscovitch” proposal, and the “Muscovitch revised-compromise proposal” were rejected by a substantial number of WG members), and on the other hand, I wonder if there may be yet some room for agreement. In that respect, I would note the following as possible areas of convergence: 1) the “core” of the (revised) Kleiman/Muscovitch and Shatan proposals
From the (revised) Kleiman/Muscovitch proposal: “If the applicant has a trademark registration in a national system that does not differentiate between word marks and other marks (e.g., stylized, design plus, and figurative marks), they could submit evidence, such as information from a national registry about its classifications, to show that the trademark registration confers rights over the words claimed as such, not limited to words + other elements”
From the Shatan proposal: “The Trademark Clearinghouse should not accept for inclusion marks where all textual elements are disclaimed and as such are only protectable as part of the entire composite mark including its non-textual elements”
Especially for purposes of today’s call, I wonder if you and WG members might give some consideration to whether the Shatan proposal shares the same foundational principle as the (revised) Kleiman/Muscovitch proposal. If so, perhaps so as to have an agreed principle for purposes of our Initial Report, proponents of the (revised) Kleiman/Muscovitch proposal could agree to the Shatan proposal (even if they feel it should go further in certain respects)? 2) clarity on text/non-standard character marks Separately, it seems clear that some degree of definition on text/non-standard character marks (we have also seen the terms: composite, figurative, stylized, design, word+design, etc., used) would be useful – at least I do not recall anyone objecting to this suggestion. I look forward to your presentation today, and wonder if we might still find some agreement! Brian From: Jason Schaeffer <jason@esqwire.com> Sent: Wednesday, September 18, 2019 4:39 AM To: BECKHAM, Brian <brian.beckham@wipo.int>; Zak Muscovitch <zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment. Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks. Thanks, Jason From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it. In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s). Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal. By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought). In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): · Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan · Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel 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 _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Thanks Paul, And apologies Kathy if it was unclear that when I mentioned support, given the context of Zak withdrawing his proposal based on lack of WG uptake, I was referring to the support designation we had previously agreed for purposes of including a recommendation, and not a proposal. Clearly both proposals make the cut for purposes of soliciting comment/feedback. (Paul, hopefully this answers the comment in your second email.) Brian From: Paul Keating <Paul@law.es> Sent: Wednesday, September 18, 2019 4:45 PM To: Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org; BECKHAM, Brian <brian.beckham@wipo.int> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Brian, I second the point of submitting both for public comment and for the reasons noted by Kathy below. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Date: Wednesday, September 18, 2019 at 4:19 PM To: <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>>, "BECKHAM, Brian" <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Respectfully, when Phil surveyed our community for support, both proposals - the Shatan and the Muskovitch/Kleiman Proposal -- had considerable support. One had deeper support (within one SG). One had broader support, across a range of SGs and members, including commercial, noncommercial, registries and academics. Both certainly met the standard of support that we have used in other settings -- and we have moved proposals with far less support out for public comment. That said, if there is an interim way that we can navigate on this call, great! If there is a way to stop the Deloitte from extracting ordinary words and letters from composite marks and entering them into the TMCH, that seems to a joint and shared goal. Quick recollection: we know from questionnaires of the WG that TMCH/Deloitte's policy is to pull ordinary words from composite marks (figurative, stylized, design, word+design marks -- various terms used by our various members). We also know from the Analysis Group that the TMCH database includes some of the most common dictionary terms and generic terms such as love, hotel and one. However, I hear what you are saying -- and wonder with you how can we protect current brand owners and future brand owners (noting that future brand owners are likely to use many ordinary and dictionary words in their names)? Resolution of this design mark issue -- and its questions -- is key. Best, Kathy On 9/18/2019 9:44 AM, BECKHAM, Brian wrote: Thanks Jason, In advance of today’s call, an observation: on the one hand it seems we are at a bit of a crossroads (both the “original Kleiman/Muscovitch” proposal, and the “Muscovitch revised-compromise proposal” were rejected by a substantial number of WG members), and on the other hand, I wonder if there may be yet some room for agreement. In that respect, I would note the following as possible areas of convergence: 1) the “core” of the (revised) Kleiman/Muscovitch and Shatan proposals From the (revised) Kleiman/Muscovitch proposal<https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...