List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)
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> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg@icann.org" <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 · 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. Thanks and cheers Mary From: Mary Wong <mary.wong@icann.org> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg@icann.org" <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). 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. · [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. 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> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg@icann.org" <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. 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) · 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). Thanks and cheers Mary
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> 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> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg@icann.org" <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 · 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.
Thanks and cheers Mary
From: Mary Wong <mary.wong@icann.org> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg@icann.org" <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). 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.
· [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.
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> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg@icann.org" <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.
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) · 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).
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 https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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> on behalf of Paul Keating <paul@law.es> Date: Wednesday, February 22, 2017 at 12:10 AM To: Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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 · 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. 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). 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. · [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. 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. 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) · 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). 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
+1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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> on behalf of Paul Keating <paul@law.es> Date: Wednesday, February 22, 2017 at 12:10 AM To: Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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 · 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. 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). 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. · [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. 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. 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) · 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). 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 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. 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Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com>, Paul Keating <paul@law.es>, Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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)
+1
From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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)
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> on behalf of Paul Keating <paul@law.es> Date: Wednesday, February 22, 2017 at 12:10 AM To: Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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> 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> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg@icann.org" <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
· 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.
Thanks and cheers Mary
From: Mary Wong <mary.wong@icann.org> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg@icann.org" <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). 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.
· [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.
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> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg@icann.org" <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.
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)
· 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).
Thanks and cheers Mary
<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
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That sounds like a good approach: both should be done, so that the WG may take both into account. Best regards Pascal Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz BARDEHLE PAGENBERG Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0 F +49.(0)89.928 05-444 pascal.boehner@bardehle.de | vCard<http://www.bardehle.com/de/team/detail/p/boehner-pascal-1/vcard.vcf> | Profile<http://www.bardehle.com/de/team/detail/person/boehner-pascal-1.html> www.bardehle.com BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152 "Law Firm of the Year" 2016 for Intellectual Property Law – named by Best Lawyers® and Handelsblatt "TOP-KANZLEI Patentrecht 2015" – awarded by WirtschaftsWoche Von: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] Im Auftrag von Paul Keating Gesendet: Mittwoch, 22. Februar 2017 14:11 An: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; J. Scott Evans via gnso-rpm-wg <jsevans@adobe.com>; Mary Wong <mary.wong@icann.org> Cc: gnso-rpm-wg@icann.org Betreff: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 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) +1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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 · 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. 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). 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. · [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. 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. 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) · 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). 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 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. ________________________________ Important: The information contained in this communication is attorney-client-privileged and confidential information intended only for the use of the individual or entity named above. If the reader of this communication is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, or copying of the communication is strictly prohibited. If you have received the communication in error, please immediately notify us by telephone and return the original to us at the above address and then delete the communication. Thank you. Our offices act legally independent from the other countries offices in each country and are not liable for those. ________________________________
Agree, Pascal. Sincerely, Jay Chapman * <http://www.digimedia.com>* On Wed, Feb 22, 2017 at 7:26 AM, Pascal Böhner <pascal.boehner@bardehle.de> wrote:
That sounds like a good approach: both should be done, so that the WG may take both into account.
Best regards
Pascal
Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz
*BARDEHLE PAGENBERG*
Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0 <+49%2089%20928050> F +49.(0)89.928 05-444 <+49%2089%2092805444> pascal.boehner@bardehle.de | vCard <http://www.bardehle.com/de/team/detail/p/boehner-pascal-1/vcard.vcf> | Profile <http://www.bardehle.com/de/team/detail/person/boehner-pascal-1.html> www.bardehle.com
BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152
*"Law Firm of the Year" *2016 for Intellectual Property Law – named by *Best Lawyers*® and *Handelsblatt "TOP-KANZLEI Patentrecht 2015"* – awarded by *WirtschaftsWoche*
*Von:* gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] *Im Auftrag von *Paul Keating *Gesendet:* Mittwoch, 22. Februar 2017 14:11 *An:* Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; J. Scott Evans via gnso-rpm-wg <jsevans@adobe.com>; Mary Wong <mary.wong@icann.org> *Cc:* gnso-rpm-wg@icann.org *Betreff:* Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February)
Then I s suggest we do both?
Send the examples AND ask for the list.
Paul
*From: *Georges Nahitchevansky <ghn@kilpatricktownsend.com> *Date: *Wednesday, February 22, 2017 at 2:00 PM *To: *"J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com>, Paul Keating < paul@law.es>, Mary Wong <mary.wong@icann.org> *Cc: *"gnso-rpm-wg@icann.org" <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)
+1
*From: *J. Scott Evans via gnso-rpm-wg
*Sent: *Wednesday, February 22, 2017 5:48 AM
*To: *Paul Keating; Mary Wong
*Reply To: *J. Scott Evans
*Cc: *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)
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> on behalf of Paul Keating < paul@law.es> *Date: *Wednesday, February 22, 2017 at 12:10 AM *To: *Mary Wong <mary.wong@icann.org> *Cc: *"gnso-rpm-wg@icann.org" <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> 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> *Date: *Monday, February 20, 2017 at 12:23 *To: *"gnso-rpm-wg@icann.org" <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
· 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.
Thanks and cheers
Mary
*From: *Mary Wong <mary.wong@icann.org> *Date: *Thursday, February 16, 2017 at 18:37 *To: *"gnso-rpm-wg@icann.org" <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). 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.
· [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.
*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> *Date: *Tuesday, February 14, 2017 at 11:08 *To: *"gnso-rpm-wg@icann.org" <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.
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)
· 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).
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 https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
------------------------------
Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500 <(404)%20815-6500>, and destroy the original transmission and its attachments without reading or saving in any manner. ------------------------------
***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
------------------------------
Important: The information contained in this communication is attorney-client-privileged and confidential information intended only for the use of the individual or entity named above. If the reader of this communication is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, he or she is hereby notified that any dissemination, distribution, or copying of the communication is strictly prohibited. If you have received the communication in error, please immediately notify us by telephone and return the original to us at the above address and then delete the communication. Thank you.
