Re: [gnso-rpm-wg] FOR ACTION: Working Group members' poll on open TMCH questions
Dear all: We wanted to quickly point out a potential issue with the survey with respect to disclaimers. The survey does not appear to distinguish between stylized and composite marks where all textual elements are disclaimed, versus the same marks where only a part of the textual elements are disclaimed. We have consistently asserted in this working group that only marks where all textual elements are disclaimed should be excluded from the Clearinghouse. Exclusion of all stylized and composite marks that include any disclaimer would undoubtedly and improperly exclude trademark registrations corresponding to numerous well-known brands. See e.g. WHOLE FOODS MARKET and Design (U.S. Reg. No. 1,557,320) for retail grocery store services, in-store restaurant services, and in-store bakery services in health foods and natural foods (no claim is made to the exclusive right to use ‘FOODS MARKET’ apart from the mark as shown). Thank you, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, June 21, 2017 11:20 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FOR ACTION: Working Group members' poll on open TMCH questions Dear all, Please be informed that the poll to assess the sense of all members of the Working Group, in relation to certain types of design marks (i.e. stylized and composite marks) and to treatment of geographical indications, is now open. Please be sure to fill in your response by 23.59 UTC on Monday 10 July: https://www.surveymonkey.com/r/WV26DQK<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.surveymonkey.com%2Fr%2FWV26DQK&data=01%7C01%7CPMarano%40mayerbrown.com%7C1644f23ca53046bdef9c08d4b91d8a76%7C09131022b7854e6d8d42916975e51262%7C0&sdata=m38nRjLnR78ZVb4LNz1KslNaNAiSMKiAJjb6r17iqhM%3D&reserved=0>. IMPORTANT NOTE: * The Working Group co-chairs, assisted by staff, have developed a Reference Guide containing relevant definitions (i.e. of “stylized marks” and “composite marks”) as well as of relevant examples. This Reference Guide is attached for your convenience, and it should be consulted as Working Group members go through the survey, which consists of 11 substantive questions and we believe ought not to take too much time to fill in. Finally, please also note – the poll should be taken only by Working Group members, and not observers. Thanks and cheers Mary __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail.
I have an overall issue with figurative marks when it comes to domain names. Seems to me that the trademark holder intentionally selected a figurative element. Understanding that domains are not figurative i remain puzzled that figurative are even included. The entire purpose of the TMCH was to provide a clear and recognizable registry. This purpose is frustrated to the extent that the underlying mark requires any form of subjective analysis. This, because figurative marks by definition require subjective analysis (what is the text aspect), logic dictates they be excluded. And even if included, While i understand the comment below, it is important that such marks be registered for exact matches only. Sent from my iPad
On 5 Jul 2017, at 17:17, Winterfeldt, Brian J. <BWinterfeldt@mayerbrown.com> wrote:
We have consistently asserted in this working group that only marks where all textual elements are disclaimed should be excluded from the Clearinghouse.
Thanks to Brian and Paul for your comments. As Brian notes, the survey does not distinguish between those marks where only part of the textual elements are disclaimed versus marks where all textual elements are disclaimed. And as Paul notes, the TMCH was not intended to require subjective analysis. We invite Brian, Paul and others with comments to include these in their responses to the survey. Thanks and cheers Mary From: <gnso-rpm-wg-bounces@icann.org> on behalf of "Winterfeldt, Brian J." <BWinterfeldt@mayerbrown.com> Date: Wednesday, July 5, 2017 at 17:17 To: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] FOR ACTION: Working Group members' poll on open TMCH questions Dear all: We wanted to quickly point out a potential issue with the survey with respect to disclaimers. The survey does not appear to distinguish between stylized and composite marks where all textual elements are disclaimed, versus the same marks where only a part of the textual elements are disclaimed. We have consistently asserted in this working group that only marks where all textual elements are disclaimed should be excluded from the Clearinghouse. Exclusion of all stylized and composite marks that include any disclaimer would undoubtedly and improperly exclude trademark registrations corresponding to numerous well-known brands. See e.g. WHOLE FOODS MARKET and Design (U.S. Reg. No. 1,557,320) for retail grocery store services, in-store restaurant services, and in-store bakery services in health foods and natural foods (no claim is made to the exclusive right to use ‘FOODS MARKET’ apart from the mark as shown). Thank you, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW Washington, DC 20006-1101 202.263.3284 direct dial 202.830.0330 fax 1221 Avenue of the Americas New York, New York 10020-1001 212.506.2345 direct dial From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, June 21, 2017 11:20 PM To: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] FOR ACTION: Working Group members' poll on open TMCH questions Dear all, Please be informed that the poll to assess the sense of all members of the Working Group, in relation to certain types of design marks (i.e. stylized and composite marks) and to treatment of geographical indications, is now open. Please be sure to fill in your response by 23.59 UTC on Monday 10 July: https://www.surveymonkey.com/r/WV26DQK[na01.safelinks.protection.outlook.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__na01.safelinks.protection.outlook.com_-3Furl-3Dhttps-253A-252F-252Fwww.surveymonkey.com-252Fr-252FWV26DQK-26data-3D01-257C01-257CPMarano-2540mayerbrown.com-257C1644f23ca53046bdef9c08d4b91d8a76-257C09131022b7854e6d8d42916975e51262-257C0-26sdata-3Dm38nRjLnR78ZVb4LNz1KslNaNAiSMKiAJjb6r17iqhM-253D-26reserved-3D0&d=DwMGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=vVN9AG_hF4exgJZyTX70Qi4q3IG0jKmSLPTfON-L5-0&s=ODpRt4qKZZkTWJapr5I4yP22ZfRElEHNzeQdrwHZdXc&e=>. IMPORTANT NOTE: * The Working Group co-chairs, assisted by staff, have developed a Reference Guide containing relevant definitions (i.e. of “stylized marks” and “composite marks”) as well as of relevant examples. This Reference Guide is attached for your convenience, and it should be consulted as Working Group members go through the survey, which consists of 11 substantive questions and we believe ought not to take too much time to fill in. Finally, please also note – the poll should be taken only by Working Group members, and not observers. Thanks and cheers Mary __________________________________________________________________________ This email and any files transmitted with it are intended solely for the use of the individual or entity to whom they are addressed. If you have received this email in error please notify the system manager. If you are not the named addressee you should not disseminate, distribute or copy this e-mail.
participants (3)
-
Mary Wong -
Paul Keating -
Winterfeldt, Brian J.