>: “If the applicant has a trademark registration in a national system that does not differentiate between word marks and other marks (e.g., stylized, design plus, and figurative marks), they could submit evidence, such as information from a national registry about its classifications, to show that the trademark registration confers rights over the words claimed as such, not limited to words + other elements” From the Shatan proposal<https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...>: “The Trademark Clearinghouse should not accept for inclusion marks where all textual elements are disclaimed and as such are only protectable as part of the entire composite mark including its non-textual elements” Especially for purposes of today’s call, I wonder if you and WG members might give some consideration to whether the Shatan proposal shares the same foundational principle as the (revised) Kleiman/Muscovitch proposal. If so, perhaps so as to have an agreed principle for purposes of our Initial Report, proponents of the (revised) Kleiman/Muscovitch proposal could agree to the Shatan proposal (even if they feel it should go further in certain respects)? 2) clarity on text/non-standard character marks Separately, it seems clear that some degree of definition on text/non-standard character marks (we have also seen the terms: composite, figurative, stylized, design, word+design, etc., used) would be useful – at least I do not recall anyone objecting to this suggestion. I look forward to your presentation today, and wonder if we might still find some agreement! Brian From: Jason Schaeffer <jason@esqwire.com><mailto:jason@esqwire.com> Sent: Wednesday, September 18, 2019 4:39 AM To: BECKHAM, Brian <brian.beckham@wipo.int><mailto:brian.beckham@wipo.int>; Zak Muscovitch <zak@muscovitch.com><mailto:zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org><mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment. Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks. Thanks, Jason From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it. In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s). Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal. By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought). In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>>; gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org<mailto:julie.hedlund@icann.org>> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): · Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan · Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel 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://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ 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 _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Yes it does thank you Brian. From: "BECKHAM, Brian" <brian.beckham@wipo.int> Date: Wednesday, September 18, 2019 at 4:51 PM To: Paul Keating <Paul@law.es>, Kathy Kleiman <kathy@kathykleiman.com>, "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Thanks Paul, And apologies Kathy if it was unclear that when I mentioned support, given the context of Zak withdrawing his proposal based on lack of WG uptake, I was referring to the support designation we had previously agreed for purposes of including a recommendation, and not a proposal. Clearly both proposals make the cut for purposes of soliciting comment/feedback. (Paul, hopefully this answers the comment in your second email.) Brian From: Paul Keating <Paul@law.es> Sent: Wednesday, September 18, 2019 4:45 PM To: Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org; BECKHAM, Brian <brian.beckham@wipo.int> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Brian, I second the point of submitting both for public comment and for the reasons noted by Kathy below. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Kathy Kleiman <kathy@kathykleiman.com> Date: Wednesday, September 18, 2019 at 4:19 PM To: <gnso-rpm-wg@icann.org>, "BECKHAM, Brian" <brian.beckham@wipo.int> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Respectfully, when Phil surveyed our community for support, both proposals - the Shatan and the Muskovitch/Kleiman Proposal -- had considerable support. One had deeper support (within one SG). One had broader support, across a range of SGs and members, including commercial, noncommercial, registries and academics. Both certainly met the standard of support that we have used in other settings -- and we have moved proposals with far less support out for public comment. That said, if there is an interim way that we can navigate on this call, great! If there is a way to stop the Deloitte from extracting ordinary words and letters from composite marks and entering them into the TMCH, that seems to a joint and shared goal. Quick recollection: we know from questionnaires of the