Our offices act legally independent from the other countries offices in each country and are not liable for those. ------------------------------
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Hello everyone, To clarify, the Working Group had agreed on its call last week that it will likely be helpful to ask Deloitte for examples of design marks that were accepted, and design marks that were rejected – in addition to getting their view on the examples developed by the Working Group (with thanks to Rebecca for following up on the latter). There may well be concerns (such as about confidentiality) from Deloitte’s end about providing either or both forms of input – it may be helpful for us to outline and discuss these on this mailing list before we send off the final list of follow up requests to Deloitte. Thanks and cheers Mary From: Jay Chapman <jay@digimedia.com> Date: Wednesday, February 22, 2017 at 09:42 To: Pascal Böhner <pascal.boehner@bardehle.de> Cc: Paul Keating <Paul@law.es>, "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com>, "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com>, Mary Wong <mary.wong@icann.org>, "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) Agree, Pascal. Sincerely, Jay Chapman [https://docs.google.com/uc?export=download&id=0B_q-LxE2k9bPcVNkeDNXb2J6d0E&revid=0B_q-LxE2k9bPdHVhYmhxSE54QlkrR29QV0tNZk9tSk9pWm9JPQ][digimedia.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.digimedia.com&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=PgclOxR2Yg-Irw2Oh-238Lqm23FiAtRQtumHZ4NEsT4&e=> On Wed, Feb 22, 2017 at 7:26 AM, Pascal Böhner <pascal.boehner@bardehle.de<mailto:pascal.boehner@bardehle.de>> wrote: That sounds like a good approach: both should be done, so that the WG may take both into account. Best regards Pascal Pascal Böhner Rechtsanwalt Fachanwalt für gewerblichen Rechtsschutz BARDEHLE PAGENBERG Pascal Böhner Prinzregentenplatz 7 81675 München T +49.(0)89.928 05-0<tel:+49%2089%20928050> F +49.(0)89.928 05-444<tel:+49%2089%2092805444> pascal.boehner@bardehle.de<mailto:pascal.boehner@bardehle.de> | vCard[bardehle.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.bardehle.com_de_team...> | Profile[bardehle.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.bardehle.com_de_team...> www.bardehle.com[bardehle.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.bardehle.com&d=DwMFa...> BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte Amtsgericht München Partnerschaftsregister 1152 "Law Firm of the Year" 2016 for Intellectual Property Law – named by Best Lawyers® and Handelsblatt "TOP-KANZLEI Patentrecht 2015" – awarded by WirtschaftsWoche Von: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>] Im Auftrag von Paul Keating Gesendet: Mittwoch, 22. Februar 2017 14:11 An: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; J. Scott Evans via gnso-rpm-wg <jsevans@adobe.com<mailto:jsevans@adobe.com>>; Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Betreff: Re: [gnso-rpm-wg] List of examples for Deloitte (Re: Action items and updated documents from Working Group call of 15 February) Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 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) +1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=pzvx-4MSz3YWIsWsgAxBjlGYYA3yjtkciRsszIh6RnQ&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=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=fz9K7fTg2sZ7_yboh6_rlP6hBBs30apwk9CZ6ap8Oag&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-29&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=H8wAfZZnqTfZLhFAew3EkwWESy8PGWngBBAr8CW3ENA&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=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=fz9K7fTg2sZ7_yboh6_rlP6hBBs30apwk9CZ6ap8Oag&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=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=fz9K7fTg2sZ7_yboh6_rlP6hBBs30apwk9CZ6ap8Oag&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=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=IDzvkV6jhW-X_Bn33LZ-abZamCNbqHvkVmWT8t5n8nc&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-29&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=qLIyT8IpLvW2q-mAm7cwxh88gqX-NJi8acj1yfw1eCM&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-29&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=L8W7hc5RF_pZSgdSI2RERjjSLipvsBDyWwuanFe6bks&s=SgXOUZjrpGzQl-bOeUP4_jzNNGqnm4CLX2R4FSo99zk&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 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. 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I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered. Sent from my iPhone On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 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) +1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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 · 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. 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). 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. · [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. 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. 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) · 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). 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 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
J. Scott, I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance. Can you please provide an explanation for your opposition? Paul From: "J. Scott Evans" <jsevans@adobe.com> Date: Wednesday, February 22, 2017 at 3:32 PM To: Paul Keating <paul@law.es> Cc: Georges Nahitchevansky <ghn@kilpatricktownsend.com>, Mary Wong <mary.wong@icann.org>, "gnso-rpm-wg@icann.org" <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)
I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered.
Sent from my iPhone
On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es> wrote:
Then I s suggest we do both?
Send the examples AND ask for the list.
Paul
From: Georges Nahitchevansky <ghn@kilpatricktownsend.com> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com>, Paul Keating <paul@law.es>, Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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)
+1
From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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)
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> on behalf of Paul Keating <paul@law.es> Date: Wednesday, February 22, 2017 at 12:10 AM To: Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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> 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> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg@icann.org" <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
· 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.
Thanks and cheers Mary
From: Mary Wong <mary.wong@icann.org> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg@icann.org" <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). 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.
· [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.
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> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg@icann.org" <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.
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)
· 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).
Thanks and cheers Mary
<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
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***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
Paul, Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It's been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Wednesday, February 22, 2017 4:58 PM To: J. Scott Evans <jsevans@adobe.com> Cc: 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) J. Scott, I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance. Can you please provide an explanation for your opposition? Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, February 22, 2017 at 3:32 PM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, "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) I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered. Sent from my iPhone On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 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) +1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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 * 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. 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). 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. * [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. 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. 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) * 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). 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 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. ________________________________
Perhaps and perhaps not. I still see no reason to prevent us from asking. Even if there is a confidentiality issue that can be sorted in any number of ways. Paul From: Lori Schulman <lschulman@inta.org> Date: Wednesday, February 22, 2017 at 5:07 PM To: Paul Keating <paul@law.es>, "J. Scott Evans" <jsevans@adobe.com> Cc: "gnso-rpm-wg@icann.org" <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)
Paul,
Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It¹s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names.
Lori
Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Wednesday, February 22, 2017 4:58 PM To: J. Scott Evans <jsevans@adobe.com> Cc: 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)
J. Scott,
I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance.
Can you please provide an explanation for your opposition?
Paul
From: "J. Scott Evans" <jsevans@adobe.com> Date: Wednesday, February 22, 2017 at 3:32 PM To: Paul Keating <paul@law.es> Cc: Georges Nahitchevansky <ghn@kilpatricktownsend.com>, Mary Wong <mary.wong@icann.org>, "gnso-rpm-wg@icann.org" <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)
I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered.
Sent from my iPhone
On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es> wrote:
Then I s suggest we do both?
Send the examples AND ask for the list.
Paul
From: Georges Nahitchevansky <ghn@kilpatricktownsend.com> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com>, Paul Keating <paul@law.es>, Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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)
+1
From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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)
Team:
I disagree with Paul. I think asking Deloitte to tell us if the textual elements of Rebecca¹s examples and for an explanation of their analysis would be very enlightening and helpful.
J. Scott Evans
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es> Date: Wednesday, February 22, 2017 at 12:10 AM To: Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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> wrote:
Dear all,
I¹m 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> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg@icann.org" <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 Group¹s 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
· 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.
Thanks and cheers Mary
From: Mary Wong <mary.wong@icann.org> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg@icann.org" <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). 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.
· [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.
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> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg@icann.org" <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.
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)
· 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).
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 https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner.
***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
Hello, On Wed, Feb 22, 2017 at 11:07 AM, Lori Schulman <lschulman@inta.org> wrote:
Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It’s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names.
