Lars,

As an initial matter,  for clarity this language means that the .brand applicant can supply a different trademark registration other than the one relied upon in the application but for the same trademark and use words from the identification of goods and services in the other registration in the alternate string?

Regardless, I see the language from the PDF from 5 February 2025. But how was it decided that this was final and that words that are equivalent to the identification of goods and services cannot be acceptable?

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 | www.gtlaw.com  |  View GT Biography

From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org>
Sent: Tuesday, April 22, 2025 1:39 PM
To: subpro-irt@icann.org
Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2

Thanks, Mark. I appreciate that.

If helpful, and, if I recall correctly, you and others had voiced concerns about the originally proposed language, which had the second bullet below ending with “[…] for Brand/Specification 13 designation.”

In response to these concerns, we added the following to the language: “Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant.“

On 5 November 2024, we proposed the shorter language (please see the PPT deck for the language and of course the recording)

On 5 February 2025, we updated the language to accommodate IRT feedback.

Best. Lars

From: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com>
Date: Tuesday, 22 April 2025 at 20:06
To: Lars Hoffmann <lars.hoffmann@icann.org>, "subpro-irt@icann.org" <subpro-irt@icann.org>
Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2

Lars,

When did the IRT “sign off” on this?  There have been over 130 calls, many of them 2 hours each and 3x a week so I cannot attend them all.

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 | www.gtlaw.com [gtlaw.com]  |  View GT Biography [gtlaw.com]

From: Lars Hoffmann <lars.hoffmann@icann.org>
Sent: Tuesday, April 22, 2025 1:00 PM
To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com>; subpro-irt@icann.org
Subject: Re: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2

Thanks, Mark.

The replacement string is unrelated to the .brand string change. A brand applicant can pick any replacement string that they would like, much like any other applicant for any other string type. The requirements to obtain Spec 13 are the same whether the applicant keeps their applied for string or choses to switch to their replacement string before string confirmation day, as Spec 13 evaluation will occur after string confirmation day.

As far as the string change is concerned, which occurs much later in the applicant journey (following the conclusion of string confusion objection), I pasted the language below for completeness. I note that ICANN org is satisfied that the language, the IRT had signed off on it, and no comments were received during the recent public comment on this. Therefore, we will not re-open discussions on the language below at this stage and publish for public comment as part of the full AGB that will go out for comment on 30 May (unforeseen circumstances aside).

I hope this covers your question.

Very best. Lars

Copy>Paste from p18: https://docs.google.com/document/d/1bIu1lRxe4zr-lKRlfoQzd9dayoysItb4-AtvXUzB34M/edit?tab=t.0A

Brand String Change Request must satisfy the following requirements to be accepted by ICANN:

• The change must add one or more words to the applied-for string, subject to the following conditions:
• The additional word or words must be added to the original string.
• The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation. Another Trademark Registration or equivalent document in the applicant’s possession may also be submitted in support of the Brand String Change Request, if accompanied by legal confirmation that the submitted trademark is owned by the entity with the application and respective brand. ICANN reserves the right to verify any additional documentation submitted for this purpose, with any associated costs borne by the applicant.
• No translations of words contained in the Trademark Registration will be accepted. 
• The new string with the added word or words must not create or expand a contention set.

From: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com>
Date: Tuesday, 22 April 2025 at 19:04
To: Lars Hoffmann <lars.hoffmann@icann.org>, "subpro-irt@icann.org" <subpro-irt@icann.org>
Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2

Thanks Lars.  But I am still unclear where we stand on whether the .Brand applicant designating an alternate string is limited to the words in the registration or can use words that are substantially equivalent to what is in the trademark registration being relied upon.

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 | www.gtlaw.com [gtlaw.com]  |  View GT Biography [gtlaw.com]

From: Lars Hoffmann via SubPro-IRT <subpro-irt@icann.org>
Sent: Tuesday, April 22, 2025 10:11 AM
To: subpro-irt@icann.org
Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2

My apologies, Marc. And thank you for the follow up!

What was discussed was ‘or equivalent’, not the full redline per Kathy. So with that, Justine’s suggestion to make this ‘or equivalent document’ makes sense in this context.

Best. Lars

From: "trachtenbergm@gtlaw.com" <trachtenbergm@gtlaw.com>
Date: Tuesday, 22 April 2025 at 16:56
To: "justine.chew.icann@gmail.com" <justine.chew.icann@gmail.com>, "Kathy@kathykleiman.com" <Kathy@kathykleiman.com>, Lars Hoffmann <lars.hoffmann@icann.org>
Cc: "subpro-irt@icann.org" <subpro-irt@icann.org>
Subject: RE: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2

I still object to this limitation to words in the description of goods and services in the registration for the reasons I and Jeff have previously stated.  I remember this issue being discussed in SubPro but when was it “officially” decided?

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 | www.gtlaw.com [gtlaw.com]  |  View GT Biography [gtlaw.com]

From: Justine Chew via SubPro-IRT <subpro-irt@icann.org>
Sent: Tuesday, April 22, 2025 9:02 AM
To: Kathy Kleiman <Kathy@kathykleiman.com>; Lars Hoffmann <lars.hoffmann@icann.org>
Cc: subpro-irt@icann.org
Subject: [SubPro-IRT] Re: [Ext] Re: Re: Redline Specs 7 and 13 - overriding the clear language of SubPro - 4.1.2

Or say, "equivalent document" in the draft AGB text and reference Spec 13, for clarity.

Kind regards,
Justine

On Tue, 22 Apr 2025 at 21:00, Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org> wrote:

Hi Lars,

I understand the goal and it makes sense. Recommend the agreed language of Contention Set Resolution
4.1.2 be moved directly to Specification 13 - and all ambiguities will be resolved!

==> The additional word or words must appear in the description of goods and services of the applicant’s Trademark Registration or equivalent document in the applicant’s jurisdiction, submitted by the applicant in support of their application for Brand/Specification 13 designation.

Best, Kathy

On 4/22/2025 6:07 AM, Lars Hoffmann via SubPro-IRT wrote:

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 | www.gtlaw.com [gtlaw.com]  |  View GT Biography [gtlaw.com]

From: Kathy Kleiman <Kathy@KathyKleiman.com>
Sent: Friday, April 18, 2025 6:13 PM
To: subpro-irt@icann.org; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <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 | www.gtlaw.com [gtlaw.com]  |  View GT Biography [gtlaw.com]

From: Kathy Kleiman via SubPro-IRT <subpro-irt@icann.org>
Sent: Friday, April 18, 2025 11:46 AM
To: 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

Best regards,

Elisa

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---

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