WG that TMCH/Deloitte's policy is to pull ordinary words from composite marks (figurative, stylized, design, word+design marks -- various terms used by our various members). We also know from the Analysis Group that the TMCH database includes some of the most common dictionary terms and generic terms such as love, hotel and one. However, I hear what you are saying -- and wonder with you how can we protect current brand owners and future brand owners (noting that future brand owners are likely to use many ordinary and dictionary words in their names)? Resolution of this design mark issue -- and its questions -- is key. Best, Kathy On 9/18/2019 9:44 AM, BECKHAM, Brian wrote: Thanks Jason, In advance of today’s call, an observation: on the one hand it seems we are at a bit of a crossroads (both the “original Kleiman/Muscovitch” proposal, and the “Muscovitch revised-compromise proposal” were rejected by a substantial number of WG members), and on the other hand, I wonder if there may be yet some room for agreement. In that respect, I would note the following as possible areas of convergence: 1) the “core” of the (revised) Kleiman/Muscovitch and Shatan proposals
From the (revised) Kleiman/Muscovitch proposal: “If the applicant has a trademark registration in a national system that does not differentiate between word marks and other marks (e.g., stylized, design plus, and figurative marks), they could submit evidence, such as information from a national registry about its classifications, to show that the trademark registration confers rights over the words claimed as such, not limited to words + other elements”
From the Shatan proposal: “The Trademark Clearinghouse should not accept for inclusion marks where all textual elements are disclaimed and as such are only protectable as part of the entire composite mark including its non-textual elements”
Especially for purposes of today’s call, I wonder if you and WG members might give some consideration to whether the Shatan proposal shares the same foundational principle as the (revised) Kleiman/Muscovitch proposal. If so, perhaps so as to have an agreed principle for purposes of our Initial Report, proponents of the (revised) Kleiman/Muscovitch proposal could agree to the Shatan proposal (even if they feel it should go further in certain respects)? 2) clarity on text/non-standard character marks Separately, it seems clear that some degree of definition on text/non-standard character marks (we have also seen the terms: composite, figurative, stylized, design, word+design, etc., used) would be useful – at least I do not recall anyone objecting to this suggestion. I look forward to your presentation today, and wonder if we might still find some agreement! Brian From: Jason Schaeffer <jason@esqwire.com> Sent: Wednesday, September 18, 2019 4:39 AM To: BECKHAM, Brian <brian.beckham@wipo.int>; Zak Muscovitch <zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment. Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks. Thanks, Jason From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it. In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s). Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal. By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought). In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): · Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan · Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel 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 _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Great, tx Brian, and looking forward to our discussion today! Kathy On 9/18/2019 10:51 AM, BECKHAM, Brian wrote:
Thanks Paul,
And apologies Kathy if it was unclear that when I mentioned support, given the context of Zak withdrawing his proposal based on lack of WG uptake, I was referring to the support designation we had previously agreed for purposes of including a */recommendation/*, and not a proposal.
Clearly both */proposals/* make the cut for purposes of soliciting comment/feedback. (Paul, hopefully this answers the comment in your second email.)
Brian
*From:*Paul Keating <Paul@law.es> *Sent:* Wednesday, September 18, 2019 4:45 PM *To:* Kathy Kleiman <kathy@kathykleiman.com>; gnso-rpm-wg@icann.org; BECKHAM, Brian <brian.beckham@wipo.int> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Brian,
I second the point of submitting both for public comment and for the reasons noted by Kathy below.
Paul Keating
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Kathy Kleiman <kathy@kathykleiman.com <mailto:kathy@kathykleiman.com>> *Date: *Wednesday, September 18, 2019 at 4:19 PM *To: *<gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>>, "BECKHAM, Brian" <brian.beckham@wipo.int <mailto:brian.beckham@wipo.int>> *Subject: *Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Hi Brian,
Respectfully, when Phil surveyed our community for support, both proposals - the Shatan *and *the Muskovitch/Kleiman Proposal -- had considerable support. One had deeper support (within one SG). One had broader support, across a range of SGs and members, including commercial, noncommercial, registries and academics. Both certainly met the standard of support that we have used in other settings -- and we have moved proposals with far less support out for public comment.