There are certainly workarounds that don't require Deloitte's permission. There are multiple new gTLDs launching soon (e.g. .RADIO, .FUN, and .VUELOS). One could generate a list of 1000, 10,000 or more common terms and see which ones generate TM claims notices, to research which terms trigger the trademark claims notices. As has been pointed out before, we already know "THE" is on the list! :-) https://www.thedomains.com/2017/02/01/the-trademark-clearinghouse-worked-so-... Here's a dataset one could use to get started: https://github.com/first20hours/google-10000-english although, those don't necessarily match the most valuable/desirable terms in any given TLD. e.g. we know LasVegas.com is a $90 million domain name: http://www.dnjournal.com/archive/lowdown/2015/dailyposts/20151106.htm and "Las Vegas" is not on the above list because it's two words instead of one (although "Vegas" alone appears). There are even APIs that one could use to do it programmatically, instead of doing it one at a time by a human, e.g. Tucows/OpenSRS: https://opensrs.com/blog/2014/03/claims-notice/ "Lookup domain and name_suggest commands will return a new parameter name called “has_claim” with a value of 0 or 1 for new TLDs within the 90 day claims period" I'm sure other registrars with an API have similar results, to allow anyone to check 100,000 or a million domains to see if they generate claims notices. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
Exactly Sent from my iPhone On Feb 22, 2017, at 4:07 PM, Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> wrote: Paul, Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It’s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman <image001.jpg> From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Wednesday, February 22, 2017 4:58 PM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: 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) J. Scott, I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance. Can you please provide an explanation for your opposition? Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, February 22, 2017 at 3:32 PM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, "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) I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered. Sent from my iPhone On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 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) +1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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 · 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. 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). 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. · [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. 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. 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) · 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). 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 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without reading or saving in any manner. ________________________________ ***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
As George has noted there are many work-arounds to any potential issue. However, none of the concerns I have heard weigh in favor of not asking for the information. Sincerely, Paul Raynor Keating, Esq. Law.es <http://law.es/> Tel. +34 93 368 0247 (Spain) Tel. +44.7531.400.177 (UK) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul@law.es THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: "J. Scott Evans" <jsevans@adobe.com> Date: Wednesday, February 22, 2017 at 5:56 PM To: Lori Schulman <lschulman@inta.org> Cc: Paul Keating <paul@law.es>, "gnso-rpm-wg@icann.org" <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)
Exactly
Sent from my iPhone
On Feb 22, 2017, at 4:07 PM, Lori Schulman <lschulman@inta.org> wrote:
Paul,
Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It¹s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names.
Lori
Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman
<image001.jpg>
From:gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Wednesday, February 22, 2017 4:58 PM To: J. Scott Evans <jsevans@adobe.com> Cc: 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)
J. Scott,
I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance.
Can you please provide an explanation for your opposition?
Paul
From: "J. Scott Evans" <jsevans@adobe.com> Date: Wednesday, February 22, 2017 at 3:32 PM To: Paul Keating <paul@law.es> Cc: Georges Nahitchevansky <ghn@kilpatricktownsend.com>, Mary Wong <mary.wong@icann.org>, "gnso-rpm-wg@icann.org" <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)
I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered.
Sent from my iPhone
On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es> wrote:
Then I s suggest we do both?
Send the examples AND ask for the list.
Paul
From: Georges Nahitchevansky <ghn@kilpatricktownsend.com> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com>, Paul Keating <paul@law.es>, Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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)
+1
From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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)
Team:
I disagree with Paul. I think asking Deloitte to tell us if the textual elements of Rebecca¹s examples and for an explanation of their analysis would be very enlightening and helpful.
J. Scott Evans
From: <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es> Date: Wednesday, February 22, 2017 at 12:10 AM To: Mary Wong <mary.wong@icann.org> Cc: "gnso-rpm-wg@icann.org" <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> wrote:
Dear all,
I¹m 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> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg@icann.org" <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 Group¹s 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
· 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.
Thanks and cheers Mary
From: Mary Wong <mary.wong@icann.org> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg@icann.org" <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). 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.
· [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.
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> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg@icann.org" <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.
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)
· 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).
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 https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.
A few observations: Rebecca's examples do not include the registration information that would normally be submitted to the TMCH. It would probably be more helpful to include that, or at least ask how that's taken into account in the overall process. I'm not in favor of an ICANN Working Group reverse engineering all or any part of the TMCH database, which would be counter to the restrictions on availability of TMCH data as specified by ICANN. I think it would be more fruitful to ask for the reasons why the TMCH accepted certain "design marks" and rejected others. We should also find out whether and how disclaimers are taken into consideration. The last mark on Rebecca's list can be used for that -- the CARS Plus Design mark was registered for clothing (by Disney) without a disclaimer. I share the concerns brought up by J Scott, Lori and Brian in this thread. Finally, I note that the term "design marks" at least as we are using it, covers a number of different concepts. In the examples, the PARENTS mark is a stylized or "special form" mark, which is different from the word plus design marks in the other two examples. Stylized marks consist of the word in a particular font or style but without other design elements. Some might not consider a special form mark a design mark at all. Word plus design marks are different, and even those may be broken down into composite marks (made up of separable elements) and others. In any event, the bottom line should be that the TMCH does not second guess a national trademark registry with regard to validity of the mark. I'll also observe that there still seems to be some different understandings of what we are trying to accomplish here. That should be clarified before we proceed. Greg *Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com On Wed, Feb 22, 2017 at 12:19 PM, Paul Keating <Paul@law.es> wrote:
As George has noted there are many work-arounds to any potential issue.
However, none of the concerns I have heard weigh in favor of not asking for the information.
Sincerely,
Paul Raynor Keating, Esq.
Law.es <http://law.es/>
Tel. +34 93 368 0247 <+34%20933%2068%2002%2047> (Spain)
Tel. +44.7531.400.177 <+44%207531%20400177> (UK)
*Tel. +1.415.937.0846 <(415)%20937-0846> (US)*
Fax. (Europe) +34 93 396 0810 <+34%20933%2096%2008%2010>
Fax. (US)(415) 358.4450 <(415)%20358-4450>
Skype: Prk-Spain
email: Paul@law.es
THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS.
Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein.
NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE
From: "J. Scott Evans" <jsevans@adobe.com> Date: Wednesday, February 22, 2017 at 5:56 PM To: Lori Schulman <lschulman@inta.org> Cc: Paul Keating <paul@law.es>, "gnso-rpm-wg@icann.org" < 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)
Exactly
Sent from my iPhone
On Feb 22, 2017, at 4:07 PM, Lori Schulman <lschulman@inta.org> wrote:
Paul,
Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It’s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names.
Lori
Lori S. Schulman
Senior Director, Internet Policy
*International Trademark Association (INTA)*
+1-202-704-0408 <(202)%20704-0408>, Skype: lsschulman
<image001.jpg>
*From:*gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] *On Behalf Of *Paul Keating *Sent:* Wednesday, February 22, 2017 4:58 PM *To:* J. Scott Evans <jsevans@adobe.com> *Cc:* 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)
J. Scott,
I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance.
Can you please provide an explanation for your opposition?
Paul
*From: *"J. Scott Evans" <jsevans@adobe.com> *Date: *Wednesday, February 22, 2017 at 3:32 PM *To: *Paul Keating <paul@law.es> *Cc: *Georges Nahitchevansky <ghn@kilpatricktownsend.com>, Mary Wong < mary.wong@icann.org>, "gnso-rpm-wg@icann.org" <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)
I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered.
