Hello Paul, Some clarity can be found in Section 3.6 of the TMCH document, which states that, for this Section 3.2.4: Data supporting entry into the Clearinghouse of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse based on the services any given registry operator chooses to provide. In that regard, our Data Gathering Sub Team had sought information from Deloitte as to how many marks had been submitted under this category. Deloitte’s answer was that no registry operator has pursued this option with the TMCH to date. As requested, staff has added a link to the Final TMCH Framework Document (as published in the final version of the Applicant Guidebook (AGB) in June 2012) to the list of TMCH resources on the Working Group wiki space (https://community.icann.org/x/0AusAw). You can also access it directly from ICANN’s microsite for the 2012 New gTLD Program, at https://newgtlds.icann.org/en/applicants/agb/trademark-clearinghouse-04jun12...). This TMCH Framework Document, as well as the full STI report on which the features of the TMCH were based (starting from AGB version 4, in 2010) and other materials showing the development of the final scope of the TMCH, has been included in a chronological tabular compilation of such materials which is currently being reviewed by the co-chairs. Thanks and cheers Mary From: Paul Keating <Paul@law.es> Date: Thursday, February 23, 2017 at 14:31 To: Mary Wong <mary.wong@icann.org>, Greg Shatan <gregshatanipc@gmail.com>, "Beckham, Brian" <brian.beckham@wipo.int> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: [Ext] Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) 3.2.4 Other marks that constitute intellectual property. I confess to not having read the document in a long time (Mary could you provide a link?). However, the above seems to include virtually any type of mark including the figurative element/design marks we have been discussing. PRK From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 23, 2017 at 8:12 PM To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>, "Beckham, Brian" <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) Hello all – in response to Brian and Greg, I’m forwarding the message below on behalf of Rebecca Tushnet, as her email does not seem to have reached the full mailing list. In addition, Working Group members may wish to review the final TMCH framework document that was published in the final version of the Applicant Guidebook (AGB) in June 2012, following previous versions that had appeared in earlier iterations (AGB v4 through 9) based on ICANN staff implementation of the STI recommendations. The final TMCH framework notes that the standards for inclusion into the TMCH are: 3.2.1 Nationally or regionally registered word marks from all jurisdictions. 3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding. 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. 3.2.4 Other marks that constitute intellectual property. Here is Rebecca’s email, in full: As I'm still having trouble posting to the list, I'd appreciate it if someone would forward this. From the Recommendations of the Special TM Issues Review Team, 2009, reflecting both the rough consensus and the business constituency minority: The TC Database should be required to include nationally or multinationally registered “text mark” trademarks, from all jurisdictions, (including countries where there is no substantive review). (The trademarks to be included in the TC are text marks because “design marks” provide protection for letters and words only within the context of their design or logo and the STI was under a mandate not to expand existing trademark rights.) Many members of this working group believe that the TMCH shouldn't make "judgment calls" limiting registrants' entitlements under the TMCH system. This is an understandable conclusion, and one I'm inclined to endorse for ease of implementation, but one that has the practical effect of expanding the ability of registrants to control domain names beyond the goods and services for which their marks are registered. At the very least, the same modesty of judgment counsels against the TMCH making judgments about what the important parts of a registered mark are, given the mandate not to expand rights. If someone does have a registration for a word mark without design elements, they can submit it. In response to Greg Shatan’s note, I’m happy to add in additional information that would help Deloitte evaluate the registration, though I doubt I want to shell out for verified copies of the registrations at issue. I have added in a question at the beginning of my list to ask for clarification of what qualifies as “prominent” in Deloitte’s inquiry. In response to Brian Winterfeldt’s specific concerns, I don’t think the issue the Working Group is concerned with is simply with “generic” terms—though given the TMCH’s coverage of domain names regardless of the underlying goods and services, the fact that PARENTS might not be generic for a magazine about parenting is not particularly significant, as our previous discussions of registrations for “and,” “the,” etc. indicate. I used “parents” because of Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993) (“[T]he district court ... properly distinguished between the strength of the trademark PARENTS and the weak, descriptive nature of what it called the ‘mere word “parents”.’ … [T]he trademark registration of the title PARENTS in its distinctive typeface did not confer an exclusive right to plaintiff on variations of the word ‘parent,’ such term being more generic than descriptive.”). I thought CARS was a strong additional suggestion because of the clear limit on Disney’s rights to the term with associated image. I added FRUIT OF THE LOOM at J. Scott’s suggestion. It seems to me that FRUIT OF THE LOOM makes a good test case precisely because of the issue Brian W. identifies: by using the graphic version we can see whether Deloitte is in fact making judgments about what’s “important” in the registration submitted to it. The question is not whether textual matter standing alone is registrable; the question is whether it is registered. My understanding is that this was an important limit on the TMCH, which by consensus does not cover common-law rights that may exist in variants on a registered mark. So this is a mark that could help us understand what Deloitte is doing. A small point about Brian W's statement that “our preliminary search did not yield a basic word mark for CARS owned by the same entity as the listed CARS design mark (Disney), this is likely because they only use the design mark in commerce and would not be able to show actual use in commerce of the basic word mark, a fundamental requirement of trademark registration in the US”: In fact, where a word mark is used only in one font or with one design, it can still be registered as a word mark (in standard character form) as long as the word standing alone is registrable. Thus, use in commerce of a stylized version of a word constitutes “use in commerce” of the associated word. The barrier to Disney’s registration of CARS as a standard character mark is assuredly not “use in commerce”; it is the more fundamental issue of whether CARS can serve as a trademark without its recognizable stylization indicating the Disney franchise. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011) (explaining the scope of a standard character mark). I think it’s a great idea to add an example of “marks where the underlying word element is expressly disclaimed in the registration.” MUSIC has been suggested, which I think is a very good example, as well as stylized letters such as A. The recently litigated OWN YOUR POWER case, where the Second Circuit noted that there was no claim to the words apart from their stylized presentation, says instead “[t]he color(s) light blue is/are claimed as a feature of the mark,” and so it is probably also worth adding. From: <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Thursday, February 23, 2017 at 10:59 To: "Beckham, Brian" <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) Brian, Thanks for asking that. I'm sure it's "somewhere" we could find it eventually, but having it in this thread would be very helpful. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Thu, Feb 23, 2017 at 6:44 AM, Beckham, Brian <brian.beckham@wipo.int<mailto:brian.beckham@wipo.int>> wrote: Kathy, all, particularly further to Greg's concluding question (re different understandings of what we are trying to achieve), would you be so kind as to remind us what it was the GNSO said on this? Did the recommendations e.g. bar all marks with stylized text or design elements (which would seem in trademark law terms to be a somewhat misguided overcorrection) or was the recommendation concerned with marks in which the entire textual element was disclaimed? It seems that much of the discussion here on generic vs dictionary terms at least is rightly focused on the latter, but clarity would be welcome. Thanks! Brian On 22 February 2017 at 18:39:58 GMT, Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> wrote: I agree with J. Scott that asking Deloitte to tell us "if the textual elements of Rebecca’s examples and for an explanation of their analysis would be very enlightening and helpful." It is good to wrestle with real world issues through real world examples. Tx you, Rebecca, for providing this input. Re: Paul's suggestion, why not add to our questions for Deloitte the one he has shared: "what rules are applied in practice to determine the "prominent" textual aspects of a figurative mark?" These seems quite relevant to our work. Frankly, I think we have to wrestle too with the question of why Deloitte is accepting figurative marks at all -- particularly when the GNSO Policy Recommendations (as adopted by the GNSO Council and then the Board) appear to bar them in favor of text marks/word marks only. But that's a question for a different time... Best, Kathy On 2/22/2017 5:48 AM, J. Scott Evans via gnso-rpm-wg wrote: Team: I disagree with Paul. I think asking Deloitte to tell us if the textual elements of Rebecca’s examples and for an explanation of their analysis would be very enlightening and helpful. J. Scott Evans From: <gnso-rpm-wg-bounces@icann.org><mailto:gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es><mailto:paul@law.es> Date: Wednesday, February 22, 2017 at 12:10 AM To: Mary Wong <mary.wong@icann.org><mailto:mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org"<mailto:gnso-rpm-wg@icann.org><gnso-rpm-wg@icann.org><mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) While a laudable effort imho this will not likely receive a useful response. It might be more productive to simply request a list of those Figurative marks that have been accepted. Alternatively ask what rules are applied in practice to determine the "prominent" textual aspects of a figurative mark. The issue I feel is not the figurative containing textual elements otherwise registrable. Rather we are really after a figurative mark used to protect a textual element not otherwise protectable as a trademark. E.g. "Fast Cars" with a green squiggly mark to claim rights in fast cars to sell automobiles. Sincerely, Paul Keating, Esq. On Feb 22, 2017, at 7:47 AM, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear all, I’m sending this message on behalf of Rebecca Tushnet in relation to one Action Item from the 15 February Working Group call. This was for her to take the lead in suggesting some examples of design marks