That said, if there is an interim way that we can navigate on this call, great! If there is a way to stop the Deloitte from extracting ordinary words and letters from composite marks and entering them into the TMCH, that seems to a joint and shared goal.
Quick recollection: we know from questionnaires of the WG that TMCH/Deloitte's policy is to pull ordinary words from composite marks (figurative, stylized, design, word+design marks -- various terms used by our various members). We also know from the Analysis Group that the TMCH database includes some of the most common dictionary terms and generic terms such as love, hotel and one.
However, I hear what you are saying -- and wonder with you how can we protect current brand owners and future brand owners (noting that future brand owners are likely to use many ordinary and dictionary words in their names)? Resolution of this design mark issue -- and its questions -- is key.
Best, Kathy
On 9/18/2019 9:44 AM, BECKHAM, Brian wrote:
Thanks Jason,
In advance of today’s call, an observation: on the one hand it seems we are at a bit of a crossroads (both the “original Kleiman/Muscovitch” proposal, and the “Muscovitch revised-compromise proposal” were rejected by a substantial number of WG members), and on the other hand, I wonder if there may be yet some room for agreement. In that respect, I would note the following as possible areas of convergence:
1) the “core” of the (revised) Kleiman/Muscovitch and Shatan proposals
*_From the (revised) Kleiman/Muscovitch proposal <https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG?preview=/117604906/117605391/Kleiman%20Muscovitch%20Proposal%20Compare%20Doc.pdf>_**:* “If the applicant has a trademark registration in a national system that does not differentiate between word marks and other marks (e.g., stylized, design plus, and figurative marks), they could submit evidence, such as information from a national registry about its classifications, to show that the trademark registration confers rights over the words claimed as such, not limited to words + other elements”
*_From the Shatan proposal <https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG?preview=/117604906/117605390/Open%20TMCH%20Charter%20Questions%20-%2027%20Aug%202019.pdf>_**: *“The Trademark Clearinghouse should not accept for inclusion marks where all textual elements are disclaimed and as such are only protectable as part of the entire composite mark including its non-textual elements”
Especially for purposes of today’s call, I wonder if you and WG members might give some consideration to whether the Shatan proposal shares the same foundational principle as the (revised) Kleiman/Muscovitch proposal.
If so, perhaps so as to have an agreed principle for purposes of our Initial Report, proponents of the (revised) Kleiman/Muscovitch proposal could agree to the Shatan proposal (even if they feel it should go further in certain respects)?
2) clarity on text/non-standard character marks
Separately, it seems clear that some degree of definition on text/non-standard character marks (we have also seen the terms: composite, figurative, stylized, design, word+design, etc., used) would be useful – at least I do not recall anyone objecting to this suggestion.
I look forward to your presentation today, and wonder if we might still find some agreement!
Brian
*From:*Jason Schaeffer <jason@esqwire.com> <mailto:jason@esqwire.com> *Sent:* Wednesday, September 18, 2019 4:39 AM *To:* BECKHAM, Brian <brian.beckham@wipo.int> <mailto:brian.beckham@wipo.int>; Zak Muscovitch <zak@muscovitch.com> <mailto:zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org> <mailto:julie.hedlund@icann.org>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Hi Brian,
Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment.
Kindly refer to the “original” September 4^th proposal (attached) to address the topic of the TMCH and word marks v. design marks.
Thanks,
Jason
*From:*GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] *On Behalf Of *BECKHAM, Brian *Sent:* Tuesday, September 17, 2019 9:28 AM *To:* Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it.
In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s).
Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal.
By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought).
In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)?
Brian
*From:*GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> *On Behalf Of *Zak Muscovitch *Sent:* Tuesday, September 17, 2019 5:23 AM *To:* Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>>; gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear WG members, staff and co-chairs,
Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...).
Yours truly,
Zak Muscovitch
ICA General Counsel
*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Julie Hedlund <julie.hedlund@icann.org <mailto:julie.hedlund@icann.org>> *Date: *Saturday, September 14, 2019 at 1:04 AM *To: *"gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> *Subject: *[GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC
Dear RPM WG members,
Please find the proposed agenda and materials for the WG meeting on Wednesday, 18September at 17:00-18:30 UTC.