Sent from my iPhone
On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es> wrote:
Then I s suggest we do both?
Send the examples AND ask for the list.
Paul
*From: *Georges Nahitchevansky <ghn@kilpatricktownsend.com> *Date: *Wednesday, February 22, 2017 at 2:00 PM *To: *"J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com>, Paul Keating < paul@law.es>, Mary Wong <mary.wong@icann.org> *Cc: *"gnso-rpm-wg@icann.org" <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)
+1
*From: *J. Scott Evans via gnso-rpm-wg
*Sent: *Wednesday, February 22, 2017 5:48 AM
*To: *Paul Keating; Mary Wong
*Reply To: *J. Scott Evans
*Cc: *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)
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> on behalf of Paul Keating < paul@law.es> *Date: *Wednesday, February 22, 2017 at 12:10 AM *To: *Mary Wong <mary.wong@icann.org> *Cc: *"gnso-rpm-wg@icann.org" <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> 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> *Date: *Monday, February 20, 2017 at 12:23 *To: *"gnso-rpm-wg@icann.org" <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
· 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.
Thanks and cheers
Mary
*From: *Mary Wong <mary.wong@icann.org> *Date: *Thursday, February 16, 2017 at 18:37 *To: *"gnso-rpm-wg@icann.org" <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). 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.
· [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.
*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> *Date: *Tuesday, February 14, 2017 at 11:08 *To: *"gnso-rpm-wg@icann.org" <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.
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)
· 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).
Thanks and cheers
Mary
<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
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+1 to comments of Greg and J. Scott -------- Original Message -------- From: Greg Shatan <gregshatanipc@gmail.com> Date: Wed, Feb 22, 2017, 12:00 PM To: Paul Keating <Paul@law.es> CC: 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) A few observations: Rebecca's examples do not include the registration information that would normally be submitted to the TMCH. It would probably be more helpful to include that, or at least ask how that's taken into account in the overall process. I'm not in favor of an ICANN Working Group reverse engineering all or any part of the TMCH database, which would be counter to the restrictions on availability of TMCH data as specified by ICANN. I think it would be more fruitful to ask for the reasons why the TMCH accepted certain "design marks" and rejected others. We should also find out whether and how disclaimers are taken into consideration. The last mark on Rebecca's list can be used for that -- the CARS Plus Design mark was registered for clothing (by Disney) without a disclaimer. I share the concerns brought up by J Scott, Lori and Brian in this thread. Finally, I note that the term "design marks" at least as we are using it, covers a number of different concepts. In the examples, the PARENTS mark is a stylized or "special form" mark, which is different from the word plus design marks in the other two examples. Stylized marks consist of the word in a particular font or style but without other design elements. Some might not consider a special form mark a design mark at all. Word plus design marks are different, and even those may be broken down into composite marks (made up of separable elements) and others. In any event, the bottom line should be that the TMCH does not second guess a national trademark registry with regard to validity of the mark. I'll also observe that there still seems to be some different understandings of what we are trying to accomplish here. That should be clarified before we proceed. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Wed, Feb 22, 2017 at 12:19 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: As George has noted there are many work-arounds to any potential issue. However, none of the concerns I have heard weigh in favor of not asking for the information. Sincerely, Paul Raynor Keating, Esq. Law.es<https://linkprotect.cudasvc.com/url?a=http://law.es/&c=E,1,hHlUwiyZu9xH7MHLW...> Tel. +34 93 368 0247<tel:+34%20933%2068%2002%2047> (Spain) Tel. +44.7531.400.177<tel:+44%207531%20400177> (UK) Tel. +1.415.937.0846<tel:(415)%20937-0846> (US) Fax. (Europe) +34 93 396 0810<tel:+34%20933%2096%2008%2010> Fax. (US)(415) 358.4450<tel:(415)%20358-4450> Skype: Prk-Spain email: Paul@law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, February 22, 2017 at 5:56 PM To: Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> Cc: Paul Keating <paul@law.es<mailto:paul@law.es>>, "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) Exactly Sent from my iPhone On Feb 22, 2017, at 4:07 PM, Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> wrote: Paul, Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It’s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408<tel:(202)%20704-0408>, Skype: lsschulman <image001.jpg> From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Wednesday, February 22, 2017 4:58 PM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: 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) J. Scott, I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance. Can you please provide an explanation for your opposition? Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, February 22, 2017 at 3:32 PM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, "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) I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered. Sent from my iPhone On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 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) +1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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 · 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. 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). 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. · [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. 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. 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) · 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)<https://linkprotect.cudasvc.com/url?a=http://trademark-clearinghouse.com/dispute)&c=E,1,dnrIupkYz6AHOv2QGrm6v4icveMRmr-0bfOaoOqzLMySuYuMM_P9BYCP3PPFjGcbDQx-veZkYRkOUy43lIRfCcJZ5-Cw9iwPSutyu6B49qGjx22FBydTqoj9Tw,,&typo=1>. 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 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. 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Hello everyone, As you continue to discuss the question of what specific information to seek from Deloitte regarding its acceptance and verification of device or image marks, I thought the following extract from the TMCH Guidelines spelling out what rules Deloitte applies might be useful to those who have less experience in this area: “For marks that do not exclusively consist of letters, words, numerals, special characters: The recorded name of the Trademark is an identical match to the reported name as long as the name of the Trademark includes letters, words, numerals, keyboard signs, and punctuation marks (“Characters”) that are: • predominant • clearly separable or distinguishable from the device element; • and all predominant characters are included in the Trademark Record submitted to the Clearinghouse in the same order they appear in the mark. In the event that there is any doubt about the order in which the characters appear, the description provided by the Trademark office will prevail. In the event no description is provided, such Trademarks will be allocated to a Deloitte internal team of specialists with thorough knowledge of both national and regional trademark law who will conduct independent research on how the Trademark is used, e.g. check website, or they may request that the Trademark Holder or Trademark Agent provide additional documentary evidence on how the Trademark is used.” Although the Guidelines are not specific as to word elements of a mark that are expressly disclaimed, the above may shed some light. In addition, on Greg’s point about the various types of design marks as the term is generally used, it may be helpful to note that Deloitte uses the above category as the counterpoint to the category “For marks that exclusively