that we can send to Deloitte for their opinion on whether the examples will or will not likely be accepted into the TMCH. Please review the attached examples and send your comments to this list. Thank you. Cheers Mary From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: Action items and updated documents from Working Group call of 15 February Dear all, This is just a gentle reminder to circulate your suggestions this week for follow up questions and clarifications for Deloitte, based on the Working Group’s discussions to date of the tables for Categories 1 – 6. To assist those who were not able to attend both sessions where the tables were discussed: · Wiki page containing call recording, transcript and updated table from 15 February (discussion of Categories 3 – 6): https://community.icann.org/x/TZ3DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_TZ3DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=Qt2QTRs25jH_1CnKMQDKf2F7trz_uimEoIfoKfebP5s&e=> · Wiki page containing call recording, transcript, AC chat, updated table from 8 February (last discussion of Categories 1 -2), and compilation of TMCH Dispute Resolution Procedures: https://community.icann.org/x/Q53DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=>. Thanks and cheers Mary From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Action items and updated documents from Working Group call of 15 February Dear all, Please find attached the updated Tabular Summary for Categories 3-6 for your review (also posted to the Working Group wiki page with notes and recordings for this call, at https://community.icann.org/x/TZ3DAw)[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_TZ3DAw-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=025Rt5ujT8eWdaiBWLQaAk3-xDpzR24t1l4DlLC9YGo&e=>. Please also note the following action items, which are also reflected in the updated table. Action Items: · On Q7 (design marks) – Rebecca Tushnet to take the lead in developing a few examples of hypothetical design marks for sending to Deloitte for their views · On Q8 (Geographical Indicators) – Staff to confirm with OriGIn who may be able to submit G.I.s. · On Q9 (TM+50) – Working Group to review questions submitted by the Registries Stakeholder Group with a view toward agreement on whether to send them on to Deloitte · On Q14 (Accessibility) – Working Group to consider if there are additional/alternative sources that can provide us with more information. · [From last week] – please review the updated Tabular Summary for Categories 1 & 2 from last week and submit any follow up questions or suggestions for Deloitte to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=>. · [From last week] – please review the TMCH Dispute Resolution Procedures and suggest areas for discussion or follow up to this mailing list. The updated document is available under Follow Up Notes from the wiki page notes of the call last week: https://community.icann.org/x/Q53DAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_Q53DAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=>. Next Steps: · Staff will compile additional suggestions received from Working Group members on possible questions and requests for follow up with Deloitte, from both Tabular Summaries for Categories 1 & 2 (from last week) and for Categories 3-6. Please try to submit your feedback by close of business in your time zone on Tuesday 21 February at the latest so that we can have a full list ready as soon as possible. Thank you. Cheers Mary From: Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Proposed agenda and documents for RPM Working Group call on 15 February Dear all, The proposed agenda for the next Working Group call, scheduled for 15 February 2017 at 1700 UTC, is as follows: 1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest 2. Review table for Categories 3-6, with view to developing additional questions for Deloitte or that require further information 3. Next steps/next meeting Please note that the table for Agenda Item #2 had been circulated previously, on 6 February, and is also available on our Working Group wiki space here: https://community.icann.org/x/_pHRAw[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FpHRAw&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=49rZxYXNglwZKhpVIrqQP4kKxD0f3M2LZaxSUlV7W_Q&e=>. Please note also the Action Items from the meeting last week, which were as follows: · Over the next week, WG members to review the table for Categories 1 & 2 and the discussions to date, in order for staff to compile and send all follow up questions to Deloitte before ICANN58 so as to have an informed discussion with them at ICANN58 (updated table was circulated on 10 February and is also available here: https://community.icann.org/x/_pHRAw)[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_-5FpHRAw-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=_a59DAF6e_16_FbV-1zCG7E6SSf_itKWaJZFpbRTEh0&e=> · WG members to also review the TMCH Dispute Resolution Procedures and agree on any follow up questions for Deloitte (the Procedures were circulated on 10 February and are also available here: http://trademark-clearinghouse.com/dispute)[trademark-clearinghouse.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__trademark-2Dclearinghouse.com_dispute-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6xvZA5x2FgQ&s=LHthSya6UTxD7UfKK5pOd0VfPW-Aatgp2_M2QycIEUE&e=>. Thanks and cheers Mary <List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx> _______________________________________________ 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 _______________________________________________ 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 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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