For ease of reference, here are the actions from the meeting on 11September:
**
*Actions:* WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri....
Proposed Agenda:
1.Review Agenda and Updates to Statements of Interest
2.Determine Support forand finalize discussion onproposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references):
·*Question 7 – Finalize Discussion on**Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan*
·*Question 8 –**Finalize Discussion on* *Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi*
3. �� AOB
Best Regards,
Mary, Julie, Ariel
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.
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_______________________________________________ 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://mm.icann.org/mailman/listinfo/gnso-rpm-wg> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
Brian, Also, I doubt I will be able to make the call so I would appreciate your incorporating my support for both being sent for public comment during the call. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Kathy Kleiman <kathy@kathykleiman.com> Date: Wednesday, September 18, 2019 at 4:19 PM To: <gnso-rpm-wg@icann.org>, "BECKHAM, Brian" <brian.beckham@wipo.int> Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Respectfully, when Phil surveyed our community for support, both proposals - the Shatan and the Muskovitch/Kleiman Proposal -- had considerable support. One had deeper support (within one SG). One had broader support, across a range of SGs and members, including commercial, noncommercial, registries and academics. Both certainly met the standard of support that we have used in other settings -- and we have moved proposals with far less support out for public comment. That said, if there is an interim way that we can navigate on this call, great! If there is a way to stop the Deloitte from extracting ordinary words and letters from composite marks and entering them into the TMCH, that seems to a joint and shared goal. Quick recollection: we know from questionnaires of the WG that TMCH/Deloitte's policy is to pull ordinary words from composite marks (figurative, stylized, design, word+design marks -- various terms used by our various members). We also know from the Analysis Group that the TMCH database includes some of the most common dictionary terms and generic terms such as love, hotel and one. However, I hear what you are saying -- and wonder with you how can we protect current brand owners and future brand owners (noting that future brand owners are likely to use many ordinary and dictionary words in their names)? Resolution of this design mark issue -- and its questions -- is key. Best, Kathy On 9/18/2019 9:44 AM, BECKHAM, Brian wrote: Thanks Jason, In advance of today’s call, an observation: on the one hand it seems we are at a bit of a crossroads (both the “original Kleiman/Muscovitch” proposal, and the “Muscovitch revised-compromise proposal” were rejected by a substantial number of WG members), and on the other hand, I wonder if there may be yet some room for agreement. In that respect, I would note the following as possible areas of convergence: 1) the “core” of the (revised) Kleiman/Muscovitch and Shatan proposals
From the (revised) Kleiman/Muscovitch proposal: “If the applicant has a trademark registration in a national system that does not differentiate between word marks and other marks (e.g., stylized, design plus, and figurative marks), they could submit evidence, such as information from a national registry about its classifications, to show that the trademark registration confers rights over the words claimed as such, not limited to words + other elements”
From the Shatan proposal: “The Trademark Clearinghouse should not accept for inclusion marks where all textual elements are disclaimed and as such are only protectable as part of the entire composite mark including its non-textual elements”
Especially for purposes of today’s call, I wonder if you and WG members might give some consideration to whether the Shatan proposal shares the same foundational principle as the (revised) Kleiman/Muscovitch proposal. If so, perhaps so as to have an agreed principle for purposes of our Initial Report, proponents of the (revised) Kleiman/Muscovitch proposal could agree to the Shatan proposal (even if they feel it should go further in certain respects)? 