consist of letters, words, numerals and/or special characters”, for which the Guidelines that apply are “The recorded name of the mark is an identical match to the reported name as long as all characters are included in the Trademark Record provided to the Clearinghouse, and in the same order in which they appear on the Trademark certificate”. Cheers Mary From: <gnso-rpm-wg-bounces@icann.org> on behalf of Scott Austin <SAustin@vlplawgroup.com> Date: Wednesday, February 22, 2017 at 13:09 To: Greg Shatan <gregshatanipc@gmail.com>, Paul Keating <Paul@law.es> Cc: "gnso-rpm-wg@icann.org" <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) +1 to comments of Greg and J. Scott -------- Original Message -------- From: Greg Shatan <gregshatanipc@gmail.com> Date: Wed, Feb 22, 2017, 12:00 PM To: Paul Keating <Paul@law.es> CC: 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) A few observations: Rebecca's examples do not include the registration information that would normally be submitted to the TMCH. It would probably be more helpful to include that, or at least ask how that's taken into account in the overall process. I'm not in favor of an ICANN Working Group reverse engineering all or any part of the TMCH database, which would be counter to the restrictions on availability of TMCH data as specified by ICANN. I think it would be more fruitful to ask for the reasons why the TMCH accepted certain "design marks" and rejected others. We should also find out whether and how disclaimers are taken into consideration. The last mark on Rebecca's list can be used for that -- the CARS Plus Design mark was registered for clothing (by Disney) without a disclaimer. I share the concerns brought up by J Scott, Lori and Brian in this thread. Finally, I note that the term "design marks" at least as we are using it, covers a number of different concepts. In the examples, the PARENTS mark is a stylized or "special form" mark, which is different from the word plus design marks in the other two examples. Stylized marks consist of the word in a particular font or style but without other design elements. Some might not consider a special form mark a design mark at all. Word plus design marks are different, and even those may be broken down into composite marks (made up of separable elements) and others. In any event, the bottom line should be that the TMCH does not second guess a national trademark registry with regard to validity of the mark. I'll also observe that there still seems to be some different understandings of what we are trying to accomplish here. That should be clarified before we proceed. Greg Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com> On Wed, Feb 22, 2017 at 12:19 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: As George has noted there are many work-arounds to any potential issue. However, none of the concerns I have heard weigh in favor of not asking for the information. Sincerely, Paul Raynor Keating, Esq. Law.es[linkprotect.cudasvc.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com...> Tel. +34 93 368 0247<tel:+34%20933%2068%2002%2047> (Spain) Tel. +44.7531.400.177<tel:+44%207531%20400177> (UK) Tel. +1.415.937.0846<tel:(415)%20937-0846> (US) Fax. (Europe) +34 93 396 0810<tel:+34%20933%2096%2008%2010> Fax. (US)(415) 358.4450<tel:(415)%20358-4450> Skype: Prk-Spain email: Paul@law.es<mailto:Paul@law.es> THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, February 22, 2017 at 5:56 PM To: Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> Cc: Paul Keating <paul@law.es<mailto:paul@law.es>>, "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) Exactly Sent from my iPhone On Feb 22, 2017, at 4:07 PM, Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> wrote: Paul, Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It’s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408<tel:(202)%20704-0408>, Skype: lsschulman <image001.jpg> From:gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Wednesday, February 22, 2017 4:58 PM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: 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) J. Scott, I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance. Can you please provide an explanation for your opposition? Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, February 22, 2017 at 3:32 PM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, "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) I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered. Sent from my iPhone On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 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) +1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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=DwMF-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=8QUA0CmmAlfi4kQqoe0IIUsqKfiG8rrydBWiq2B-kSU&s=4dcIVxmIJ4HlzlSKtVi5CxkmhgsiM0-Ie3QqDYSqZVg&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=DwMF-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=8QUA0CmmAlfi4kQqoe0IIUsqKfiG8rrydBWiq2B-kSU&s=O6BjjxFMpnAcCtvqJnxAG3FproCyiuVw81rRuWywMZc&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-29&d=DwMF-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=8QUA0CmmAlfi4kQqoe0IIUsqKfiG8rrydBWiq2B-kSU&s=KSKcSWqXKHfrYhhc1Tb84F7t6RHPfWt_9pzbTUtTREQ&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=DwMF-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=8QUA0CmmAlfi4kQqoe0IIUsqKfiG8rrydBWiq2B-kSU&s=O6BjjxFMpnAcCtvqJnxAG3FproCyiuVw81rRuWywMZc&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=DwMF-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=8QUA0CmmAlfi4kQqoe0IIUsqKfiG8rrydBWiq2B-kSU&s=O6BjjxFMpnAcCtvqJnxAG3FproCyiuVw81rRuWywMZc&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=DwMF-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=8QUA0CmmAlfi4kQqoe0IIUsqKfiG8rrydBWiq2B-kSU&s=syumvPrqXujzoCkNCT3BOQUmXf3PYck6bCZE4kwVnVI&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-29&d=DwMF-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=8QUA0CmmAlfi4kQqoe0IIUsqKfiG8rrydBWiq2B-kSU&s=IOiikayD4yv9jOyS2rtGGc3KS8LFm0NTNubGgdqIABU&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)[linkprotect.cudasvc.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttp-3A__trademark-2Dclearinghouse.com_dispute-29-26c-3DE-2C1-2CdnrIupkYz6AHOv2QGrm6v4icveMRmr-2D0bfOaoOqzLMySuYuMM-5FP9BYCP3PPFjGcbDQx-2DveZkYRkOUy43lIRfCcJZ5-2DCw9iwPSutyu6B49qGjx22FBydTqoj9Tw-2C-2C-26typo-3D1&d=DwMF-g&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=8QUA0CmmAlfi4kQqoe0IIUsqKfiG8rrydBWiq2B-kSU&s=srgrXt7IZfAASKdeId12W_DlChfI0_spIsmWzAUjT7w&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 ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. This transmission, and any attachments, may contain confidential attorney-client privileged information and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is STRICTLY PROHIBITED. 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Hi all, In reviewing the list of suggested design marks, I had a few concerns. I understand that the primary purpose of the exercise is to “test” whether the TMCH would accept these marks based on their existing criteria for handling “device/image” marks as the term is used in the TMCH Guidelines. But I’m not sure I understand why the three specific marks in the list were selected, and question whether they are appropriate examples for this purpose. Even without any design elements, each of the three marks (PARENTS, FRUIT OF THE LOOM, and CARS) do not appear to be generic in connection with the goods/services in the respective registrations. Yes, each mark is composed of words which one could locate in a dictionary but this does not make the marks “generic” in the trademark context because they are tied to goods/services that are not synonymous with the dictionary definition (or a genus or species thereof). By way of comparison, APPLE is synonymous with a species of fruit and would be generic if used in connection with apples, or perhaps even fruit as a category. But PARENTS is not synonymous with magazines (even magazines about parenting, child-rearing, etc.), nor are “parents,” as defined in the dictionary, related in any ordinary meaning of the word to magazines. Similarly, the term CARS would be generic if used in connection with cars, perhaps even a genus or species of car. But CARS is not synonymous with the goods/services associated with the cited registration, namely “Clothing, namely, belts, coats, gloves, head wear, infantwear, jeans, pants, polo