Dear IRT members, I am back from my vacation today and catching up on emails. The discussion on the thread below seems to be about the wording in the dollwoing section [Kathy highlighted this in red]: “of (B) one or more words as listed in the goods and/or services identified, or an equivalent substring from the trademark registration for such registered trademark” This language is included for a very simple reason: other jurisdictions to the US may use different terms to the word ‘trademark registration’. And non-English terms may in fact not translate into English as ‘trademark registration’. So, the wording does not expand the range of documents that trademark owner can rely on, it simply allows for TM owners from other jurisdiction to submit the document that is equivalent to a US trademark registration. Best wishes, Lars From: Kathy Kleiman <Kathy@KathyKleiman.com> Date: Monday, 21 April 2025 at 02:06 To: "subpro-irt@icann.org" <subpro-irt@icann.org>, Lars Hoffmann <lars.hoffmann@icann.org>, Jared Erwin <jared.erwin@icann.org>, Elisa Busette <elisa.busetto@icann.org> Subject: [Ext] Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - overriding the clear language of SubPro Hi Lars, Jared, and Elisa, The SubPro WG created a narrow exception with carefully-written wording - allowing Brands to create a "brand change" with very specific, clear and negotiated language. The wording was accepted by the SubPro, accepted by Council and accepted by the Board. We are now being asked to change that wording. Could you kindly help me understand in whose public comment this suggestion arose - what group in what comment proceeding? It would help to understand the history. Many thanks, Kathy On 4/19/2025 12:32 PM, trachtenbergm--- via SubPro-IRT wrote: I disagree and think that we should stick with “equivalent” which has low risk of abuse but creates the possibility to reduce contention and also make the .brand usable – both if which are in the interests of the Community. I guess the larger group will decide. Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB37F.265254F0] From: Kathy Kleiman <Kathy@KathyKleiman.com><mailto:Kathy@KathyKleiman.com> Sent: Friday, April 18, 2025 6:13 PM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com><mailto:trachtenbergm@gtlaw.com> Subject: Re: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent Hi Marc, These discussions already took place in the SubPro - and the language was very carefully negotiated and we should stay with it. I know why you want it, but it is not what we agreed and changes clear agreement and recommendation language of the SubPro WG. Plus, now that Brands are other change options, can we we remove this change as unnecessary? (A question to the larger group.) Best, Kathy On 4/18/2025 3:50 PM, trachtenbergm--- via SubPro-IRT wrote: Kathy, I strongly disagree with you. As an initial matter, brand owners who want to be subject to Specification 13 can only apply for strings that exactly match their registered trademark. The section you cite only applies if there is more than one applicant for a particular string and the brand owner choses to go to an alternate string to avoid contention. The alternate string would consist of the registered trademark plus some presumably generic or descriptive terms that would describe the goods or services registered in connection with the trademark. As we discussed previously, the words used in the identification of goods and services in the trademark application (and ultimately the issued registration) are often not commonplace words or phrases and are either more technical or were selected because they previously were approved by the trademark office. This is particularly the case in the US. In other words, the words and language used in the trademark application to describe the goods and services are often not standard language that consumers would use to describe he goods and services. The whole reason the brand owner is applying for the Spec 13 string is to promote its brand, so if it decides to opt for an alternate string to avoid confusion, then it should be able to add whatever words it wants to its trademark to describe the goods and services registered in connection thereto. Otherwise, there is no utility in having the option for an alternate string. As an example, if Nike relies on a registration for NIKE that is registered in connection with “athletic footwear” are you saying that they should not be able to use .NikeShoes as an alternate string? Because the trademark has to be included in the string and the alternate string is a distant second choice for the brand owner anyway, there is no real risk of expanding the scope in a way that is likely meaningfully impact any other applicant. This concern s a boogeyman and comes from anti-brand owner paranoia. Please let’s move on. Best regards, Marc H. Trachtenberg Shareholder Chair, Internet, Domain Name, e-Commerce and Social Media Practice Greenberg Traurig, LLP 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 T +1 312.456.1020 M +1 773.677.3305 trac@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com [gtlaw.com]<https://urldefense.com/v3/__http:/www.gtlaw.com/__;!!PtGJab4!68MIN8-CzsA4omC...> | View GT Biography [gtlaw.com]<https://urldefense.com/v3/__https:/www.gtlaw.com/en/professionals/t/trachten...> [Greenberg Traurig Logo] [cid:image002.png@01DBB37F.265254F0] From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org><mailto:subpro-irt@icann.org> Sent: Friday, April 18, 2025 11:46 AM To: subpro-irt@icann.org<mailto:subpro-irt@icann.org> Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent *EXTERNAL TO GT* Hi All, The changes to Specification 13 contains an edit that was questioned, strongly contested, and I thought deleted in the last discussion of it. [Alternative Section 9.3(i) text for String Change .BRAND TLDs: (i) the TLD string contains: (A) textual elements that are identical to the textual elements protectable under applicable law, of a registered trademark valid under applicable law, and (B) one or more words as listed in the goods and/or services identified, or its equivalent[K1] [K1][K2], in the trademark registration for such registered trademark, which registered trademark:] ________________________________ It’s not what the SubPro recommended and its not what we agreed. “Equivalent” is in the eyes of the beholder and means anything anyone wants its it to mean. Jeff, I understand what you want,but this language is not acceptable as it allows a brand owner to change their .BRAND string change to something that is not even in the trademark registration. For example, if I am cell phone company and now its cooler to call myself a mobile or wireless company, then I will want to add mobile or wireless to my .BRAND String Change - but that's not what the trademark says, and that is dramatically expanding the scope of my goods and services far beyond anything in my trademark application. For tech companies in particular (and how is not these days), there will be a desire to keep updating and changing with the times and not with the trademark. That's not what we agreed to in SubPro. Best, Kathy On 4/17/2025 9:27 AM, Elisa Busetto via SubPro-IRT wrote: Dear IRT members, The redlines of Specification 7 and Specification 13 were posted to the wiki under “Topic 36 | Base Registry Agreement”: https://icann-community.atlassian.net/wiki/x/7wmwBg<https://urldefense.com/v3/__https:/icann-community.atlassian.net/wiki/x/7wmwBg__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDma231siqk$> Best regards, Elisa _______________________________________________ SubPro-IRT mailing list -- subpro-irt@icann.org<mailto:subpro-irt@icann.org> To unsubscribe send an email to subpro-irt-leave@icann.org<mailto:subpro-irt-leave@icann.org> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.com/v3/__https:/www.icann.org/privacy/policy__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmavEQ3EXY$>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.com/v3/__https:/www.icann.org/privacy/tos__;!!DUT_TFPxUQ!CtUJJBgwJGwmvZOZLf0AYWSqik9Kl-1_8Ch5OUb14EJP4xJ3GLZkiCMo2XUx_Ma9bH7LrgjLh0_PfDmasDU17TI$>). 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