2) clarity on text/non-standard character marks Separately, it seems clear that some degree of definition on text/non-standard character marks (we have also seen the terms: composite, figurative, stylized, design, word+design, etc., used) would be useful – at least I do not recall anyone objecting to this suggestion. I look forward to your presentation today, and wonder if we might still find some agreement! Brian From: Jason Schaeffer <jason@esqwire.com> Sent: Wednesday, September 18, 2019 4:39 AM To: BECKHAM, Brian <brian.beckham@wipo.int>; Zak Muscovitch <zak@muscovitch.com>; Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Hi Brian, Please note that in Zak’s absence (as he is travelling and may not be joining the call) I have been asked to present on his behalf. Although I personally believed that we were making progress on some of these points on last week’s WG call, nonetheless given the apparent lack of compromise with the IPC, you are correct that the compromise proposal has been withdrawn and the attached Kleiman/Muscovitch proposal remains for consideration and comment. Kindly refer to the “original” September 4th proposal (attached) to address the topic of the TMCH and word marks v. design marks. Thanks, Jason From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of BECKHAM, Brian Sent: Tuesday, September 17, 2019 9:28 AM To: Zak Muscovitch; Julie Hedlund; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Thanks very much Zak for this heads up that you are withdrawing your “compromise proposal” given the lack of additional interest in it. In the interests of time, and personally (while I am certain Phil and Kathy would agree), I want to say that it was encouraging to hear that you and others attempted offline to bring this together with other proposals (e.g., Greg’s). Your below withdrawal of course raises the question of where this leaves us on the earlier “Kleiman / Muscovitch” proposal, in particular given that the now-withdrawn proposal was already an attempt to garner support for a compromise on the earlier “Kleiman / Muscovitch” proposal. By way of background, as was discussed during a call with Staff and our WG liaisons (incoming and outgoing), we feel we need to recognize when there may be diverging views and that wide agreement on a compromise proposal may not be possible (in which case alternate views can be recorded, and public comments sought). In that light, have you (and Kathy) considered the possibility – even if per your below message you still support it – of also withdrawing the “Kleiman / Muscovitch” proposal in advance of the call, or do you nevertheless consider brief further discussion on that would in the circumstances still be necessary and/or useful (if only as a last attempt at compromise/to cover this off)? Brian From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Zak Muscovitch Sent: Tuesday, September 17, 2019 5:23 AM To: Julie Hedlund <julie.hedlund@icann.org>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear WG members, staff and co-chairs, Since I may not be able to attend the upcoming call this Wednesday, I want to let you know that since last week’s call, I have not become aware of any additional interest in the ‘compromise’ proposal which I had circulated and which we had discussed on last week’s call (i.e. the one that allowed ‘design marks’ into TMCH but didn’t afford Sunrise priority). Accordingly, I am withdrawing it and continue to support the first proposal, namely the ‘Kleiman / Muscovitch proposal as revised (see; https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri...). Yours truly, Zak Muscovitch ICA General Counsel From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Julie Hedlund <julie.hedlund@icann.org> Date: Saturday, September 14, 2019 at 1:04 AM To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [GNSO-RPM-WG] Proposed Agenda for RPM Meeting on 18 September 17:00-18:30 UTC Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 18 September at 17:00-18:30 UTC. For ease of reference, here are the actions from the meeting on 11 September: Actions: WG members should continue consideration and discussion of Open Charter Questions 7 and 8 (see attached documents and discussions on the list) and review the discussion from the calls on 04 and 11 September via the Zoom chat, recording, and transcript (see the posting on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-09-11+Review+of+all+Ri.... Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Determine Support for and finalize discussion on proposals relating to Open TMCH Charter Questions (see attached Summary document. It is the same as the May 2017 version but with formatting for readability and text from relevant TMCH and AGB references): · Question 7 – Finalize Discussion on Original and Revised Proposals from Kathy Kleiman/Zak Muscovitch and Greg Shatan · Question 8 – Finalize Discussion on Proposals from Paul McGrady, Kathy Kleiman, Jonathan Agmon, and Claudio di Gangi 3. AOB Best Regards, Mary, Julie, Ariel 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. 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participants (8)
-
BECKHAM, Brian -
Jason Schaeffer -
Julie Hedlund -
Kathy Kleiman -
Michael Karanicolas -
Paul Keating -
Paul Tattersfield -
Zak Muscovitch