shirts, rainwear, scarves, sweat pants, sweat shirts, and wrist bands.” See CARS (U.S. Reg. No. 3419857<tel:3419857>) (Apr. 29, 2008). Finally, FRUIT OF THE LOOM is itself not a generic phrase or term that one would find in the dictionary, even though it is composed of individual words that one could find in the dictionary. It is a coined phrase that is generally considered to be a “suggestive” trademark, as it “requires imagination, thought and perception to reach a conclusion as to the nature of the goods.” See, e.g., Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, at 10-11<x-apple-data-detectors://3> (quoting 3 Callmann, Unfair Competition, Trademarks and Monopolies § 71.2 (3d ed.)). Other examples of suggestive trademarks include similar coined phrases composed of individual dictionary words, like CHICKEN OF THE SEA or COPPERTONE. But suggestive marks are deemed to be inherently distinctive within the meaning of trademark law, and again would not require any design elements to be registrable (at least under US law). Thus, unsurprisingly, we were able to locate corresponding registrations for just the basic word mark, without any design elements, for both the PARENTS and FRUIT OF THE LOOM marks. See, e.g., PARENTS (U.S. Reg. No. 2631504<tel:2631504>) (Oct. 8, 2002); FRUIT OF THE LOOM (U.S. Reg. No. 1876708<tel:1876708>) (Jan. 31, 1995). While 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. That said, there are numerous word mark registrations for CARS owned by various other entities in connection with a wide variety of goods and services. See, e.g., CARS (U.S. Reg. No. 1862371<tel:1862371>) (Nov. 15, 1994) (used in connection with “computer software for contract administration and rebate management for use by pharmaceutical companies”); CARS (U.S. Reg. No. 3486890<tel:3486890>) (June 3, 2008) (used in connection with “Financial information services, namely, providing ratings and analysis of community development financial institutions, commonly referred to as CDFIs, to assist investors and donors in investment decision-making”). I tend to agree with some other comments that we might want to focus on marks where the underlying word element is expressly disclaimed in the registration, which is not the case with the three examples above, to see how the TMCH handles such marks. Ultimately, again, we do not believe it is appropriate for the TMCH to be making judgment calls as to the validity of a submitted mark, so long as the mark is valid and subsisting in the jurisdiction where it is protected (i.e. registered in the national or regional trademark office, protected by statute, or by judicial decree, per the three primary modes of protection described in the TMCH Guidelines). Finally, for the reasons enumerated by Lori, I’m not sure it would be appropriate to request that the TMCH divulge its own examples of marks currently in the TMCH that represent examples of recorded device/image marks. I hope this information and suggestions are helpful as the Working Group considers next steps with respect to reverting to Deloitte with additional or clarifying questions around the issue of “device/image” (or “design”) marks. Best regards, Brian Brian J. Winterfeldt Co-Head of Global Brand Management and Internet Practice Mayer Brown LLP bwinterfeldt@mayerbrown.com<mailto:bwinterfeldt@mayerbrown.com> 1999 K Street, NW<x-apple-data-detectors://2/2> Washington, DC 20006-1101<x-apple-data-detectors://2/2> 202.263.3284<tel:202.263.3284> direct dial 202.830.0330<tel:202.830.0330> fax 1221 Avenue of the Americas<x-apple-data-detectors://3/0> New York, New York 10020-1001<x-apple-data-detectors://3/0> 212.506.2345<tel:212.506.2345> direct dial On Feb 22, 2017, at 4:08 PM, Lori Schulman <lschulman@inta.org<mailto:lschulman@inta.org>> wrote: Paul, Before J Scott weighs in, I would imagine that any disclosure of any registrations would be a violation of confidentiality between the Clearinghouse and the Registrant. It’s been a while since I have personally registered anything in the TMCH but my understanding is that there is a promise of nondisclosure except in instances where claims notices would be generated to potential registrants of conflicting names. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org> [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Wednesday, February 22, 2017 4:58 PM To: J. Scott Evans <jsevans@adobe.com<mailto:jsevans@adobe.com>> Cc: 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) J. Scott, I see no reason why we cannot ask for this information. It is a discreet set of data points that is of material importance. Can you please provide an explanation for your opposition? Paul From: "J. Scott Evans" <jsevans@adobe.com<mailto:jsevans@adobe.com>> Date: Wednesday, February 22, 2017 at 3:32 PM To: Paul Keating <paul@law.es<mailto:paul@law.es>> Cc: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>>, "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) I am not in favor of asking the TMCH to disclose any marks that are registered. I am not opposed to asking the TMCH if there are marks fundamentally similar to our examples that registered. Sent from my iPhone On Feb 22, 2017, at 1:23 PM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Then I s suggest we do both? Send the examples AND ask for the list. Paul From: Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Date: Wednesday, February 22, 2017 at 2:00 PM To: "J. Scott Evans via gnso-rpm-wg" <jsevans@adobe.com<mailto:jsevans@adobe.com>>, Paul Keating <paul@law.es<mailto:paul@law.es>>, 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) +1 From: J. Scott Evans via gnso-rpm-wg Sent: Wednesday, February 22, 2017 5:48 AM To: Paul Keating; Mary Wong Reply To: J. Scott Evans Cc: 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) 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FTZ3DAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=Inh425CmRwEvSeCEOcHe1okhyvKs%2BkY3o2CgfE4z%2Bb0%3D&reserved=0> · 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FQ53DAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=W5rbPPyEsO%2BNhGdpp8LV2kNVNqySLO3rZFghb0RvJw8%3D&reserved=0>. 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)<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FTZ3DAw)&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=D0mgx8eiOFpQaLKN0vfLZY15QF%2BRYQ53xS3CELZoVqU%3D&reserved=0>. 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FQ53DAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=W5rbPPyEsO%2BNhGdpp8LV2kNVNqySLO3rZFghb0RvJw8%3D&reserved=0>. · [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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FQ53DAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=W5rbPPyEsO%2BNhGdpp8LV2kNVNqySLO3rZFghb0RvJw8%3D&reserved=0>. 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2F_pHRAw&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=3xzSL6KYU336lGPb2Od95pGLp2frp97FCxFd2aUvxRs%3D&reserved=0>. 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)<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2F_pHRAw)&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=dd7nVJJ2rVfUiPeVxbqjCcmNVA67r7s%2B25b3VAb7abU%3D&reserved=0> · 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)<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Ftrademark-clearinghouse.com%2Fdispute)&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=s8nvQhnkCDRKvqGYw8hpISNwkXP1hiN6diGLkgT0yaA%3D&reserved=0>. 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<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=01%7C01%7CBwinterfeldt%40mayerbrown.com%7C3695ea3317b7456703a608d45b3cf231%7C09131022b7854e6d8d42916975e51262%7C0&sdata=4%2Bt3eev0uRSU5GF9ey2CkhXz81b9HAANcGLQovMSg94%3D&reserved=0> ________________________________ Confidentiality Notice: This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. 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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> on behalf of Paul Keating <paul@law.es> *Date: *Wednesday, February 22, 2017 at 12:10 AM *To: *Mary Wong <mary.wong@icann.org> *Cc: *"gnso-rpm-wg@icann.org" <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
·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.
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) <https://community.icann.org/x/TZ3DAw%29>. 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.
·[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 <https://community.icann.org/x/Q53DAw>.
_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.
