I am with Marc on this one for the reasons Marc states and for which we argued previously. It is such a narrow niche case where a brand is in contention with another and agrees to add a descriptive work as a substitute to avoid contention. I cannot imagine in Kathy’s example how going from “wireless” in the trademark description to “mobile” which is viewed as an equivalent blows everything wide open. And I agree with Marc on his example: The US Trademark Office for whatever reason requires you to use the term “Footwear” instead of “Shoes” or “Sneakers”. Do we really believe Nike using “.nikeshoes” instead of “.nikefootwear” blows everything wide open? I don’t.
Take another example. Both Stanley Logistics and Pacific Market International apply for .Stanley.
- PMI’s trademark for Stanley states: “Vacuum bottles, mugs and jars for food or beverage; insulated [ and non-insulated ] food jars; flasks; mugs; cups; water bottles sold empty; portable household containers for storing and transporting food or beverages; carrying cases specially adapted for transporting vacuum bottles, mugs and jars, insulated and non-insulated food jars, flasks, mugs, cups, and water bottles sold empty”
- Stanley Logistics Trademark states, “Non-Power Operated Hand Tools for Industrial and Professional Tradesman and Consumers”
What if they agree that PMI change to “.stanleytumblers” and Stanley Logistics changes to “.stanleytools.” Stanley Logistics is covered because the term “tools” is in the description of the trademark. But PMI without the “equivalent” language would not be able to get “tumblers” because that is NOT in the trademark description.
In short, I do not see any issue with this and it is in line with the Board’s desire to avoid contention sets wherever possible.
Sincerely,
Jeff
From: trachtenbergm--- via SubPro-IRT <subpro-irt@icann.org>
Sent: Saturday, April 19, 2025 12:32 PM
To: Kathy@KathyKleiman.com; subpro-irt@icann.org
Subject: [SubPro-IRT] Re: Redline Specs 7 and 13 - we did not agree to accept equivalent
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 | View GT Biography
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
ShareholderChair, Internet, Domain Name, e-Commerce and Social Media Practice
Greenberg Traurig, LLP
77 West Wacker Drive | Suite 3100 | Chicago, IL 60601
T +1 312.456.1020M +1 773.677.3305
trac@gtlaw.com | www.gtlaw.com | View GT Biography
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
_______________________________________________SubPro-IRT mailing list -- subpro-irt@icann.orgTo unsubscribe send an email to 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) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
_______________________________________________SubPro-IRT mailing list -- subpro-irt@icann.orgTo unsubscribe send an email to 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) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.