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) <https://community.icann.org/x/_pHRAw%29>
·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) <http://trademark-clearinghouse.com/dispute%29>.
Thanks and cheers
Mary
<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
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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> 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 · 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. 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)<https://community.icann.org/x/TZ3DAw%29>. 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. · [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. 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. 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)<https://community.icann.org/x/_pHRAw%29> · 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)<http://trademark-clearinghouse.com/dispute%29>. 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. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
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 On Thu, Feb 23, 2017 at 6:44 AM, Beckham, Brian <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> 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> <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es> <paul@law.es> *Date: *Wednesday, February 22, 2017 at 12:10 AM *To: *Mary Wong <mary.wong@icann.org> <mary.wong@icann.org> *Cc: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org> <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> 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> *Date: *Monday, February 20, 2017 at 12:23 *To: *"gnso-rpm-wg@icann.org" <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
· 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.
Thanks and cheers
Mary
*From: *Mary Wong <mary.wong@icann.org> *Date: *Thursday, February 16, 2017 at 18:37 *To: *"gnso-rpm-wg@icann.org" <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). 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.
· [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.
*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> *Date: *Tuesday, February 14, 2017 at 11:08 *To: *"gnso-rpm-wg@icann.org" <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.
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)
· 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).
Thanks and cheers
Mary
<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
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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> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Thursday, February 23, 2017 at 10:59 To: "Beckham, Brian" <brian.beckham@wipo.int> Cc: "gnso-rpm-wg@icann.org" <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. 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
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> on behalf of Mary Wong <mary.wong@icann.org> Date: Thursday, February 23, 2017 at 8:12 PM To: Greg Shatan <gregshatanipc@gmail.com>, "Beckham, Brian" <brian.beckham@wipo.int> Cc: "gnso-rpm-wg@icann.org" <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> on behalf of Greg Shatan <gregshatanipc@gmail.com> Date: Thursday, February 23, 2017 at 10:59 To: "Beckham, Brian" <brian.beckham@wipo.int> Cc: "gnso-rpm-wg@icann.org" <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> 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> 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> 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> Date: Monday, February 20, 2017 at 12:23 To: "gnso-rpm-wg@icann.org" <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_r6xvZ A5x2FgQ&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_r6xvZ A5x2FgQ&s=wrn2oyD8tErE8p9Q2rSq5q_szqe97dHGScuhKZOmsIU&e=> .
Thanks and cheers
Mary
From: Mary Wong <mary.wong@icann.org> Date: Thursday, February 16, 2017 at 18:37 To: "gnso-rpm-wg@icann.org" <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=DJ6 9mAe-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_r6xvZ A5x2FgQ&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_r6xvZ A5x2FgQ&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> Date: Tuesday, February 14, 2017 at 11:08 To: "gnso-rpm-wg@icann.org" <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=DJ69mA e-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmbp_r6x vZA5x2FgQ&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=D J69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWyvmgOmb p_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-2Dclearingh ouse.com_dispute-2529&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5 cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=X66K9caYEoesx6I9Gw-eJWy vmgOmbp_r6xvZA5x2FgQ&s=LHthSya6UTxD7UfKK5pOd0VfPW-Aatgp2_M2QycIEUE&e=> .
Thanks and cheers
Mary
<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
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To be clear, I wasn't suggesting getting "verified copies" of the trademark registration certificates -- just copies of the registrations available on the uspto.gov website (for free). Greg On Thu, Feb 23, 2017 at 2:12 PM Mary Wong <mary.wong@icann.org> wrote:
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> on behalf of Greg Shatan < gregshatanipc@gmail.com> *Date: *Thursday, February 23, 2017 at 10:59 *To: *"Beckham, Brian" <brian.beckham@wipo.int>
*Cc: *"gnso-rpm-wg@icann.org" <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
On Thu, Feb 23, 2017 at 6:44 AM, Beckham, Brian <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> 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> <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Keating <paul@law.es> <paul@law.es> *Date: *Wednesday, February 22, 2017 at 12:10 AM *To: *Mary Wong <mary.wong@icann.org> <mary.wong@icann.org> *Cc: *"gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> <gnso-rpm-wg@icann.org> <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> 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> *Date: *Monday, February 20, 2017 at 12:23 *To: *"gnso-rpm-wg@icann.org" <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_T...>
· 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_Q...>.
Thanks and cheers
Mary
*From: *Mary Wong <mary.wong@icann.org> *Date: *Thursday, February 16, 2017 at 18:37 *To: *"gnso-rpm-wg@icann.org" <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_T...>. 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_Q...>.
· [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_Q...>.
*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> *Date: *Tuesday, February 14, 2017 at 11:08 *To: *"gnso-rpm-wg@icann.org" <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_-...>.
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_-...>
· 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-2Dclearinghous...>.
Thanks and cheers
Mary
<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
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*Greg Shatan *C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
Thanks Mary. I go back to some of the earlier comments. The use of the term “design marks” I think can be confusing here as there is a distinction between a stylized version of a mark and a true design mark. As I read Rebecca’s email it refers to registered “text mark.” Is that to be read to mean word marks only. What I would be concerned about is that stylized versions of a word mark end up getting lumped into the rubric of design marks. I know of many examples where a party filed their mark in a stylized version as opposed to a word mark in block letters. So I think we should be clear on the way we define and use terminology for this exercise. As to the examples, maybe I am missing something here (I missed a couple of calls so perhaps this has already been discussed), but can someone explain whether the design mark issue we are trying to get insight from Deloitte has in fact been an actual major problem of the TMCH. Do we have many examples of parties getting TMCH registrations in the text portion of a design mark and then securing numerous domain names during sunrise periods, or is this more of a theoretical discussion based on some limited anecdotal situations. If it is the former, then it would be interesting to figure out whether this is endemic to real brand owners or one that emanates from speculators trying to game the system. I think the issue of whether or not trademark owners are getting more or less rights than what their registrations cover raises all kinds of other issues that go well beyond this design mark discussion. I for one do not want to see the tail wagging the dog and am concerned that if the issue is a speculator type issue that we end up lumping legitimate brand owners with those that game the system. In other words, if this is indeed a real and major problem, then there may be different fixes depending on what is at issue. At this point, I think we should just stick to the examples provided and see what Deloitte answers and then go from there. Otherwise we may end up just going round and round on theoreticals and what ifs. From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Thursday, February 23, 2017 2:12 PM To: Greg Shatan; Beckham, Brian Cc: 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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Hi Brian, a belated response to you email -- the answer to your excellent questions is in the table Mary Wong just distributed. It's a side-by-side comparison of the GNSO/Board-adopted policy, the Applicant Guidebook language and Deloitte's policies/practices (where they could be found). Looking forward to discussing tomorrow. Best, Kathy On 2/23/2017 6:44 AM, Beckham, Brian 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> 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 <https://community.icann.org/x/TZ3DAw>
·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.
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) <https://community.icann.org/x/TZ3DAw%29>. 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 <https://community.icann.org/x/Q53DAw>.
·[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 <https://community.icann.org/x/Q53DAw>.
_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 <https://community.icann.org/x/_pHRAw>.
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) <https://community.icann.org/x/_pHRAw%29>
·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) <http://trademark-clearinghouse.com/dispute%29>.
Thanks and cheers
Mary
<List of marks to ask Deloitte about - from Rebecca Tushnet - 22 Feb 2017.docx>
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World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
Hi folks, On Wed, Feb 22, 2017 at 3:10 AM, Paul Keating <paul@law.es> wrote:
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.
It should be easy to come up with additional examples of those, to supplement the 2 examples already listed (I came up with the CARS one in 2 minutes). Here's a live one for "MUSIC" in the USA: http://tsdr.uspto.gov/#caseNumber=86892054&caseType=SERIAL_NO&searchType=sta... although, it has 2 parallel lines, instead of a "green squiggly mark". :-) The mark in this case expressly disclaims "MUSIC" apart from the figurative mark. Its goods and services include: "Arranging, organizing, conducting, and hosting social entertainment events; Film and video production; Music production services; Providing a website featuring information in the field of music and entertainment." It might be nice to find some quality examples that don't expressly disclaim the term (to see if that makes a difference to the TMCH).....I'm sure they're out there --- anyone have a quick example of that? Perhaps the following one is the kind Paul Keating is looking for: DEALHUNTER: https://euipo.europa.eu/eSearch/#details/trademarks/011340593 That figurative mark was used in a UDRP case, see: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-0766 and in that case, the complainant *was* able to satisfy the 1st prong of the UDRP test, but lost in a reverse domain name hijacking ruling. As an aside, there's another group of examples that might be of interest, namely stylized marks for individual letters of the alphabet (or other short terms). Here's an example of a registered TM for a stylized version of the letter "A": http://tsdr.uspto.gov/#caseNumber=87084153&caseType=SERIAL_NO&searchType=sta... (there are many examples of these worldwide, which could correspond to short and very valuable domain names in a sunrise) Would these kinds of registered TMs be sufficient to get first dibs on every single-letter domain name, through a recordal in the TMCH? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
Hi, I agree with George on this one. I, too, believe that we are talking about figures that have words that would not otherwise register. Lori Lori S. Schulman Senior Director, Internet Policy International Trademark Association (INTA) +1-202-704-0408, Skype: lsschulman [cid:image005.jpg@01D270D2.1801CD20] From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Wednesday, February 22, 2017 3:00 PM To: Paul Keating <paul@law.es> Cc: 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) Hi folks, On Wed, Feb 22, 2017 at 3:10 AM, Paul Keating <paul@law.es><mailto:paul@law.es%3e> wrote:
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.
It should be easy to come up with additional examples of those, to supplement the 2 examples already listed (I came up with the CARS one in 2 minutes). Here's a live one for "MUSIC" in the USA: http://tsdr.uspto.gov/#caseNumber=86892054&caseType=SERIAL_NO&searchType=sta... although, it has 2 parallel lines, instead of a "green squiggly mark". :-) The mark in this case expressly disclaims "MUSIC" apart from the figurative mark. Its goods and services include: "Arranging, organizing, conducting, and hosting social entertainment events; Film and video production; Music production services; Providing a website featuring information in the field of music and entertainment." It might be nice to find some quality examples that don't expressly disclaim the term (to see if that makes a difference to the TMCH).....I'm sure they're out there --- anyone have a quick example of that? Perhaps the following one is the kind Paul Keating is looking for: DEALHUNTER: https://euipo.europa.eu/eSearch/#details/trademarks/011340593 That figurative mark was used in a UDRP case, see: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-0766 and in that case, the complainant *was* able to satisfy the 1st prong of the UDRP test, but lost in a reverse domain name hijacking ruling. As an aside, there's another group of examples that might be of interest, namely stylized marks for individual letters of the alphabet (or other short terms). Here's an example of a registered TM for a stylized version of the letter "A": http://tsdr.uspto.gov/#caseNumber=87084153&caseType=SERIAL_NO&searchType=sta... (there are many examples of these worldwide, which could correspond to short and very valuable domain names in a sunrise) Would these kinds of registered TMs be sufficient to get first dibs on every single-letter domain name, through a recordal in the TMCH? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ 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 ________________________________
George, Very well stated. These were exactly the issues I was trying to identify. This is why I am suggesting that we obtain a list from TMCH. I would also like the WG to obtain information regarding the processes applied by Deloitte in accepting such marks for inclusion within TMCH. For example, in the MUSIC example would the disclaimer result in rejection for TMCH purposes? I am also interested in learning more about Deloite¹s process relative to the evidence of use requirement. Again, the issue is not to make life unbearable for trademark holders (or Deloitte). Rather it is to determine if the TMCH is being applied in a balanced manner so as to reflect the legitimate rights of non-trademark holders relative to domain name registration. Paul On 2/22/17, 3:00 PM, "George Kirikos" <icann@leap.com> wrote:
Hi folks,
On Wed, Feb 22, 2017 at 3:10 AM, Paul Keating <paul@law.es> wrote:
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.
It should be easy to come up with additional examples of those, to supplement the 2 examples already listed (I came up with the CARS one in 2 minutes).
Here's a live one for "MUSIC" in the USA:
http://tsdr.uspto.gov/#caseNumber=86892054&caseType=SERIAL_NO&searchType=s tatusSearch
although, it has 2 parallel lines, instead of a "green squiggly mark". :-) The mark in this case expressly disclaims "MUSIC" apart from the figurative mark. Its goods and services include: "Arranging, organizing, conducting, and hosting social entertainment events; Film and video production; Music production services; Providing a website featuring information in the field of music and entertainment."
It might be nice to find some quality examples that don't expressly disclaim the term (to see if that makes a difference to the TMCH).....I'm sure they're out there --- anyone have a quick example of that? Perhaps the following one is the kind Paul Keating is looking for:
DEALHUNTER: https://euipo.europa.eu/eSearch/#details/trademarks/011340593
That figurative mark was used in a UDRP case, see:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-0766
and in that case, the complainant *was* able to satisfy the 1st prong of the UDRP test, but lost in a reverse domain name hijacking ruling.
As an aside, there's another group of examples that might be of interest, namely stylized marks for individual letters of the alphabet (or other short terms). Here's an example of a registered TM for a stylized version of the letter "A":
http://tsdr.uspto.gov/#caseNumber=87084153&caseType=SERIAL_NO&searchType=s tatusSearch
(there are many examples of these worldwide, which could correspond to short and very valuable domain names in a sunrise) Would these kinds of registered TMs be sufficient to get first dibs on every single-letter domain name, through a recordal in the TMCH?
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
participants (13)
-
Beckham, Brian -
George Kirikos -
Greg Shatan -
J. Scott Evans -
Jay Chapman -
Kathy Kleiman -
Lori Schulman -
Mary Wong -
Nahitchevansky, Georges -
Pascal Böhner -
Paul Keating -
Scott Austin -
Winterfeldt, Brian J.